WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Japan Airlines Company Limited v. TransHost Associates, JAL Systems and
John A Lettelleir
Case No. D2000 - 0573
1. The Parties
The Complainant is Japan Airlines Company Limited of 11, Higashi-shinigawa 2 chome, Shinigawa-ku, Tokyo 140-8637, Japan. The Respondents are (1) TransHost Associates of 1100 Gough Suite 7 Ė A, San Francisco, California 94109, United States of America (address supplied by the Complainant); (2) JAL Systems of 266 Beachview Avenue Suite 10, Pacifica, California 94044-1508, United States of America (address supplied by the Complainant); and (3) John A Lettelleir of 266 Beachview Avenue #10, Pacifica, California 94044, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name in issue is "jal.com" ("the domain name"). The Registrar is Network Solutions, Inc. The domain name is in the name of JAL Systems.
3. Procedural History
3.1 The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by e-mail on June 8, 2000, and in hardcopy on June 13, 2000.
3.2 On June 14, 2000, the Center transmitted via e-mail to Network Solutions Inc., a request for registrar verification in connect with the Complaint. On June 15, 2000, Network Solutions Inc. transmitted via e-mail its verification response confirming that the registrant is JAL Systems, that the Administrative Contact is Andy Jong and that the Billing Contact is John A Lettelleir of TransHost Associates.
3.3 A Response to the Complaint was received by the Center on June 30, 2000. Although the domain name is in the name of JAL Systems, the Response was filed by John Lettelleirís representative. It is implicit in the Response that JAL Systems and John Andrew Lettelleir are one and the same. Given that the name "JAL Systems" is in part composed of John Lettelleirís initials, that JAL Systems and John Lettelleir share the same address and that John Lettelleir is the Billing Contact, the Panel will proceed on the basis that John Lettellier and JAL Systems are one and the same and that John Lettelleir therefore has the authority to respond to the Complaint on JAL Systemís behalf. TransHost Associates appears to have been added as a Respondent because its details appear under John Lettelleirís name as the Billing Contact but is otherwise of no further relevance.
3.4 On August 3, 2000, the Center advised the parties that the Panel had been constituted with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.
3.5 The date scheduled for the Panel to render its decision is August 17, 2000.
3.6 The Complainant is represented by Roy Goldberg of attorneys at law Schnader Harrison Segal & Lewis L.L.P., 1300 Eye Street, N. W. Ė Suite 1100 East, Washington D.D. 20005-3314, United States of America. The Respondent is represented by Laraine Pacheco of attorneys at law Weinberg Legal Group, 2390 East Camelback Road, Suite 250, Phoenix, Arizona 85016, United States of America.
4. Factual Background
4.1 The following facts are not disputed.
4.2 The Complainant is the well-known international airline. It is the registered proprietor of a number of US registered trademarks for "JAL" and other trademarks consisting in part of the initials "JAL". The Complainant also claims to have trademarks registrations for "JAL" "in Europe, Asia and throughout the world" and that it has common law protection with respect to the mark "JAL". Although no evidence of these other marks or of reputation giving rise to common law rights was filed, the Respondents have not refuted these propositions and the Panel will proceed on the basis that the Claimant has such marks and rights.
4.3 A large number of e-mails have been sent to the e-mail address corresponding to the domain name by customers or potential customers of the Complainant in the mistaken belief that the Complainant could be contacted at that address.
4.4 JAL Systems has been the registered proprietor of the domain name since at least January 21st,1995.
5. Partiesí Contentions
5.1 The Complainantís contentions may be summarized as follows:
The Complainant is the well-known airline Japan Airlines and has rights in the name "JAL" (an acronym of its name) both by virtue of its numerous trademark registrations in the US and in other jurisdictions and by virtue of its international reputation.
5.2 The domain name is identical or confusingly similar to the Complainantís trademark "JAL".
5.3 The Respondents have no right or legitimate interest in the domain name. In this respect, the Complainant alleges that:
(a) the Complainantís investigations did not reveal any legitimate business in existence under the name "JAL Systems" owned or operated by John Lettelleir;
(b) Although "JAL" are John Lettelleirís initials, there is no evidence that he is commonly known by them. Moreover, a cyber pirate "cannot escape the effect of the Policy merely because his initials match those of a well known trademark"; and
(c) John Lettelleir is not using "jal.com" as his e-mail address.
