WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA
Case No. D2004-0741
1. The Parties
The Complainant is Donvand Limited trading as Gullivers Travel Associates, London, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Gullivers Travel/Gulliver’s Travel Services of New York, United States of America, Gullivers Travel Agency of Istanbul, Turkey and Metin Altun/GTA also of Istanbul, Turkey. All the Respondents are represented by Metin Altun.
2. The Domain Names, Registrants and Registrars
The disputed domain names are:-
<gtatravels.com> registered in the name of Gullivers Travel Agency with Melbourne IT trading as Internet Name Worldwide;
<gtahotels.com> registered in the name of Metin Altun/GTA with Go Daddy Software;
<gulliverathenshotels.com>, <gulliversbarcelonahotels.com>, <gullivershotels.com>, <gulliversistanbulhotels.com>, <gulliverslondonhotels.com>, <gulliversmadridhotels.com>, <gulliversparishotels.com> and <gulliversromehotels.com>, all registered in the name Gullivers Travel/ Gulliver’s Travel Services with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2004. It mistakenly specified <gulliversathenshotels.com> as one of the disputed domain names. On September 14, 2004, the Center transmitted by email to Go Daddy Software and to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On September 14 and 15, 2004 respectively, Go Daddy Software and Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center their verification responses confirming that, with the exception of the domain name <gulliversathenshotels.com>, the Respondents are listed as above as the registrants and providing the contact details for the administrative, billing, and technical contacts.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 23, 2004, which correctly specified the disputed domain name <gulliverathenshotels.com>. On September 24, 2004 Go Daddy Software confirmed that Gullivers Travel/ Gullliver’s Travel Services is listed as the registrant of <gulliverathenshotels.com> and provided the contact details for the administrative, billing, and technical contact. Metin Altun is the administrative contact for the domain name <gtatravels.com> and the technical, administrative and billing contact for all the other disputed domain names.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). Rule 3(c) provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Despite the disputed domain names being registered in the names of different entities, the Panel finds that Metin Altun, who represents all the Respondents and has not objected to the proceedings including all the disputed domain names, is effectively the holder of all of them: see ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034 and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057. Accordingly the Panel agrees with the Center that the Complaint as amended satisfies the formal requirements.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on September 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 18, 2004. On October 7, 2004, Metin Altun, on behalf of “the Respondent”, sought the “maximum extension allowable” in order to prepare a Response. The Center asked that the requested time for extension be specified. Metin Altun specified three months. The Complainant urged the Center to refuse the request. The Center granted an extension of time until October 25, 2004. The Response was filed with the Center on October 25, 2004.
The Center appointed Alan L. Limbury, Jonathan Turner and Dilek Ustun as panelists in this matter on December 1, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of this proceeding is English.
On December 15, 2004, the Panel extended the time for its decision to December 18, 2004 in light of the exceptional volume of the exhibits submitted by both parties.
4. Factual Background
The Complainant Donvand Limited was incorporated in the United Kingdom in about 1975. Since then, together with subsidiary companies acquired over the years in Japan, Germany, Spain, Austria, Hong Kong and the U.S.A, it has conducted and continues to conduct business as a wholesale tour operator, organizing ground arrangements and related services on behalf of tour operators and travel agents. It describes itself as one of the world’s leading independent global wholesalers of travel services. Before November 13, 2000 it traded as Gulliver’s Travel Agency. On that day it changed its trading name to Gullivers Travel Associates. Since at least 1995 it has also used the acronym GTA, often with a logo of a circle containing an arrow shaped like the capital letter G. It operates a website at “www.gta.co.uk” where it uses the names GULLIVERS TRAVEL ASSOCIATES and GTA. It registered the domain name <gta-travel.com> on January 28, 1999. It has over 30 sales and service offices around the world, including in New York (since 1983) and in Los Angeles (since 2000). In a brochure issued to announce the change of trading name at an international travel fair, the Complainant identified Turkey as one of the numerous destinations it serves.
Numerous participants in the travel industry from countries around the world have sent to the Complainant letters dated between October 2003 and May 2004 in substantially similar form confirming that, for periods ranging from 1½ to 26 years, they have been dealing with the Complainant and its various subsidiaries who use the names Gulliver’s Travel Agency, Gullivers Travel Associates and GTA and saying: “If we saw any other party using marks incorporating Gullivers or GTA in connection with Travel Services in any media, and especially over the internet, we would be confused into thinking that these were services provided by Donvand and its subsidiary companies”.
