WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club Jolly Turizm ve Ticaret A.Ş. v. Whois Agent, Whois Privacy Protection Service, Inc. / Fred Millwood
Case No. D2016-1256
1. The Parties
1.1 The Complainant is Club Jolly Turizm ve Ticaret A.Ş. of Istanbul, Turkey, represented by Balcıoğlu Selçuk Akman Keki, Turkey.
1.2 The Respondent is self-represented Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Fred Millwood of New York City, New York, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <jollytour.com> (the “Domain Name”) at the time these proceedings were commenced was registered with eNom663, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. At about that time the publically accessible WhoIs details for the Domain Name, recorded the registrant of the Domain Name to be “WhoIs Privacy Protection Service Inc”. This appears to have been the name of the Registrar’s privacy service.
3.2 On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 24, 2016, the Registrar transmitted by email to the Center its verification response disclosing the identity of the underlying registrant for the Domain Name and associated contact information in the Complaint. In that verification response the Registrar confirmed that the Domain Name had been “placed under a locked status to prevent any transfers or changes to the registration information during the proceedings”.
3.3 On June 24, 2016 the Complainant’s lawyers received an email from someone using the name “Chris” using a Hotmail email address. The email contained the following statement:
“I sell jollytour.com for $10000. You have 16 hours to accept this offer. Otherwise it will be transferred to the owner of jollytours.ca which is a tour operator that has been in this business longer than your clients company (since 1976) and you will lose all of your rights that you claimed in your udrp complaint.”
3.4 The Complainant’s lawyers sent a copy of that email to the Center and the Registrar later that day and sought confirmation that the Domain Name was locked. That same day the Registrar provided that confirmation in an email.
3.5 On June 29, 2016 the Center sent an email to the Complainant 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 July 1, 2016.
3.6 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”).
3.7 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2016. Upon request of the Respondent, the Center extended the due date for Response until August 4, 2016. The Response was filed with the Center on August 1, 2016.
3.8 On August 4, 2016 the Center sent an email to the Registrar stating that notwithstanding the fact that the Registrar had previously confirmed that the Domain Name had been locked, the publically available WhoIs details for the Domain Name had changed and one “Bob Jackson” in California, United States of America, was registered as the registrant and NameSilo LLC was recorded as the Registrar.
3.9 Later that day the Registrar responded as follows:
“This domain is no longer registered through Enom. Please work with the current registrar regarding the dispute.”
3.10 NameSilo responded also in an email on August 4, 2016 in the following terms:
“How was the domain permitted to transfer to us? Shouldn’t Enom/Rightside have implemented a lock preventing it?”
3.11 The Registrar’s reply by email on August 5, 2016 was that:
“Enom has recently divested itself of several registrar credentials and that was one of them”.
3.12 The Center then wrote to both the Registrar and NameSilo expressing its concern that the Domain Name appeared to have been transferred in this case in “clear contravention of paragraph 8 of the UDRP”. It asked for confirmation that the Domain Name was now locked and stated that it was the Center’s intention to bring what had happened in this case to ICANN’s attention.
3.13 NameSilo responded to that communication by confirming that it had locked the Domain Name. As far as the Panel is aware, no response was forthcoming from the Registrar.
3.14 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 10, 2016. 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.
4. Factual Background
4.1 The Complainant is a company based in Turkey that provides services in the tourism sector. The Complainant was founded in 1987 and currently has 3,500 employees.
4.2 The Complainant is the owner of various registered trade marks including the following:
(i) Turkish registered trade mark 98/009320 in classes 39, 41 and 42 filed on July 10, 1998 and which proceeded to grant on July 27, 1999 and which appears to comprise the text JOLLY INTERNATIONAL TOURS;
(ii) Turkish registered trade mark 2009/32357 in classes 35, 36, 38, 39, 41 and 43 filed on June 19, 2009, which proceeded to grant on June 15, 2010 and which takes the following form:
(iii) Turkish registered trade mark 2010/16197 in classes 39 and 43 filed on March 11, 2010, which proceeded to grant on May 6, 2011 and appears to be identical in form to the mark identified at (ii) above
(iv) International trade mark no. 1166989 dated August 13, 2012 in classes 39, 41 and 43, designating various states and appears to be identical in form to the mark identified at (ii) above
4.3 In 2016 the Complainant also applied for registered trade marks in the terms “jollytur” and “jolly”, but at the date of this decision neither application appears to have proceeded to grant.
4.4 The Respondent would appear to be an individual in the United States.
4.5 Exactly when is not clear, but it would appear that the Complainant acquired the Domain Name and then used it for some time in connection with its business. However, at some point thereafter the Complainant allowed it to expire. The Domain Name was then re-registered by the Respondent on May 16, 2016.
