WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monarch Airlines Limited v. AKM Services Limited
Case No. D2007-1737
1. The Parties
The Complainant is Monarch Airlines Limited of United Kingdom of Great Britain and Northern Ireland represented by Demys Limited of United Kingdom of Great Britain and Northern Ireland.
The Respondent is AKM Services Limited of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <monarchflights.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2007. On November 26, 2007, the Center transmitted by email to eNom Inc., a request for Registrar verification in connection with the domain name at issue. On November 26, 2007 eNom Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details. The Center verified that 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”).
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 December 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Response was filed with the Center on December 31, 2007. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 21, 2008. The Panel finds that it is 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 in paragraph 7. There are no outstanding interlocutory matters.
4. Factual Background
The Complainant, Monarch Airlines Limited was established in June 1967. It is a British charter and scheduled airline based in Luton. It is one of the United Kingdom’s largest charter airlines operating to Europe, United States of America, Caribbean, India and Africa and other tourist destinations. It also operates scheduled flights to many Mediterranean destinations, the Canary Islands and Cyprus. Its main base is London Luton Airport with hubs at Birmingham International Airport, London Gatwick and Manchester Airport. In 2006, the Complainant carried over 3.2 million passengers on its services. The Complainant’s main on-line presence can be found at <flymonarch.com> through which it advertises and promotes its business and allows web users to search for and book flights and hotels in addition to making general corporate information available to the public.
The Complainant relies upon two UK trade marks for the mark MONARCH. These are no. 1275140 registered on October 1, 1986 in Classes 37 and 39 and no. 2259644 registered on October 24, 1996 in Class 43.
The Respondent is a limited company based at an address in London. According to information at Companies House it was incorporated on 17 December 2002 and is engaged in the business of “other computer related activities”, plumbing, installation, electrical wiring and other business activities. According to the Complainant there appears to be no connection with the airline or travel industry.
The domain name in dispute resolves to a website associated with a domain name <nowsearch.co.uk> which according to the Whois search record exhibited to Annex 6 to the Complaint is operated by Mr G S Kukard. A Mr Steven Kukard is the administrative contact on the domain name and Mr Gideon Stewan Kukard is the Company Secretary. The Complainant believes Mr Gideon Stewan Kukard is the same Mr G S Kukard noted in the Whois record.
This dispute began when the Complainant’s agents Demys Limited wrote to the Respondent on August 13, 2007 in an attempt to settle the matter amicably. A copy of the letter is exhibited at Annex 7 to the Complaint. It does not appear to have been responded to.
The Respondent has filed a short Response in which it states that it manages a large portfolio of names. It states that it has used the domain name in dispute for 4 years without any complaints and that its use is generic. No other evidence is given by the Respondent as to its activities.
5. Parties’ Contentions
A. Complainant
1. The Complainant contends that it has extremely strong rights in the MONARCH mark and submits the domain name in dispute is similar to the mark MONARCH. The Complainant points out that the mark filed in 1986 was filed approximately eight years before registration of the domain name in dispute.
2. The Complainant contends that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. It points out that MONARCH is an extremely well-known mark and submits that it is the most significant and distinctive element of the domain name in dispute. The additional word “flights” is descriptive of the services provided by the Complainant.
3. The Respondent has no rights or legitimate interests in the domain name. The Complainant refers to the Respondent’s website “www.nowsearch.co.uk” and submits that it is probable that the Respondent’s received pay and click revenue from the various hyperlinks displayed on the site. These hyperlinks refer to various providers of services including a general holiday section as well as linking to various travel agents such a lastminute.com, Opodo, Thomson and Thomas Cook all of whom are competitors to the Complainant.
It points out that at no point during the domain name’s registration has the Respondent been commonly known by the mark Monarch or Monarchflights. The Respondent is not a licensee of the Complainant and has not received any consent from the Complainant.
4. The domain name is registered and is being used in bad faith. The Complainant points out and submits:
(i) The Respondent registered and has been using the domain name to intentionally attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
(ii) The domain name is a blocking domain name which is used to block the Complainant from registering a name that most closely and obviously reflects the activities as a major airline.
B. Respondent
1. The Respondent submits that it manages a large portfolio of names and takes care in registering new ones to avoid possible confusion.
2. The Respondent states that the domain name was registered because it was generic; made up of two “simple” words; “Monarch” and “Flights”. It points that the Claimant has two trade marks containing the term “Monarch” but that there are apparently 118 other trade marks for Monarch registered in the UK.
3. It points out that the domain name has made use of the domain name for four years without any complaints.
4. It submits that the domain name did not lead to the Complainant’s site nor offer for sale or claim any association with the Complainant so that any confusion or association is accidental and “purely due to the individual”.