The Complainant has made and is in the course of preparing to make numerous applications to register trade marks in many countries. Some applications have been granted. Others are pending. Two have been abandoned. Some registrations include assignments to the Complainant from associated parties.
The Complainant’s trade mark registrations (usually in classes 39 and 42 in relation to travel and tourist related services) include the following (in proof of which the Complainant has provided copies of registration certificates and, where appropriate, translations):
GTA AND LOGO, registered in Australia (both classes) as from May 14, 2001; the People’s Republic of China in class 39 as from April 7, 2003 and in class 42 as from December 21, 2002; the European Community (both classes) as from September 24, 2002; Hong Kong, SAR of China (both classes) as from May 11, 2001; Indonesia (both classes) as from August 1, 2001; Israel (both classes) as from May 31, 2001; Japan (both classes) as from December 5, 2003; Malaysia (class 39), with disclaimer as to the letter “G”, as from May 16, 2001; Republic of Korea (both classes) as from July 21, 2003; New Zealand (classes 39, 42 and 43) as from May 23, 2003; Singapore (both classes) as from June 26, 2001; Switzerland (both classes) as from May 21, 2001; Taiwan, Province of China (class 42) as from February 16, 2003; Thailand (both class) as from June 27, 2001; Turkey (both classes) as from May 15, 2001; United States of America (both classes) as from December 16, 2003; United Arab Emirates (both classes) as from September 8, 2001 and the Socialist Republic of Vietnam (both classes) as from August 20, 2001.
GULLIVERS TRAVEL ASSOCIATES, registered in The People’s Republic of China in class 42 as from January 7, 2003 and in class 39 as from February 28, 2003; the European Community (both classes) as from September 4, 2003; Hong Kong, SAR of China (both classes), with disclaimer as to ‘travel associates’ as from May 11, 2001; Indonesia (both classes) as from August 1, 2001; Israel (both classes), with disclaimer as to ‘travel’ and ‘associates’, as from May 31, 2001; Japan (both classes) as from December 5, 2003; Singapore (both classes) as from June 26, 2001; Switzerland (both classes) as from May 21, 2001; Taiwan, Province of China (class 42) as from April 1, 2003; Thailand (class 39) as from June 27, 2001; Turkey (both classes) as from May 15, 2001; United Arab Emirates (both classes), disclaiming ‘travel’, as from September 8, 2001, and the Socialist Republic of Vietnam (both classes), disclaiming ’travel associates’ as from August 20, 2001.
The Complainant has asserted that it has registrations in relation to the following trade marks but has provided no proof: GTA AND LOGO in Canada (both classes); GTA in Japan (both classes) and Taiwan, Province of China (class 39); G Device in Japan (both classes); GULLIVER’S in Taiwan (class 39); GTA GULLIVERS in Taiwan, Province of China (class 39); GTA & Device GULLIVERS in Taiwan, Province of China (class 39) and GULLIVERS TRAVEL ASSOCIATES in the United Kingdom (classes 39, 42 and 43).
The Complainant’s Turkish trade mark registrations are presently the subject of invalidity proceedings brought by Metin Altun.
The disputed domain names <gtatravels.com> and <gtahotels.com> were registered on January 14 and January 16, 2001, respectively. All the other disputed domain names were registered on January 8, 2002. The domain names are being used in connection with websites offering travel and hotel reservation services.
On May 25, 1995, the Ministry of Tourism of the Republic of Turkey issued to a company called Gençler Gida Turizm ve Ticaret Ltd.Yti. a Group (A) Travel Agency Certificate of Operation No.2914 pursuant to the Travel Agencies and Association of Travel Agencies Code. The name of the Agency was GULLIVERS TRAVELS SEYAHAT ACENTASI (in translation GULLIVER’S TRAVELS TRAVEL AGENCY). Fresh Certificates of Operation No. 2914 were issued on April 22, 1998, (further to group amendment) and on February 19, 2004, (pursuant to transfer of shareholder and address). The latter Certificate specified the proprietor as Ozaltun Otelcilik Turizm Ve Tic Ltd. Şti., a company in which Metin Altun is a shareholder. That company resolved on June 6, 2000, to change its corporate name to GULLIVERS TRAVELS SEYAHAT ACENTASI (GTA).
