WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Thomas Cook Holdings Limited - v. - Vacation Travel

Case No. D 2000-1716

 

1. The Parties

Complainant: Thomas Cook Holdings Limited

6 Midford Place

London W1B 1ER

Respondent: Vacation Travel

11 Birley Street

Blackpool FY1 1EG

 

2. The Domain Name(s) and Registrar(s)

Domain Name: "jmcflights.com"

Registrar: BulkRegister.com, Inc.

 

3. Procedural History

The original Complaint was received by WIPO by email on December 8, 2000, and in hardcopy form on December 12, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "jmcflights.com" ("the Domain Name") was registered through BulkRegister.com, Inc. and that Vacation Travel ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On December 15, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was January 3, 2001. The Response was received on January 3, 2001.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is January 22, 2001.

 

4. Factual Background

The Complainant operates and has operated since September 1999 a travel and holiday business under the name JMC. Its aeroplanes carry the JMC name on their bodywork; its travel ticketing also features the JMC name.

The Complainant has a number of UK, Community and other trade mark registrations and applications for registration of the name JMC. For present purposes it is sufficient to cite UK registration number 2186709 dated January 20, 1999 in Classes 39, 41 and 42 for inter alia, transportation of persons and goods by air, information services relating to air travel and travel agency services. The Complainant trades from its website at www.jmc-holidays.co.uk.

On July 26, 2000, the Respondent registered the Domain Name.

On October 9, 2000, lawyers representing the Complainant wrote to the Respondent drawing the Respondentís attention to the Complainantís rights and seeking, inter alia, transfer of the Domain Name to the Complainant.

On October 16, 2000, the Respondent replied in the following terms:

"We thank you for your letter of 9 October, the contents of which are noted. As a travel agency, we have regular dealing with your clients and we are familiar with their trade marks and their website at jmc-holidays.co.uk.

The domain name we have registered "jmcflights.com" (the "Domain Name") is one of a number of names we have registered in connection with the sale of holidays and associated products via the Internet.

We have no intention whatsoever of infringing your clientís rights. Contrary to your letter the Domain Name is currently dormant and is not being used in bad faith. Eventually, we hope to open a website under the Domain Name which will quite clearly state that the site is operated by Vacation Travel as travel agents. We hope to offer flights/holidays with, amongst others, your clients. There is quite clearly no infringement to your clientís rights indeed it is anticipated the site will benefit both Thomas Cook and ourselves with the bookings that may be generated.

In the circumstances we see no reason why we should give the undertaking you have requested. We have read with interest the decisions reached by the WIPO in relation to other domain names you refer to. However, we see no relevance to the site we have registered and our intended use.

Yours faithfully

Stuart E Arnott

For Vacation Travel"

On November 14, 2000, the Respondent registered the domain name abtaflights.com and abtaflights.co.uk. ABTA is an acronym for and a registered trade mark of The Association of British Travel Agents Limited.

By at least December 4, 2000, (but not before October 16, 2000) the Respondent was operating a website connected to the Domain Name welcoming visitors to "jmcflights" identifying the Respondent as a retail agent for JMC and with connectors to Flight Search and ABTA flights facilities to enable visitors to check out JMC flights and other flights.

By at least December 5, 2000, the Respondent was operating a website at www.abtaflights.com through which visitors are invited to book their flights. The home page of that site features the logos of a number of well known holiday travel organisations including JMC.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions may be summarised as follows:-

JMC is its registered trade mark, it operates in the field of air travel and in that context the Domain Name is confusingly similar to its trade mark/service mark JMC.

The Respondent registered the Domain Name some time after the Complainant commenced use of its trade mark JMC. The Respondent has never used the name JMC other than in its capacity as a travel agent selling JMC holidays.

The Complainant refers to the Respondentís letter of October 16, 2000, quoted above and to the suggestion that the Respondent will be offering other companiesí holidays as well as the Complainantís holidays on the website connected to the Domain Name.

The Complainant contends that the Respondentís rights to sell JMC holidays as part of travel agency services does not amount to a right:-

(a) to register a domain name incorporating any permutation of this mark;

(b) to trade from a website at a domain name incorporating any permutation of this mark;

(c) to incorporate the Complainantís trade mark (whether as a logo or word) on any such website.

The Respondent is called Vacation Travel and is a travel agent. It has its own website which features on its letterhead Ė vacationtravel.co.uk. From the exhibited copies of the printouts of the website it can be seen that the Respondent has a visually distinctive logo for Vacation Travel and that there is no reference there to the Complainant and/or its holidays.

In using the Complainantís trade mark as it does the Respondent is infringing the Complainantís trade mark rights.

The Complainant cites the One In A Million case and asserts that on the back of that authority the Respondentís registration of the Domain Name also amounts to passing off.