5. It makes a submission of reverse domain name hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has considered the evidence of the Complainant and finds that the Complainant on the evidence has registered trade marks for the mark MONARCH. It is also clear that it has, as a result of its trading activity in using the name Monarch acquired significant unregistered rights in the mark MONARCH.
The distinction between the domain name in dispute and the mark MONARCH is the use of the descriptive word “flights”. This directly relates to the Complainant’s activities as an airline.
The Respondent contends that it is doing no more than using generic names. It may well be that in 1967 when Monarch Airlines Limited was established that the Complainant had not acquired rights in the descriptive word “Monarch”. However, in the Panel’s view the Complainant’s trading activity since that date and the registration of the trade marks MONARCH is clear evidence that the Complainant has rights in the trade mark MONARCH.
In the Panel’s view, “Monarch” has be come distinctive of the activities of the Complainant. Furthermore, the qualifying word “flights” in the domain name qualifies the domain name by reference to the trading activities of the Complainant. Therefore, in the Panel’s view the domain name in dispute is confusingly similar to the mark MONARCH in which the Complainant has rights. Accordingly, the Panel finds for the Complainant in respect of this element.
The Complainant points out that there is no evidence that the Respondent has been commonly known by the mark Monarch or Monarch Flights. It is not a licensee of the Complainant’s rights in the mark and it has not received any commission or consent from the Complainant to use the Complainant’s trade marks. This is not dealt with in any way in the Response.
Rather the Respondent relies on the “genericness” of the mark and submits that it is not illogical to point a domain name referring to “flights” to a “porthole” providing links to holidays. In the Panel’s view the difficulty that the Respondent has complaining that it is entitled to use the mark MONARCH in a generic sense is that this is inconsistent with the established rights that the Complainant has. Moreover, (and even though it is not entirely clear from the Response) it appears that the Respondents website through the use of hyper-links is establishing a link to various travel agents. In the Panel’s view the Respondent has really shown no evidence of rights or legitimate interests in the domain name. It therefore finds for the Complainant with regard to this element.
The Complainant asserts that the Respondent has registered and has been using the domain name to intentionally attempt to attract for commercial gain internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement on the Respondent’s website. It submits that the Respondent makes or intends to make a financial gain every time a visit to the website associated with the domain name clicks on one of the links provided there by forwarding Internet traffic to the Complainant’s competitors and others by way of the various hyperlinks.
The Complaint also submits that the effect of the domain name registration is that a significant number of web users will type the Complainant’s MONARCH mark along with the descriptive term “flights” into their browser to find information about the Complainant and that this will be reverted to the Respondent. In the Panel’s view both of these submissions are sound particularly in the absence of any submissions or evidence to the contrary from the Respondent. In the Panel’s view confusion is inevitable. Moreover the Respondent will have had notice of the Complainant’s trade mark rights insofar as they pre-date the domain name in dispute. The Respondent states that “any confusion or association is accidental and purely due to the individual”. It appears to the Panel that this is not justification for the registration and use of the domain name by the Respondent.
A further point that is raised by the Complainant and which adds to the evidence of bad faith is the evidence of registration. There is evidence that the Respondent is a domain name squatter and speculator who has engaged in the serial registration of domain names that infringe the rights of third parties. Examples of these are set out in the Complaint including <nextstores.com> relating to the trade mark “Next” owned by Next Retail Limited, <alamak.co.uk> in respect of the mark “Alamak” owned by Daimler AG, <eggfinance.co.uk> which relates to the mark “Egg” owned by a subsidiary of the Egg Banking Group and <mintcard.co.uk> which relates to the mark “Mint” owned by the Royal Bank of Scotland Group plc. These domain names were all registered to Mr G S Kukard. In the Panel’s view this evidence supports the Complainant’s submission that the Respondent is a domain name squatter who has engaged in a pattern of registration of infringing domain names.
Accordingly, the Panel is satisfied that there is sufficient evidence of bad faith.
It follows that the Complainant has succeeded in all three elements and that the domain name in dispute should be transferred to the Complainant.
7. Reverse Domain Name Hijacking
The Respondent asserts reverse domain name hijacking and states “it is clear from the Claimants already owning monarchflight.co.uk, monarch.co.uk and various other related domain names they acquired from their previous owners without any legal! action, clearly shows the Claimant’s intent to re-brand their name/website/image to a more generic, easy to remember brandable domain name a€” as tried to do so in 26 May 2003”. The Panel finds the Respondent’s request for reverse domain name hijacking to be unclear. In any case, as the Complainant has succeeded in this dispute, the Panel cannot find that this is a case of reverse domain name hijacking.
8. Decision
For all the forgoing reasons, in accordance with paragraph 4 (i) of the Policy and 15 of the Rules, the Panel orders that the domain name <monarchflights.com> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: February 4, 2008