5. Parties’ Contentions
The disputed domain names have been and are likely to be confused with the Complainant’s marks because those marks are wholly or partially contained within the disputed domain names. There has been actual confusion. The Complainant has built up a massive worldwide reputation in its trade marks such that there can be no explanation other than that the Respondents’ aim is to benefit from this by way of diverting trade from the Complainant.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents’ activities in connection with the disputed domain names are the subject of trade mark and unfair competition proceedings in Turkey, in which the Respondents have counter-claimed by way of challenge to the Complainant’s Turkish trade mark registrations. Those proceedings will take another year to resolve. The court has made orders stopping the Respondents from using the trade marks GTA/GULLLIVERS on signs, letterhead etc and preventing Metin Altun or his company from dealing with a Turkish domain name which contains the Complainant’s trademark.
The domain names were registered and are being used in bad faith. They were registered primarily for the purpose of disrupting the Complainant’s business. The Respondents have been intentionally attempting to attract Internet users to their web sites for commercial gain by deliberately causing confusion with the Complainant’s web site or business. Following the Complainant’s first cease and desist letter dated November 12, 2003, the ownership of the majority of the domain names was transferred on December 25, 2003, beyond the jurisdictional reach of the Turkish courts to the U.S.A., to avoid the consequences of a negative judgement.
Further, about two years ago the Complainant’s sister company, Octopustravel, had to put pressure on the Respondents to remove from their web site “www.polohotels.com” copies of travel guides which had been lifted in their entirety from the Octopustravel web site in clear breach of copyright.
The disputed domain names are neither identical nor confusingly similar to trade marks held by the Complainant at the time the domains were registered, namely those filed in the European Community on June 11, 2000, i.e. the words Gullivers Travel Associates and the GTA logo. The Complainant had no unregistered rights prior to that date.
The use of the name GULLIVERS in association with travel predates the Complainant’s use by nearly three hundred years. The word’s strongest association is with Jonathan Swift’s Gullivers Travels, an association far more immediate and compelling than any association with the Complainant. For this reason the domain names are not confusingly similar to the Complainant’s trademark, especially since the domain names are combined with additional words not present in the Complainant’s trademark. The association between the word GULLIVERS and the Complainant is simply not strong enough to support such a claim. This is why there are numerous entities worldwide using this name in association with travel services and bearing no relation to the Complainant. Indeed, one of the Complainant’s own representatives admitted in an e-mail that “unfortunately the name Gullivers is quite common [in association with travel services].”
As to the domain names incorporating the acronym GTA, the mere presence of the letters incorporated into a logo, in addition to six other letters not present in the logo, cannot be seen as making the domain name confusingly similar to a logo – especially given the inherently generic nature of the acronym GTA, its association with descriptive terms (e.g. general travel agent, general ticketing agent, government travel agency) commonly used in the travel industry, and the existence of a large number of domains unrelated to the Complainant incorporating the acronym GTA.
None of the instances of confusion cited by the Complainant involve the latter’s customers, as claimed, but its suppliers – i.e. hoteliers who distribute their inventory through the Complainant. The Respondent as a retailer never deals directly with these suppliers, who generally deal with only a limited number of industry wholesalers.
As to legitimacy, the Respondent registered and commenced plans to use the disputed domains in connection with an offering of goods and services prior to any notice of dispute from the Complainant.
The Respondent’s commercial use of the disputed domains has been legitimate due to its prior history of using related business names. The Respondent was licensed and registered with the Ministry of Tourism in 1995 under the name Gullivers Travels Siyahat Acentasi. The designation “Siyahat Acentasi” which is reflected in the legal name of the Respondent stands for “travel agency.” The full translation of the Respondent’s name is therefore “Gullivers Travels Travel Agency.”
Also in 1995 the Respondent became a member of TURSAB (the Turkish Association of Travel Agents). In late 1995, the Respondent began using the trading name Gullivers Travel Agency to eliminate the confusing redundancy of the English translation of its name.
Between 1995 and 1999 the Respondent used the trading names Gullivers Travel Agency and GTA in relation to land tours of the Cappadocia region, where it was based. The Respondent was not claiming to portray itself as anything other than an independent local travel agency in the Cappadocia area. Significantly, the Respondent’s logo bearing the GTA acronym shows the famous rock formations of Cappadocia and the Respondent’s year of foundation (1995).