5.4 The Respondents registered and are using the domain name in bad faith. In this respect, the Complainant alleges that:
(a) the Respondents have demanded that the Complainant pay $50,000 for the domain name as the fair market value of the domain name (rather than the Respondentsí out-of-pocket costs);
(b) the Respondents have "intercepted" thousands of e-mails relating to the Complainantís business and responded to these "in a manner which only could have heightened the mistaken belief that the Respondents are associated or affiliated with the Complainant". Further, the Respondents hope to benefit commercially from this confusion;
(c) the Respondents have threatened to continue to interfere with the Complainantís relationships with its customers unless the Complainant pays the $50,000 and have suggested that unless the Complainant pays this "ransom", these customers will continue to be confused. The Respondents have in this way "sought to extort $50,000" from the Complainant;
(d) when the Respondents registered the domain name they knew that the term "JAL" was associated with the Complainant; and
(e) as there is no evidence that the Respondents have not undertaken any act regarding the domain name other than to offer it for sale, the Panel should infer that the Respondentsí intention when registering the domain name was to offer it for sale;
(f) by knowingly causing customers to send e-mail messages to the Respondents intended for the Complainant, the Respondents have infringed, diluted and tarnished the Complainantís rights in the "JAL" mark;
(g) it may be presumed that the Respondents intended by the natural consequences of their acts to prevent the Complainant from using its "JAL" mark in a domain registration ending in ".com"; and
(h) the Respondents have taken active steps to conceal their true identity by operating under a name that is not a registered business name.
5.5 The Complainant cites various previous WIPO Administrative Panel decisions and US case law in support of these allegations.
The Respondentsí contentions may be summarized as follows:
5.6 the Respondents have rights to and legitimate interests in the domain name. In this respect, the Respondents allege that:
(a) John Andrew Lettelleir chose the domain name in 1993, at a time when the Internet was in its infancy and when most large corporations had no interest in the Internet. He registered the domain name as a way to market his business as a writer of technical documents for computer information systems to other people in that industry. He chose his initials as they were easy to remember and simpler to spell than his own last name. He maintained his ownership of the domain name when Network Solutions Inc. began charging an annual fee;
(b) John Lettelleir owns and has only ever owned one domain name Ė the domain name in issue in these proceedings; and
(c) for approximately four years, John Lettelleir posted his resume and samples of his work on and solicited business from the jal.com website;
5.7 In circumstances where it is established that a Respondent has a legitimate interest in a domain name in issue, there is no need for the Panel to address the issue of bad faith. The Respondents rely on previous WIPO Administrative Panel decisions to support this proposition.
5.8 However, the Respondents rely on the following to address the allegation of bad faith:
(a) John Lettelleir did not register the domain name for the purpose of disrupting the Complainantís business or to attract the Complainantís customers to the website. He has responded to all e-mail messages intended for the Complainant politely and courteously and re-directed each sender to the Complainant. There is therefore no tarnishment of the Complainantís mark;
(b) John Letteiller is not using the website to hijack the Complainantís customers; there is no correspondence between his business and the Complainantís business;
(c) There is no evidence that the Respondents registered the domain name for the purpose of selling it or to attract Internet users for financial gain or to disrupt the Complainantís business;
(d) The fact that John Lettellier offered to sell the domain name after owning and using it for a number of years does not constitute bad faith; and
(e) The allegation that the Respondents have concealed their true identity is absurd in circumstances where John Lettelleirís e-mail gives his full name, address and telephone number and a representative of the Complainant has spoken with him. TransHost Associates is a Nevada Partnership.
5.9 The Respondents rely on several previous WIPO Administrative Panel decisions to support their contentions with regard to bad faith.
5.10 The Respondents also suggest that the decisions cited by the Complainant are inapposite and that the quotation from one such decision is misleading.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the Response and the documents annexed to these documents. In the light of this material, the Panel finds as set out below.
6.2 The domain name "jal.com" is identical to a trademark in respect of which the Complainant has extensive rights, both registered and unregistered (i.e. common law rights). The Complainant is therefore within paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the "Policy").
6.3 It is clear from the number of e-mails sent to the e-mail address corresponding to the domain name that the Respondentsí registration of the domain name has led to confusion on the part of at least some of the Claimantís actual and potential customers. However, this fact is not of itself enough to dispossess the Respondents of the domain name. The Respondents' evidence shows that John Lettelleir redirects such customers to the Complainant.
