The Complainant is Jetfly Aviation S.A. of Luxembourg, represented by Bugnion Ballansat Ehrler of Switzerland.
The Respondents are Jens K. Styve / Domains by Proxy, Inc. of Norway and Happy Landings S.A. of Luxembourg, represented by Etude de Me Philippe Azzola of Switzerland.
The disputed domain name, <jetfly.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2010. On February 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2010.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
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 March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. The Response was filed with the Center on March 23, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 1, 2010. The Panel finds that it was properly constituted. 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.
When the Complaint was first filed with the Center on February 17, 2010 the registrant of the Domain Name was identified on the Registrar's Whois database as Domains by Proxy, Inc. When on February 23, 2010 the Registrar responded to the Center's verification request, the Registrar informed the Center that the registrant of the Domain Name was a Mr Jens K. Styve of Norway.
On March 1, 2010 Mr. Styve wrote to the Center stating that he is a graphic designer and he registered the Domain Name in April, 1999 for use with his graphic design website. He produces a link to the Internet Archive WayBackMachine showing that from at least as early as March 5, 2000 to March 2008 the Domain Name was indeed connected to a graphic design-related website/webpage. He further states that from about 2004, he found that he no longer needed the Domain Name as most of his clientele were Norwegian and his website connected to his other domain name, <jetfly.no>, was (and still is) sufficient for his purpose. He then put the Domain Name up for sale and eventually sold it in November, 2008 to someone named Jean Levet, who represented himself to be a graphic designer. His letter concludes as follows:
“I sold the domain to Jean Levet in good faith, and have had nothing to do with it after that. At the time I sold the name, I had no reason to believe Jean Levet was not the graphic designer he claimed to be, with the intentions he claimed to have. I can see today that the page content is far from Jean Levets personal graphic design. Whatever has been going on with the name after I sold it is outside my control.”
The Respondent, Happy Landings S.A., agrees that Mr. Styve's name should not have remained in the Registrar's Whois database and there is nothing before the Panel to suggest that Mr. Styve's account set out above is untrue, so the Panel proposes to treat Happy Landings S.A. as the sole Respondent. Jean Levet appears to be related to Eugenie Levet, the graphic designer whom the Respondent claims designed the original Jetfly logo.
Deciphering the factual background has not been easy for the Panel and this has been largely due to the fact that the vast bulk of the Respondent's evidence has not been in English, the language of this administrative proceeding, but in French. True it is that the Response itself, the substance of which (section 3) comprises a mere 508 words, is in English, but the exhibits, which extend to 126 pages are all in French save for the first page, the Index, which is in English.
Paol S.A., a company incorporated in Luxembourg, is the proprietor of International trade mark registration no. 921 168 dated December 5, 2006 and Benelux trade mark registration no. 00661305 dated September 8, 1999. In each case the mark is a representation of the word JETFLY in logo form and the goods and services covered relate to aircraft.
The Complainant was incorporated in Luxembourg on June 21, 1999 under its name Jetfly Aviation S.A. The founders of the company were Paol SA and a Mr. Jacques Lemaigre du Breuil and from the date of incorporation of the Complainant through to April 7, 2008 Mr du Breuil was the Complainant's managing director and President of the Board.
The Respondent was incorporated in Luxembourg on June 25, 2008 under its name Happy Landings S.A. As with the Complainant, Paol S.A. and Mr. du Breuil were the founders of the company. Mr. du Breuil is the managing director.
On August 16, 1999 the Complainant registered the domain name, <jetfly.net>, which is connected to its operational website.
On October 17, 2007 the Complainant applied for registration of JETFLY as a Community Trade Mark for transport-related goods and services. The registration came through on October 17, 2008.
On April 7, 2008 Paol S.A. wrote to the Complainant informing it that the licence under which the Complainant was permitted to use the trade mark JETFLY was thereby terminated with effect from September 30, 2008 and seeking confirmation by return that the Complainant would not use the mark thereafter. Chasers to similar effect were sent to the Complainant on May 29, 2008 and September 30, 2008.
The Respondent was licensed by Paol S.A. to use the JETFLY trade mark from October 1, 2008.
On January 28, 2009 the Complainant commenced proceedings against the Respondent in Geneva in relation to the latter's use of the name/mark JETFLY (including its use as part of the Domain Name). Those proceedings are pending.
On March 23, 2010 Paol S.A. instituted a cancellation action against the Complainant in respect of the Complainant's Community Trade Mark detailed above.
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's trade mark JETFLY.
The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The essence of the Response is that the rights to the JETFLY trade mark lie with Paol S.A., not the Complainant, that the Complainant's right to use the trade mark terminated on termination of the licence on September 30, 2008, that since October 1, 2008 the Respondent has been using the Domain Name lawfully under licence of Paol S.A., the trade mark owner.
The Respondent further contends that the proceedings initiated by the Complainant before the Geneva court, which are currently pending, address the issue as to whether the Complainant is entitled to restrain the Respondent's use of the Domain Name and that the Panel should not seek to anticipate the decision of the Geneva court.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely 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 interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In light of the Panel's finding under D below, it is unnecessary for the Panel to address this issue.
In light of the Panel's finding under D below, it is unnecessary for the Panel to address this issue.
The Policy was designed to address a narrow form of intellectual property dispute, namely cybersquatting. From the examples of bad faith registration and use set out in paragraph 4(b) of the Policy, it can be seen that broadly the behaviour which the Policy was designed to address is the exploitation of a trade mark owner's trade mark by a domain name registrant (with no rights or legitimate interests in respect of the domain name) for his own commercial benefit and/or to cause detriment to the trade mark owner.
This does not appear to the Panel to be such a case. Here, as can be seen from the factual background set out in section 4 above, the principal rights owner is Paol S.A., a founder of both the Complainant and the Respondent and the Respondent's licensor.
It may be, of course, but the Panel is in no position to judge, that the termination of the licence to the Complainant by Paol S.A. was unlawful and that the licence to the Respondent and the Respondent's subsequent use of the trade mark are also unlawful. In that event, it may be that the Respondent's registration and use of the Domain Name is abusive within the meaning of paragraph 4(a) of the Policy.
However, on the face of it, the Respondent is acting under licence of an owner of the trade mark. The Panel is unable to conclude on the evidence before him that the Domain Name was acquired by the Respondent and is being used in bad faith.
In January, 2009 the Complainant felt it appropriate that the rights in respect of the Domain Name be addressed by the Geneva court and initiated proceedings before that court for that purpose. The decision of the Geneva court is awaited. The Panel agrees with the Respondent that it be left to the Geneva court to adjudicate the issue.
However, if the Geneva court hands down a decision to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name, but does not order transfer of the Domain Name to the Complainant, or the said court proceeding should be otherwise discontinued without resolution, and the Complainant thereafter wishes to refile the Complaint with the Center, the Panel believes that the Complainant should be permitted to do so.
For all the foregoing reasons, the Complaint is denied, but without prejudice to the Complainant's entitlement to re-file the Complaint in the circumstances identified in the preceding paragraph.
Dated: April 5, 2010