In 2000 the Respondent closed its Cappadocia offices and opened a branch in Istanbul. By August of that year, the Respondent’s land tour services were often contracted by tour operators in neighboring Greece. This brought the Respondent into partnership with SpecialTours, a large Greek tour operator. By August of 2000, the Respondent had launched its ccTLD website, “gulliverstravels.com.tr” to market its services to the Turkish market. Invoices generated by this site attest to this domain’s success and its bonafide commercial use. Encouraged by the success of its cctld domain, the Respondent beginning in 2001 registered its gtld domains to reach a broader global audience. A few of these sites were meant to function as primary commercial websites (e.g. “gtahotels.com”, “gtatravels.com”). Most, however, were meant to be used as search engine landing pages – a clear indication that the Respondent did not believe its names had any marketable value of their own.
In 2002 the Respondent entered into partnership with Miki Travel, Ltd., one of the largest and most respect wholesale tour operators in the world and the Complainant’s closest competitor. The Respondent’s annual revenue in 2003 amounted to more than USD 5 million.
Today, the Respondent operates an office in Istanbul with more than 30 full-time employees and an office in New York City with three full-time staff members. The Respondent has spent more than a quarter of a million USD so far this year in search engine advertising alone to support its sales.
The Complainant challenges the Respondent’s legitimate right to the disputed domain names based on its allegation of trademark infringement by the Respondent in Turkey. The Complainant provides no evidence in support of this allegation other than a reference to its ongoing and unresolved trademark case in Turkey, in which it is challenging the Respondent’s right to use the business names Gullivers Travels Seyahat Acentasi, Gullivers Travel Agency, and GTA - names which the Respondent has used since 1995, nearly six years before the disputed domains were registered.
Since the Complainant’s Turkish trademark registration postdates the Respondent’s use of Respondent’s business names, the Complainant is currently pursuing its case in Turkey on the basis of a claim to unregistered well-known rights. The Complainant has failed to provide evidence addressing either Turkish or internationally-recognized criteria for the establishment of well-known protection (in particular the recommended criteria contained in the September 1999 Joint Resolution Concerning Provisions on the Protection of Well-known Rights adopted by the WIPO General Assembly) and has failed to show any intent on the part of the Respondent to engage in bad faith passing off when it first began using the disputed business names in 1995.
The Complainant’s representatives were aware of the Respondent’s website as early as 2002, two years before this dispute was filed.
The Respondent’s choice of name was clearly based on the worldwide fame and celebrity of the Jonathan Swift novel Gullivers Travels, whose title the Respondent incorporated in full into its legal registered name – the name from which its other trading names were later derived. The promotional material used by the Respondent shows that the Respondent did not pass itself off as an affiliate of any London-based wholesaler, but as an independent travel agency in Goreme. The Respondent’s logo bearing the GTA acronym bears the world-renowned rock formations of Cappadocia, a clear indication that the company was not claiming to be anything but an independent local company. Furthermore, Respondent had no financial incentive for passing itself off as affiliated with the Complainant as the latter had no appreciable level of recognition among consumers to make such passing off financially rewarding.
As to the Complainant’s trademark counter-action in Turkey, the Complainant fails to mention that no court orders have been enforced because of the latter’s failure since June 2004 to put up a bond (amounting to 150 billion TRL, or 100,000 USD) for compensation of the Respondent, and that even a continuance of the Complainant’s counter-suit has been suspended pending Complainant’s payment of a TRL 50 billion guarantee because the Complainant has no substantial presence in Turkey. These guarantees would be refunded to the Complainant in the event of a decision in its favor.
If the Complainant were truly concerned about the possible harm to its reputation, it would have immediately put up the security to continue its case and to stop the Respondent from using the names to which it claims ownership. The Complainant is fully aware had it not delayed proceedings over the issue of payment, there could already have been a judgment in its case. The Complainant has chosen to delay proceedings in order to give itself a chance to win a fast judgment through UDRP – knowing full well that UDRP is not the proper venue for this dispute – since it likely to lose in its Turkish trademark counter-suit. This is a brazen and shameful abuse of the UDRP process. The Respondent asks that the Panel especially make note of the Complainant’s timing of the Complaint in this regard.
