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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Cook Holdings Limited v. Neil Tucker
Case No. D2000–0805
1. The Parties
The Complainant in this administrative proceeding is Thomas Cook Holdings Limited a private limited company incorporated in England whose registered office is at Thorpe Wood, Peterborough, Cambridgeshire, PE3 6SB England, represented by Dechert, Solicitors, of 2 Serjeants’ Inn, London EC4Y 1LT. The Respondent is Neil Tucker of Fir Tree Cottage, Duck Street, Little Eastern, Great Dunmow, Essex CM6 2JG.
2. The Domain Name and Registrar
The domain name in issue is "jmcairlines.com" ("the Domain Name"), the Registrar of which is Domain Bank Inc. of 23 West 4th Street, Bethlehem, PA 18015-1603, U.S.A. ("Domain Bank").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on July 17, 2000, a hard copy of the Complaint and accompanying documents and on July 21 an electronic version of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center. On August 23, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On July 21, 2000, the Center transmitted via e-mail a request for registrar verification in connection with this case. After a number of reminders, on August 17, 2000, Domain Bank transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Neil Tucker, the Respondent herein, and stating that the administrative, technical and zone contacts are Judith Bonser of The Onion House, 41 Goddard Way, Saffron Walden, Essex CB10 2DQ. It should be noted that a second Complaint was lodged on July 17, 2000 by the Complainant against the said Judith Bonser, in respect of the virtually identical domain name "jmc-airlines.com". That case (D2000-0804) is the subject of a separate decision of this Panelist.
No Response has been filed by the Respondent. However, in the light of certain e-mails sent to the Complainant by Judith Bonser on behalf of herself and the Respondent since the commencement of these proceedings and referred to further below, the Panelist is satisfied from a procedural point of view that the Respondent has received due notice of these proceedings.
On September 14, 2000, Notice of Respondent Default was sent by the Center to the parties. On September 15, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by September 29, 2000.
4. Factual Background
The Complainant is the registered proprietor of UK Trade Marks covering the mark JMC (the "Trade Mark"), as follows:-
Number 2186709 registered January 20, 1999 – classes 39, 41 and 42
Number 2207367 registered September 3, 1999 – classes 39, 41 and 42
In addition, the Complainant or one of its subsidiary companies has pending trade mark applications or registrations in the USA and some 14 other countries and two pending Community Trade Mark applications.
(The Complainant also refers to a pending US trade mark application for JMC BEACH VILLAS. The existence of this pending application would not seem to add anything to the Compainant’s case, in that if it cannot succeed on the basis of its JMC (simpliciter) trade marks, JMC BEACH VILLAS will not improve the Complainant’s position.)
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Complainant operates and has operated since September 1999 a travel and holiday business under the name JMC. It currently offers holidays world-wide. It has a number of travel brochures, including one entitled "Airfares Flight Guide". Its aeroplanes carry the JMC name on their bodywork. Its travel ticketing also features the JMC name. The Complainant advertises JMC holidays extensively in a number of media.
(ii) The Complainant trades from its web-site at the domain name <jmc-holidays.co.uk>, which provides information about JMC’s history and services.
(iii) Accordingly, the Complainant has acquired and owns goodwill and reputation in the name JMC in the United Kingdom, the United States, the European Community and worldwide. In particular, that goodwill and reputation is in relation to travel and, in particular, air travel.
(iv) The Respondent registered the Domain Name on January 3, 2000. The Domain Name was registered after the Trade Mark was registered in the UK.
(v) The Domain Name is identical or confusingly similar to the Trade Mark in which the Complainant has extensive legitimate rights. The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade marks or to apply for any domain names incorporating any such marks.
(vi) On May 25, 2000, the Complainant’s solicitors browsed the web-site at the Domain Name. A print-out of the web-site on this date revealed that despite the fact that the domain had been registered since January 3 there was no active web-site at the Domain Name. There was simply a statement "This domain is available for sale. Please contact email@example.com for details."
(vii) Since the Respondent did not appear to have any legitimate interest in the Domain Name and/or the Trade Mark, the Complainant’s solicitors wrote to him on May 25, 2000 requiring him to transfer the Domain Name to the Complainant.
(viii) On the same date the Complainant’s solicitors wrote to the registrant of <jmc-airlines.com>, the above-mentioned Judith Bonser (registered on April 10, 2000). The Respondent replied to both the May 25 letters by letter dated June 2, 2000, making it clear that Onion Productions had registered the Domain Name on behalf of the Respondent. It should be explained that Onion Productions is an organisation through which Judith Bonser appears to trade. Onion Productions has web-sites at <onionnet.co.uk>, <onionproductions.co.uk> and <onionproductions.com>, the last of which is registered in the name of Judith Bonser.
(ix) In his letter, the Respondent stated that he would give the Complainant’s solicitors’ letter his attention when he returned from being "away". Since that letter, the Complainant’s solicitors had written to the Respondent and Judith Bonser on June 6 and 19, 2000, but neither the Respondent nor Judith Bonser had written further with respect to this matter.