The Complainant asserts that the immediate impression obtained from visiting the website connected to the Domain Name is that that website is an official website for the Complainant or that Vacation Travel is an exclusive provider of the Complainantís holidays. The Complainant asserts that the Domain Name was registered in bad faith for the following reasons:-

(a) the Domain Name appears to have been deliberately chosen to attract JMC Internet users and/or purchasers of JMC holidays thereby unfairly benefiting the Respondent to the detriment of other travel agents authorised to sell JMC holidays;

(b) the Respondent acquired the Domain Name intentionally to attempt to attract for commercial gain Internet users to its website by creating confusion with the Complainantís trade marks as to the source, sponsorship, affiliation or endorsement of the website;

(c) by registering the Domain Name the Respondent is preventing the Complainant from reflecting its trade mark in all possible corresponding domain names and in particular, generic top level domain names;

(d) the Respondent has engaged in a pattern of conduct of registering domain names in which it has no legitimate interest and the Complainant refers to the ABTA domain name registrations.

The Complainant submits that in light of the above the Domain Name has been registered in bad faith and is being used in bad faith.

B. Respondent

The Respondent refers to its letter of October 16, 2000, quoted above and states that it has little to add.

The Respondent makes clear for the avoidance of doubt that "the display of brochures and the supply of holidays is far from exclusive to JMC and although we do a considerable amount of business with them we do of course deal with numerous other companies".

The Respondent asserts that the website connected to the Domain Name will only offer for sale JMC flights and/or holidays. It states that if the customer subsequently contacts the Respondent requesting other options, "then these may be offered to him just as they are with flights and holidays sold during the everyday course of my business. I can specifically confirm that the jmcflights site will only offer JMC products."

The Respondent states that the One In A Million case does not apply here because the Respondent is an authorised agent of the Complainant and refers to the Complainantís acknowledgement that in certain circumstances the Respondent is entitled to use the Complainantís trade mark in the course of its business.

The Respondent states that "there is absolutely no intention for visitors to the site to be led to believe that the site is anything other than operating by Vacation Travel as agents for JMC". As to the Complainantís assertion that what the Respondent has done will unfairly benefit the Respondent to the detriment of other travel agents the Respondent points out that the travel industry is a very competitive business and that more and more business will be generated by the Internet. The Respondent adds "if I have had the foresight to realise this before my competitors then I fail to see why I should be penalised for it".

It is denied that the Respondent has intentionally set out to confuse visitors to the site. The Respondent refers to its intentions for the site "as outlined above and the clear statement that the site is operated by Vacation Travel as agents of JMC."

In relation to the ABTA domain names the Respondent states that it contacted ABTA immediately on registering the domain names and the Respondent requests that any reference to the ABTA sites it has registered is removed from the Complaint the circumstances relating to those domain names have no relevance to this complaint.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity

The Respondent does not appear to contest the Complainantís assertion that the Domain Name is confusingly similar to a trade mark or service mark in respect of which it has rights. Nor could it do so given that the Domain Name is intended to be a reference to the Complainant and/or its products. The Domain Name comprises the Complainantís trade mark and the word "flights", which is descriptive of an aspect of the Complainantís business.

The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

It is not in dispute that the Respondent is entitled to use the Complainantís trade mark in its capacity as a travel agent authorised to sell the Complainantís holidays and insofar as it is reasonably and fairly necessary to do so to indicate the nature of the Respondentís business and the products/services it has on offer. However, that is quite different from having a right or legitimate interest in respect of the Domain Name.

The Panel is inclined to the view on the evidence before it that the Respondentís use of the Complainantís trade mark as part of the Domain Name goes far beyond what is permissible under section 11 Trade Marks Act 1994. On that basis even though, at a stretch, the Respondent may be said to have a limited legitimate interest in respect of the Complainantís trade mark, it has no legitimate interest in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.

Bad Faith

The allegation of bad faith registration and use of the Domain Name is central to the objective of the Policy, which is to deal with cybersquatting.

Is the Respondent in this case a cybersquatter? Did it register the Domain Name knowing that it had no justification for doing so and with intent to extort money from the Complainant or to block the Complainant in relation to the Domain Name or to disrupt the Complainantís business or to profit from the Domain Name by deceiving visitors to its website?

The burden of proof is on the Complainant and proving trade mark infringement or passing off is not enough. Bad faith intent is not a necessary ingredient of either of those offences, but it is a necessary ingredient under the Policy.

In the ordinary course of events taking the Complainantís trade mark and using it in a manner that is clearly intended to refer to the Complainant or its services would constitute a prima facie case of cybersquatting. In this case, however, the Respondent has a limited right to use the Complainantís trade mark and, although the Panel has already found that that limited right does not extend to the Domain Name, that does not mean that in registering the Domain Name the Respondent was actuated by bad faith.

Indeed, the Respondentís case is that because it is permitted to use the JMC trade mark in the course of its business as a travel agent selling the Complainantís products, it is entitled to use the trade mark in the Domain Name which connects to the site upon which the Complainantís products are to be traded.