4.6 Initially the Domain Name was used to display a page which appeared to solicit offers for purchase of the Domain Name and displaying a contact email address.
4.7 It would appear that an individual in the Complainant’s IT department then made contact with the Respondent. In the correspondence that followed, the individual at the Complainant referred to the fact that the Respondent was seeking USD 139,000 for the Domain Name. That individual claimed that he had been responsible for the failure to renew the Domain Name and sought the Respondent’s assistance. However, the Respondent made it clear that he did not intend to accept any “low offers” on the Domain Name, claiming that someone had offered to pay the USD 139,000 and there was now a binding contract between him and this person or entity.
5. Parties’ Contentions
5.1 The Complainant provides a list of trade marks that includes the registered trade marks and the trade mark applications referred to in the Factual Background section of this decision but without expressly distinguishing between those marks that have proceeded to grant and those that have yet to do so.
5.2 The Complainant claims that the Domain Name comprises the words “jolly” and “tours” and alleges that the word “jolly” is identical with the “registered and well-known Jolly Trademarks of the Complainant”. It also claims that the “Jolly International Tours trade mark is a famous mark under article 6 bis 1 of the Paris Convention”.
5.3 The Complainant maintains that the “.com” generic Top-Level Domain (“gTLD”) “does not affect the confusing similarity or identity between the domain name and the trademarks in issue”.
5.4 The Complainant denies that the Respondent has any rights or legitimate interests in the Domain Name. In this respect it refers to the fact that the Domain Name was previously owned by the Complainant but that it was registered by the Respondent when the Complainant failed to renew it. The Complainant further claims that the Respondent does not have any registered rights in the “Jolly Tours” name and that the reputation of the Complainant is such that the clear purpose of registration of the Domain Name was to sell it. It appears to contend that at one stage a webpage was displayed from the Domain Name in which the Domain Name was offered for sale at a price of USD 139,000. However, this is not visible in any of the material attached to the Complainant.
5.5 So far as bad faith is concerned, the Complainant refers to and exhibits email correspondence with the Respondent in which it does seem to be the case that the Respondent sought USD 139,000 for the Domain Name. It also refers to the emails that were sent by the Respondent after these proceedings were filed, the contents of one of which are set out in paragraph 3.3 of the Procedural History section of this decision above. These emails are said to further demonstrate bad faith on the part of the Respondent.
5.6 The Complainant further contends that the reputation and goodwill of the Complainant’s trade marks are such that the Domain Name must have been registered with the intention of selling it back to the Complainant.
5.7 The Complainant also alleges that there have been attempts in the case to disguise the identity of the Respondent and that this supports a finding of bad faith. In this respect the Complainant relies, inter alia, upon the Respondent’s use of a privacy service in respect of the Domain Name.
5.8 The Respondent set out his case in a single, albeit lengthy, paragraph. Accordingly, it is convenient simply to reproduce this in full. It reads as follows:
“I always check uspto.gov and wipo.int to see if there are any trademarks on the name that i want to buy the domain, the complainant is a Turkish company and it is operating in Turkey and they don’t have trademark on USPTO and there is no a trademark that exact search of ‘Jolly Tour’ thereby i couldn’t see any trademark that i should concern of. I can’t check all countries trademark databases one by one, the language of complainants website is Turkish and there is not a visible English language choice which means it is not a global company. Disputed domain name is completely English and complainant currently using a domain that is half Turkish and half English. I have interest in this domain name and i don’t need “right” to use it because i wasn’t going to do a similar business with complainant or other brand owners around the world, i planned to do something unique. The reason i tried to reach to potential buyers is after i start using domain name if someone come and make me an offer for the name then it puts me on a hard situation, so to avoid this i always try to reach out to potential buyers before starting my new projects Firstly, selling a domain name is not bad faith i do this once a month at least and this is first time i am having a UDRP. Before sending offer mail to complainant for the domain name my broker sent mail to 13 potential buyers and only complainant showed interest and made 1000 offer in US dollars, i was looking for more to give up on this name. I was looking for more because i really had interest in it, i wanted to use it on my new project. Then my broker declined offer and said he was looking for more. Saying price is exorbitant is just meaningless i have the right to set my own asking price. I threatened complainant because i was angry for their reverse domain hijack attempt and i didn’t want to spend time with this meaningless case. I said i will give the name to Jolly Tours.Ca for free because if someone gonna get this name from me for free, i think they are deserving it more. JollyTours.ca is operating in Canada since 1976. I sent a mail to them also but they didn’t try to reverse hijack this domain name. Here is the list of businesses that i sent mail to sell the domain name(all of them has ‘jolly’ and ‘tour’ in their names and none of them disputed this domain name.); JollyTours.ca JollyTour.ro JollyTours.ro JollyRogerTour.it Jolly.rs JollyGoodTours.co.uk JollyTours.in JollyTours.hr Those businesses deserve this domain more then JollyTur.com because those domains are exactly English. Saying ‘respondent failed to provide sufficient contact information to the registrar’ just because i am using whois privacy, shows how ignorant complainant is. Complainant shows me examples from other panel decisions but there is no similarity between our case and any of these cases. This domain name is a generic name that has an adjective and a noun and complainant may have some trademark in its own country but this brand is not recognizable in my country i was unaware before i reg this name that complainant will want this name that much.”