(x) However, on browsing the web-sites at the Domain Name and <jmc-airlines.com> on June 28, 2000 it was noted that they now purported to be web-sites for "Joinery Machinery Components and Airlines". It should be noted that these web-sites were not properly active, but that they had already attracted over 500 visitors to them.
(xi) Despite (only since the Respondent received the Complainant’s solicitors’ letters of complaint) purporting to be web-sites for Joinery Machinery Components and Airlines, there is no evidence or reason to believe that either the Respondent or Judith Bonser had previously conducted any commercial enterprise or non-commercial activity under the names, JMC and/or Joinery Machinery Components and Airlines. It is submitted that the web-sites at the domain names are a sham. It should be noted that in the Respondent’s letter of 2 June 2000, no reference was made to Joinery Machinery Components and Airlines. It is also submitted that there appears to be no obvious connection between a "Joinery Machinery Components" business and an "Airlines" business.
(xii) The above domain names appear to have been deliberately chosen to attract JMC internet users. It therefore appears that the Respondent and Judith Bonser have acquired the two domain names intentionally to attempt to attract for commercial gain internet users to their web-sites by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web-site. Consumers and internet users who type <jmcairlines.com> or <jmc-airlines.com> as an attempt to access the Complainant’s web-site are likely to be confused by any web-site that appears at these domain names.
(xiii) It is submitted that this is sufficient to constitute bad faith registration and bad faith use of the Domain Name.
(xiv) Additionally, by registering the domain names the Respondent and Judith Bonser are preventing the Complainant from reflecting its trade mark in all possible corresponding domain names, and in particular, generic top level domain names. Between the Respondent and Judith Bonser they have already registered to the Complainant’s knowledge, 3 domain names incorporating the Trade Mark. (Judith Bonser had also registered <jmcairlines.co.uk> on December 29, 1999.) They have therefore engaged in a pattern of conduct of registering domain names in which they have no legitimate interest.
(xv) It is submitted that this is sufficient to constitute bad faith registration and bad faith use of the Domain Name.
(xvi) Additionally the Respondent and Judith Bonser appear to have registered the domain names primarily for the purpose of disrupting the Complainant’s business.
(xvii) Additionally it is submitted that by acting in the way they have done, the Respondent and Judith Bonser are putting pressure on the Complainant to make an offer to purchase the domain names from them. Accordingly, it is submitted that the domain names have been acquired primarily for the purpose of selling them to the Complainant or to a competitor for valuable consideration in excess of the costs of registration.
(xviii) It is therefore submitted that the domain names have been registered in bad faith and are being used in bad faith.
The Respondent has not filed a Response.
6. Discussions and Findings
Since the commencement of these proceedings, the Complainant has lodged by way of Supplemental Submissions further information concerning the activities of the Respondent and Judith Bonser. Since these matters are highly relevant to these proceedings and have arisen since their commencement, the Panel has no hesitation in admitting the Supplemental Submissions. The following matters are relevant:
(i) On July 25, 2000, Judith Bonser sent an e-mail to Mr Sullivan of the Complainant’s solicitors as follows:
Please would you let your client (JMC) know that Mr Neil Tucker and myself will be happy to transfer the following domain names to themselves if they wish to make an agreeable reasonable offer:
Look forward to hearing from you,
(ii) Another e-mail was received by the Complainant’s solicitors on August 9, 2000. It reads as follows:
Please would you let your client (JMC) know that Mr Neil Tucker and myself will be happy to transfer the following domain names to themselves immediately for the sum of Ј5,000
Look forward to hearing from you,
(iii) Whois? Searches reveal that the 2nd, 3rd, 5th and 6th of these domain names were registered by the Respondent on June 2, 2000.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
As to element (i), the Domain Name comprises two elements, "jmc" and "airlines". Accordingly, the Trade Mark and the Domain Name are not identical. The question is therefore whether they are confusingly similar. The Complainant uses the Trade Mark in the holiday business, and asserts that it has goodwill and reputation in relation to travel and, in particular, air travel. The Panelist accepts that assertion, which is not challenged by the Respondent. Given such reputation in relation to air travel, the Domain Name, which merely adds "airlines" after the Trade Mark, is confusingly similar to it.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant make it plain that the Respondent has no rights or legitimate interest in the Domain Name.
Lastly, the Complainant must establish element (iii), ie that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name,"
The facts that:
(i) from May 25, 2000, if not earlier, the Domain Name was on offer for sale;
(ii) the Respondent registered four further "JMC" domain names on June 2, 2000 (just a week after he and Judith Bonser would have received the Complainants’ solicitors letters of May 25, 2000); and
(iii) after these proceedings had been commenced Judith Bonser offered (on behalf of the Respondent and herself) to sell the Domain Name and six other "JMC" domain names for Ј5,000,
are in the Panelist’s opinion sufficient to enable him to conclude that there is here clear evidence of both registration and use in bad faith.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
- the domain name "jmcairlines.com" is confusingly similar to the trademark JMC of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name "jmcairlines.com" be transferred to the Complainant, Thomas Cook Holdings Limited.
Dated: September [ ] 2000