Article 5 of Law 1618 governing the operation of travel agencies in Turkey provides that once a travel agency registers a name in Turkey under the auspices of this law, no other entity may use this name in relation to travel services. This explains why, after registering its name as a travel agency in 1995, the Respondent felt no need to obtain a trademark for its name. Second, it indicates that the Complainant’s Turkish trademark registration was in bad faith. Registration of a trademark in Turkey requires that the registrant have an intention to use the trademark in Turkey within five years (Turkish trademark Law 556, Article 14). The Complainant therefore had an obligation, when applying to register its trademark, to research all local laws and regulations relating to its use of the mark and to research any potential conflicts arising from its use of the marks. The Complainant was either remiss in this obligation, or more likely, was aware of the potential conflict but chose not to address it at the time of its registration.
The Respondent, on the basis of law 1618, has filed for cancellation of the Complainant’s trademark. The Respondent filed its suit before the Complainant and hence in all court documents the Respondent is named the complainant/counter-claimant, whereas the Complainant is named the defendant/counter-claimant.
As to bad faith, the Respondent’s registration of domains in which it has legitimate rights and which it has used solely and in earnest for legitimate commercial use cannot be construed as intended to disrupt the business of a competitor.
The Respondent changed the registration address of its publicly registered websites to the US, where it has maintained an office since 2002, for reasons of prestige and consumer confidence. Respondent’s main commercial portal, “www.gtahotels.com”, maintained its Turkish address as it was registered privately to afford it all the protection that is due any mission-critical commercial portal. The alternative portal, “www.gtatravels.com”, maintained its address as it ceased to be promoted altogether, and was eventually redirected to “www.gtahotels.com”.
The Respondent denies that it registered the disputed domains to attract internet users to its websites by deliberately causing confusion with the Complainant’s business and websites.
The Respondent’s legitimate rights to the domains have already been established. There could be no financial gain from confusion with the Complainant. The disputed domains target consumers, who are unlikely to have knowledge of the Complainant or its services. The Complainant is a wholesaler who admittedly does not sell to the public. Wholesalers like the Complainant are largely unknown to the public. In promoting its services to travel retailers on its website, the Complainant calls itself a “silent partner [working] in the background to help clients to promote their own brands”.
There could be no financial gain from confusion in the only sector of the public where the Complainant could be recognized – i.e. travel distributors. These distributors have no incentive to procure from other retailers when lower-priced inventory is available directly from wholesalers. The Respondent’s domains only offer travel services and do not sell – or offer links to – any products or services that may be purchased impulsively by any party drawn to its sites by confusion.
The Complainant has not explained why the Respondent, through its use of the words GULLIVERS and GTA, should come to be confused solely with the Complainant’s services, and not with the services of countless other online and offline travel distributors worldwide using these names – many of which, because they offer their services directly to consumers, are better known to the public than the Complainant.
Finally, the Respondent denies the baffling and unsubstantiated allegation that it has any affiliation with Polohotels.com or any connection to copyright infringement by the latter. A letter from the Istanbul branch manager of Limit Ltd., the company which owns the “www.polohotels.com” website, states clearly that the Respondent has never in any way been affiliated with this company. The Respondent was informed by Limit Ltd that Polohotels.com is in fact an affiliate of the Complainant’s subsidiary OctopusTravel.
The Respondent seeks a finding of reverse domain name hijacking against the Complainant under Paragraph 15(e) of the Policy.
The Complainant is aware, because of its Turkish court proceedings, that the Respondent has been a licensed travel agent in Turkey under the registered name GULLIVERS TRAVELS TRAVEL AGENCY for nearly ten years, but has chosen completely to ignore this fact in the context of this Complaint.
The Complainant registered a trademark in Turkey in 2001 knowing full well that under Turkey’s Law 1618 it could not transact travel business under the name Gullivers in Turkey unless it could first address and resolve the conflict arising from the Respondent’s 1995 Ministry of Tourism registration of the name Gullivers there. The Complainant nevertheless applied for a trademark and waited until the application had been approved to address its conflict with the Respondent.