5.9 The Respondent further contends that this is a case of reverse domain name hi-jacking.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. However, before it does so it will add a few comments concerning the recent change of registration details for the Domain Name and the Registrar’s correspondence with the Center in this respect, which have been described in the Procedural History section of this decision.
6.3 As the Center pointed out in an email to the Registrar in early August 2016, the transfer of the Domain Name into the name of another registrant and another registrar appears to have been a clear breach of paragraph 8 of the UDRP. The Registrar should not have allowed it to happen, but rather than co-operate with the Center and the new registrar to resolve the situation, the Registrar’s response suggests that it no longer considered this to be its problem and that the Center should take this up with the new registrar. In the Panel’s opinion that was a wholly inadequate response. The Panel notes that the Center has stated that it intends to take this matter up with ICANN and this appears to the Panel to be more than appropriate in the circumstances of this case. Should the Center consider it helpful or appropriate, the Center is also welcome to bring the Panel’s comments in this respect to the attention of ICANN.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the only sensible reading of the Domain Name is as the words “Jolly” and “Tour” in combination with the “.com” gTLD. It is unfortunate that the Complainant failed to properly distinguish between what appear to be trade mark applications and registered trade marks in its Complaint. Trade mark applications are generally deemed insufficient to provide rights in a trade mark for the purposes of the Policy, although there may be limited circumstances in which an application that has not proceeded to grant nevertheless provides such rights (see the discussion in HQUK Limited v. Head Quarters WIPO Case No. D2003-0942).
6.5 Nevertheless, in this particular case it does not matter. The Complainant is the very least the owner of a trade mark that comprises the words “Jolly International Tours” and which appears to be either a word mark or these words in non-distinctive typeface. The most distinctive element of that mark is the word “Jolly” and that word appears in both the mark and the Domain Name. The additional word “tour” in the Domain Name is the singular form of the word “tours” that appears in the mark. In the circumstances, this mark and the Domain Name are clearly “confusingly similar” as that phrase is understood under the Policy. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 As is explained in greater detail in the context of a discussion of bad faith later on in this decision, the Panel has reached the view that the Respondent registered and has held the Domain Name with a view to its possible sale to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs. It does not accept the Respondent’s contention that this was registered for use in connection with some independent project and certainly there are no materials before the Panel that would suggest that it was acquired with a view to the use of the Domain Name in connection with a bona fide offering of goods or services (as to which see paragraph 4(c)(i) of the Policy).
6.7 In the circumstances, the Panel concludes that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The Complainant makes various assertions in its Complaint about the fame of the name “Jolly Tours” as a mark for the Complainant’s business, even going so far as claiming that it is a famous mark under Article 6 bis 1 of the Paris Convention. Unfortunately, the Complaint is inadequate when it comes substantiating those claims and the Panel has been able to give little weight to those claims in these proceedings. There is no real description or evidence as to the extent to which that mark has been used, whether that be in terms of the size of the business operated under that mark or the territories in which that mark has been used.
6.9 In many cases this would be significant. Where a complainant (as the Complainant has done here) contends that the mark has developed such a reputation that at the time that the domain name was registered the respondent must have been aware of that mark and then asks a panel to infer from such knowledge (and perhaps other material) that the respondent registered the domain name with the intention of taking unfair advantage of that mark’s reputation, then it is essential that the complainant provides proper evidence in this respect.
6.10 Further, the Panel notes that although the Complainant has operated a webpage from the domain name <jollytur.com> for some time in which the Jolly International Tours Design Mark is prominently displayed, that web page appears to be in Turkish only. According to the Respondent, the Complainant does not operate a website in any other language and in email correspondence before these proceedings the Respondent claimed that the Domain Name had been used by the Complainant to redirect Internet users to that Turkish website. In the circumstances, the Panel is far from convinced that the reputation of the Complainant’s business and associated marks was so wide spread that by reason of that reputation alone, it is likely that the Respondent was aware of them at the time the Domain Name was registered.