6.4 It is not disputed that JAL corresponds to John Lettelleir's real initials. It is also not disputed that the name was registered in 1993, considerably before the current wide spread commercial adoption of the internet. Furthermore it is not disputed that the jal.com name is the only domain name Mr. Lettelleir has registered. Faced with these facts it seems difficult (to put it mildly) to see how the Complainant can establish that the name was registered in bad faith. If the Complainant cannot establish this, it does not satisfy the requirements of paragraph 4(a)(iii) of the Rules and cannot succeed, irrespective of what has happened since the date of registration.
6.5 As the Panel understands it, the Complainant says the Respondents "undoubtedly knew that the term JAL was associated with the Complainant's JAL mark" and that because the Respondents have done nothing with the name (this is disputed) they must have intended to sell it and hence the registration was in bad faith. These might well be forceful arguments in circumstances where the name had no proper association with the Respondent (for example names like alaskaairlines.net, cited by the Complainant) but where the name has a legitimate connection with the Respondent, the Panel does not accept these arguments. The Complainant relies on US authority that even use of a real name may constitute trade mark infringement in some circumstances Ė E&J Gallo Winery Ėv- Gallo 967 F.2d 1280 (9th Cir. 1992). It seems to the Panel that such a remedy is likely only to arise in unusual factual circumstances, but that in any event the difficult issues that arise in any such case should properly be determined by a competent court, and take the dispute well outside the ambit of the Policy. As it is, the panel does not accept the Complainant's contentions as to the Respondentsí bad faith at the time of the registration. If the Respondents had been sufficiently prescient to foresee in 1993, that the domain name would one day be worth (it is said) a substantial amount, they no doubt could and would have foreseen all sorts of other names with such potential for appreciation and would not have registered only the domain name in issue. The Respondents say the fact they did not illustrates the weakness of the Complainant's case. The Panel agrees. The fact that the only name Mr. Lettelleir registered corresponds to his own initials is, in the Panel's view, clear evidence that no bad faith was involved.
6.6 The Panel does not find the multiplicity of decisions cited by the Complainant to be helpful. It is not practicable to analyze them all in this decision. To take one example, an earlier WIPO determination that a respondent named "tala alamuddin" cannot rely on a defense that the domain name "att2000.com" was based on a variation of her name (described by the Panel in that case as a "pathetic" argument) is of no relevance whatsoever to the present facts.
6.7 The Panel is similarly unattracted by arguments that because the Respondents' business name, JAL Systems, is not properly registered, the Respondents overall conduct becomes questionable.
6.8 The above findings are sufficient to dispose of the Complaint. However, in view of the way the Complainant has attacked the Respondents' conduct the Panel will comment briefly on the further evidence in this case.
6.9 The remainder of the Complainantís allegations are addressed at the Respondentsí use of the domain name. It is clear from the e-mail correspondence annexed to the Complaint and to the Response that the Respondents have indicated they are willing to sell the domain name (although the Panel does not agree with the Complainantís characterization that the Respondents have demanded $50,000 as a ransom). Given that the registration of the domain name was bona fide, the Respondents subsequent offer to sell it, does not in itself constitute bad faith.
6.10 The Complainantís suggestion that the Respondents have threatened to interfere with the Complainantís business seems to the Panel, on the basis of the evidence filed by the Complainant, to be without any foundation. Similarly, the Claimantís assertions that the Respondents have intercepted e-mails intended for the Complainant, that the Respondents have sought to encourage confusion as to an association with the Complainant and hope to benefit from such confusion and that the Respondents have sought to conceal their identity are without any evidential basis. The evidence filed by the Respondents suggest that the facts are to the contrary, that the Respondents have in fact taken the time to respond to e-mails sent by customers or potential customers of the Claimant and redirected these to the Complainantís website.
7.1 In the light of the above findings, the Panelís decision is as set out below.
7.2 So far as paragraph 4(a)(i) of the Policy is concerned, the Panel concludes that the domain name is identical to the Complainantís "JAL" mark.
7.3 As far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Respondents have rights to and/or a legitimate interest in the domain name by virtue of the domain name corresponding to John Andrew Lettelleirís initials.
7.4 So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to show that the domain name was registered in bad faith or that it was subsequently used in bad faith.
7.5 The Panel therefore declines to find that the domain name should be transferred or cancelled.
7.6 No further action is required to implement the Panelís decision.
Dated: August 21, 2000