The Complainant knew of the Respondent’s domains at least as early as 2002 yet waited nearly two years before filing an action against the Respondent. The Complainant could have filed a Complaint through WIPO immediately or it could have sought official certification of the well-known status it is now claiming with respect to the trademark application it had pending in Turkey. Instead, it waited until its Turkish trademark registration had been approved to have a basis on which to file an infringement suit against the Respondent. Now that the Turkish court proceedings are inevitably going against the Complainant, it is delaying those proceedings to give itself a chance to win a fast judgment through the filing of a UDRP complaint – with respect to which it is using the mere filing of its trademark infringement case as the basis of its claim that the Respondent lacks legitimate rights to the domains.
The Complainant has nevertheless wholly failed in its Complaint to support the allegation of trademark infringement. Furthermore, as the Complainant is aware, the UDRP process is not the proper venue for addressing such an allegation. The Complainant has filed this Complaint because it is likely to lose its trademark counter-suit in Turkey and it is precisely for this reason that the Complainant is delaying those proceedings. This is an abuse of the UDRP process and is meant mainly to harass the Respondent.
The Complainant’s true motive for the filing of this case is the desire to disrupt and harass a highly successful distribution outlet of a competitor – since 2002 the Respondent has been a major retail partner of the Complainant’s closest (wholesale) competitor, Miki Travel, Ltd.
The Respondent has incontestable legitimate rights to the disputed domains and has invested heavily in them. The Complainant’s bad faith attempt to wrest these domains from the Respondent through an abusive application of the UDRP process is a clear example of reverse domain name hijacking.
6. Discussion and Findings
Procedural issue: the Turkish court proceedings
Rule 18(a) provides: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Proceedings No. 26/04/9 in the Istanbul 2nd Court of Literary and Industrial Rights were filed by the Respondent on January 6, 2004, seeking cancellation of the Complainant’s registered marks “Gulliver’s Travel Associates” and “GTA”. By way of counter-claim, the Complainant alleges trademark infringement constituted by the Respondent’s use of the business names Gullivers Travels Seyahat Acentasi (Gullivers Travels Travel Agency), Gullivers Travel Agency and GTA. Amongst the orders the Counter-claimant seeks are orders that “internet field names and sites where [the] registered trade marks [are] used should be stopped and restricted”.
Proceedings No. 2004/8 in the Istanbul 2nd Court of Literary and Industrial Rights were filed by the Complainant on January 15, 2004, alleging infringement of its “Gulliver’s Travel Associates” and “GTA+logo” marks, including “at the internet”.
It appears therefore that the Turkish court proceedings may properly be described as “in respect of a domain-name dispute that is the subject of the complaint” within the meaning of Rule 18(a), unlike the situations encountered and discussed in Svenska Örtmedicinska Institutet AB v. Swedish Herbal Institute, Ltd, WIPO Case No. D2003-0509.
The Respondent has not asked the Panel to suspend or terminate this administrative proceeding but has addressed the issues comprehensively in its Response.
The Panel has decided to proceed to a decision because the Turkish court proceedings involve the Complainant’s Turkish registered trademarks, whereas the Panel is able to determine this proceeding without reference to those marks (which were registered after the disputed domain names) and because the issue of infringement does not arise in this proceeding.
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith.
A. Rights in a trademark
To succeed in a Complaint under the Policy in relation to an unregistered mark, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation.v. Harold A Meyer III (eResolution Case No. AF0957). Despite the immediate association of the name Gulliver with Swift’s novel and despite the extensive third party use in the travel industry of the acronym GTA, by majority the Panel is satisfied on the evidence that the Complainant has unregistered rights in at least some countries in the marks “GULLIVERS TRAVEL ASSOCIATES”, “GULLIVERS TRAVEL AGENCY” and the “GTA” logo. The Complainant has carried on an international business on a large scale under these marks. Even though names including “GULLIVERS” or the letters “GTA” are widespread in the travel industry, it seems likely that the full names and logo mentioned above identify the Complainant to a considerable number of people who deal with it. Under the laws of many countries this suffices to confer unregistered trade mark rights on the Complainant.
Having said this, in view of the widespread use of “GULLIVERS” and “GTA” in relation to travel services, the Complainant’s rights are narrow and relatively small differences suffice to avoid confusion. This last point also applies to the Complainant’s registered marks.
Trademark registration applications do not give rise to trade mark rights: Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. The Complainant’s trademark registration applications are therefore disregarded.