6.11 Notwithstanding this, the Panel has reached the conclusion that the Domain Name was registered by the Respondent with knowledge of the Complainant’s business and marks and with a bad faith intention to sell the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs. The reasons for this are as follows:
(i) The Respondent registered the Domain Name as a result of the Complainant’s failure to renew it. The Respondent does not explain exactly how he acquired the Domain Name, but in the absence of any such explanation it is reasonable to infer that the Respondent acquired the Domain Name through some mechanism whereby he knowingly took advantage of that failure to renew and is likely to have undertaken some form of due-diligence as to who had previously owned that Domain Name, how it had been used and the attractive force of the same.
(ii) Although the Respondent claims that he did a US trade mark search when he registered the Domain Name and that the Complainant’s trade mark is “not recognizable in his country”, it is notable that he does not expressly deny that he was aware of the Complainant’s prior use of the Domain Name at the time he registered it. He claims that he was unaware prior to registration that the Complainant would want the Domain Name “that much”, but that is not the same thing.
(iii) The Respondent claims that he registered the Domain Name for use in an independent project that would be “quite unique” are implausible where the project is not identified and no documentary evidence has been provided in relation to the same. Even if no documentation existed in relation to the proposed “jolly tour” project, the Respondent appears to claim that he has engaged in projects in respect of other domain names in the past. Therefore, if this is correct there would be material in existence in respect of those other projects that would have corroborated the Respondent’s claims. No such material is provided. Further, the claim that the Domain Name was acquired for a “project” is prima facie inconsistent with the fact that he has offered the Domain Name for sale. His suggestion that he always offers domain names he acquires to others before embarking on such projects because a subsequent approach might place him in a “hard situation”, absent further explanation, makes little sense. The Panel concludes that it is far more likely that the Domain Name was registered with a view to its onward sale.
(iv) The Respondent is quite correct when he asserts that there is nothing per se wrong in offering a Domain Name for sale and that he has a right to set his own asking price. However, the amount of money sought for a domain name often is highly relevant factor when it comes to assessing for what purpose that domain name was registered. As this Panel stated in Robin Food B.V. v. Bogdan Mykhaylets, WIPO Case No. D2016-0264 (starting at paragraph 6.13):
“There is also the fact that the material that the Respondent has disclosed shows that the Respondent has been seeking to sell the Domain Name for at least USD 25,000. A person who legitimately owns a domain name is entitled to sell it for as little or as much as he likes or thinks he can get away with. This is something that the Respondent is no doubt very familiar with given the finding in his favour on this very issue in Versalis S.p.A. v. Bogdan Mykhaylets, WIPO Case No. D2014-2284, where an offer to sell the domain name to the complainant for EUR 99,000 (even if characterised as unreasonable), was not seen as evidencing bad faith. Nevertheless, high offers of this sort are often telling. If the price sought by a domain name trader for a domain name appears to be way beyond that which appears to be its intrinsic value in the absence of the trade mark rights of others, then a trader should not be surprised if a panel concludes that the real reason why such a high price is being sought is because of that domain name’s potential association with the trade mark rights of others.” [emphasis added]
The Panel believes that this is such a case. The Panel accepts, in the absence of evidence to the contrary, that the USD 139,000 price suggested by the Respondent was, in the words of the Complainant, “excessive”. In the absence of any evidence from the Respondent on this point it appears to the Panel to go way beyond its value in the absence of the trade mark rights of others. Accordingly, it is evidence that supports the allegation that the Respondent both registered and held the Domain Name with a view to its sale to the Complainant.
(v) Last but not least, there is the email that the Respondent sent to the Complainant on June 24, 2016 when these proceedings were commenced. This email shows the Respondent in a very poor light. He was threatening to attempt to frustrate the operation of the Policy and to act directly contrary to paragraph 8(a) of the Policy by transferring the Domain Name to another person, unless the Complainant agreed within 16 hours to pay him USD 10,000 for the Domain Name. The change in registration details that followed (and which is also mentioned in the Procedural History section of this decision) suggests that the Respondent may well have followed through with that transfer threat. This is conduct that one would not expect of a legitimate business or legitimate trader in domain names. It suggests that the Respondent is someone who is prepared to act without regard to the rights of others. As such, it is supportive of a finding of bad faith registration and use.
6.12 In the circumstances, the Panel concludes that the Domain Name was both registered and has been used in bad faith. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <jollytour.com> be transferred to the Complainant.
Matthew S. Harris
Date: August 12, 2016