If the Panel takes the view that at all material times the Respondent had no intention of damaging the Complainant and honestly (albeit mistakenly) believed that it was entitled to do what it has done, arguably there can have been no bad faith intent for the purposes of paragraph 4(a)(iii) of the Policy.

The Complainant gives four reasons why the Panel should make a finding of bad faith.

The first reason is that the Domain Name appears to have been deliberately chosen to attract JMC Internet users and/or purchasers of JMC holidays thereby unfairly benefiting the Respondent to the detriment of other travel agents authorised to sell JMC holidays. The Panel agrees that the Respondent did what it did to benefit itself as against its competitors. The Panel also agrees that what the Respondent has done is unfair, if, as the Panel believes, the use of the Complainantís trade mark as part of the Domain Name is unlawful. However, does taking an unfair competitive advantage over its competitors constitute cybersquatting? There is no evidence before the Panel to show that the Complainant is suffering under this head of complaint. More fundamentally, there is no hard evidence to suggest that the Respondent knew that he was behaving unlawfully and therefore unfairly.

The second reason given by the Complainant is that the Respondent acquired the Domain Name intentionally to attempt to attract for commercial gain Internet users to its website by creating confusion with the Complainantís trade marks as to the source, sponsorship, affiliation or endorsement of the website. The Panel accepts that confusion of this kind might be the result, but there is no evidence before the Panel to show that it was intentional.

The third reason is that by registering the Domain Name the Respondent is preventing the Complainant from reflecting its trade mark in all possible corresponding domain names and in particular, generic top level domain names. Again, the Panel accepts that while the Domain Name is in the hands of the Respondent it is unavailable to the Complainant, but in relation to this head of the complaint even the Complainant does not assert that the Respondent had this in mind when registering the Domain Name.

Finally, the Complainant asserts that the Panel should make a finding of bad faith because the Respondent has engaged in a pattern of conduct of registering domain names in which it has no legitimate interest. The Complainant refers to the ABTA domain name registrations, says that it has not contacted ABTA and expresses the view that ABTA would have been unlikely to have consented to those registrations. The Panel is surprised that the Complainant did not contact ABTA. One would have thought that a telephone call would have sufficed. However, again, if the Respondent honestly believes that it is entitled to do what it is doing, where is the bad faith?

The Panel confesses to finding this case a very difficult one. On the one hand, the Panel is of the view that this Respondent cannot sensibly, on the evidence before the Panel, be described as a cybersquatter, it being actuated by a desire to achieve a commercial competitive advantage over other travel agents by means which it believes to be fair. On the other hand, if honestly held but, in the view of the Panel, mistaken beliefs of this kind can result in the trade marks of others being misused in this way, the Policy will favour the ignorant and ill-informed over the rest, which also does not seem right.

Paragraph 4(b) gives guidance as to the sort of activities, which are intended to be caught by the Policy. The first three examples are typical cybersquatting activities, whereas the fourth (dishonestly causing deception of one kind or another) need not be a typical cybersquatting activity. It is to be noted that those examples are simply examples and do not restrict the Panel. In other words, the Panel is free to find that activities other than those cited constitute bad faith registration and use of the Domain Name.

Can the Respondent be said to have acted dishonestly in this case? In answering this question the Panel looks to the speech of Lord Nicholls of Birkenhead in the case of Royal Brunei Airlines v. Tan [1995] 3 WLR at page 73 where he said in relation to the accessory liability principle:

"Ö acting dishonestly, or with a lack of probity, which is synonymous, means simply not acting as an honest person would in the circumstances. This is an objective standard. At first sight this may seem surprising. Honesty has a connotation of subjectivity, as distinct from the objectivity of negligence. Honesty, indeed, does have a strong subjective element in that it is a description of a type of conduct addressed in the light of what a person actually knew at the time, as distinct from what a reasonable person would have known or appreciated. Further, honesty and its counterpart dishonesty are mostly concerned with advertent conduct, not inadvertent conduct. Carelessness is not dishonesty. Thus for the most part dishonesty is to be equated with conscious impropriety. However, these subjective characteristics of honesty do not meant that individuals are free to set their own standards of honesty in particular circumstances. The standard of what constitutes honest conduct is not subjective. Honesty is not an optional scale, with higher or lower values according to the moral standards of each individual. If a person knowingly appropriates anotherís property, he will not escape a finding of dishonesty simply because he sees nothing wrong in such behaviour."

The Panel finds that the Respondent knowingly appropriated the Complainantís trade mark for commercial gain and ought to have appreciated that it was not entitled to do so and ought further to have appreciated that the result would be likely to cause confusion as to the precise status of the Respondentís association with the Complainant.

In the result the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.

 

7. Decision

In the result, the Panel having found that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Panel finds that the Complaint succeeds and directs that the Domain Name "jmcflights.com" be transferred to the Complainant.

 


 

Tony Willoughby
Presiding Panelist

Dated: January 22, 2001