Although the Respondent has addressed only those of the Complainant’s registered marks that were filed prior to registration of the disputed domain names, the fact that a domain name was registered prior to accrual of the complainant’s trademark rights does not automatically result in denial of the complaint. See, e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, cited with approval in Wild West Domains, Inc. v. Brynne Heaton WIPO Case No. D2004-0789.
The Panel is satisfied and it is not disputed that the Complainant has registered trade mark rights in many countries (including Turkey) in the marks GULLIVERS TRAVEL ASSOCIATES and GTA logo.
B. Identical or Confusingly Similar
None of the disputed domain names is identical to any of the Complainant’s trademarks.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: see for example BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480 and Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D2001-1121, and the cases there cited.
Applying this test, the Panel finds the domain names <gtatravels.com> and <gtahotels.com> are confusingly similar to the Complainant’s GTA logo mark. The words ‘travels’ and ‘hotels’ do not remove the distinctiveness of the initials GTA, which are the dominant feature of the logo. The Complainant has established this element of its case with respect to those domain names.
The word GULLIVER is in such widespread third party use in connection with travel services that the Panel is not persuaded that any of the other disputed domain names are confusingly similar to the Complainant’s registered mark GULLIVERS TRAVEL ASSOCIATES nor to its unregistered mark GULLIVERS TRAVEL AGENCY. The Complainant has not established this element of its case with respect to those domain names. Accordingly, what follows is confined to the domain names <gtatravels.com> and <gtahotels.com>.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., NAF Case FA00030000094375 and Royal Bank of Canada v. Xross, eResolution case AF-0133.
The Respondent has convincingly demonstrated legitimacy in relation to the domain names incorporating GTA. The Respondent and its predecessor have been operating a legitimate business under the name GTA for several years prior to receiving notice of this dispute. The Respondent’s GTA logo includes the date 1995 and there is evidence of use of that logo in 1997, prior to the filing in Turkey of the Complainant’s application to register its GTA logo mark and prior to the filing of any of the Complainant’s applications to register that mark in other countries.
D. Registered and Used in Bad Faith
It is unnecessary to address this element since the Complainant has failed on the first element in relation to the domain names incorporating the word GULLIVER and has failed on the second element in relation to the two GTA domain names.
E. Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224.
In Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interests.
In K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622, a finding of reverse domain name hijacking was made where, before the Complaint was filed, the Complainant had been informed of and had otherwise ascertained all the facts necessary to establish that the Respondent had a legitimate interest in the disputed domain name.
Here it appears that, before the Complaint was filed, and at least since 1997 (before the Complainant registered the domain name <gta-travel.com>), the Respondent was carrying on business as a retail travel agent under the names GULLIVERS TRAVEL AGENCY and GTA. Its GTA logo contains the date 1995. By majority, the Panel is satisfied that the Complainant was aware of the Respondent’s use of these names in the conduct of its legitimate travel agency business.
The Complainant was also aware, prior to filing the Complaint, of the widespread third party use of the name GULLIVER in connection with travel services. In August 2002 one of the Complainant’s own representatives admitted that “unfortunately the name Gullivers Travel is quite common as we do not have a patent [sic] on it.”
By majority, the Panel finds the Complainant’s decision to file its Complaint in the face of those facts was in bad faith, that the Complaint was filed as an attempt at Reverse Domain Name Hijacking and that it was brought in bad faith primarily to deprive a registered domain-name holder of a domain name. Under these circumstances, pursuant to Rule 15(e), the Panel declares the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Date: December 16, 2004
SEPARATE OPINION CONCURRING IN PART AND DISSENTING IN PART
This Panelist agrees with the majority opinion on all procedural and substantive issues with the exception of that of reverse domain name hijacking.
In this Panelist’s view, it is not clear from the evidence whether the Complainant was aware prior to the Complaint that the Respondent had been using the initials “GTA” before 2001. If the Complainant was not aware of this, it might reasonably have concluded that the Respondent had adopted the Domain Names <gtatravels.com> and <gtahotels.com> and corresponding trading names without justification in order to profit from confusion with the Complainant’s website at “www.gta-travel.com”. On these facts, the Respondent’s use of “GTA” might not have given rise to rights or legitimate interests in respect of the Domain Names and might have been in bad faith, with the consequence that the Complaint would have been justified.
In these circumstances, this Panelist is not satisfied that the Complainant brought the Complaint in bad faith, knowing that it was not justified, or reckless as to whether it was justified or not.
Date: December 16, 2004