WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club Jolly Turizm ve Ticaret A.Ş. v. Registration Private, Domains by Proxy, LLC / Jon B. Jolly, Inc.
Case No. D2018-0924
1. The Parties
The Complainant is Club Jolly Turizm ve Ticaret A.Ş. of Istanbul, Turkey, represented by Balcıoğlu Selçuk Akman Keki, Turkey.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Jon B. Jolly, Inc. of Seattle, Washington, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <jolly.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2018. On April 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2018 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 May 22, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Center received a communication from the Respondent on June 8, 2018. The Center notified the Parties of the commencement of the panel appointment process on June 13, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 21, 2018. 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
The Complainant is a Turkish tourism company founded in 1987 with now some 3,500 employees.
The Complainant holds trademarks comprising or incorporating the word "Jolly", including:
JOLLY INTERNATIONAL TOURS, design, International trademark, registered on August 13, 2012, registration number 1166989, in classes 39, 41 and 43;
JOLLYTUR, Turkish Patent and Trademark Office, registered on October 4, 2016, registration number 2016 31474, in classes 35, 39, 41, 42 and 43;
JOLLY INTERNATIONAL TOURS, design, Turkish Patent and Trademark Office, registered on February 4, 2014, registration number 2012 96115, in classes 39, 41 and 43;
JOLLY INTERNATIONAL TOURS, design, Turkish Patent and Trademark Office, registered on October 28, 2015, registration number 2012 41692, in classes 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 21, 22, 23, 25, 26, 27, 29, 30, 31, 33, 34, 37, 40, 44 and 45;
JOLLY INTERNATIONAL TOURS, design, Turkish Patent and Trademark Office, registered on May 6, 2011, registration number 2010 16197, in classes 39 and 43;
JOLLY INTERNATIONAL TOURS, design, Turkish Patent and Trademark Office, registered on June 15, 2010, registration number 2009 32357, in classes 35, 36, 38, 39, 41 and 43;
JOLLY INTERNATIONAL TOURS, stylised, Turkish Patent and Trademark Office, registered on July 27, 1999, registration number 198468, in classes 39, 41 and 42;
JOLLY, Turkish Patent and Trademark Office, registered on December 26, 2016, registration number 2016 31479, in classes 39, 41, 42 and 43.
The Complainant also owns the domain names <jollytur.com> and <jollytour.com>.
The Respondent has not submitted any background information but appears to have for some years operated a Seattle based business and a website at the disputed domain name concerning the selling and buying of specialised electronic apparatus. Presently the disputed domain name resolves to a parking page. The disputed domain name was registered on February 27, 1997.
5. Parties' Contentions
The Complainant's contentions include the following.
The Complainant submits that it has rights in the trademarks listed in section 4 above and has produced copies of the relevant paper or online records of registration.
The Complainant says the disputed domain name is identical or confusingly similar to its trademarks. The Complainant has annexed a document, not in the language of the proceeding, that it says means the trademark JOLLY TOURS and logo is registered as well-known at the Turkish Patent Institute. The public would likely confuse the disputed domain name with the Complainant's trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Complainant and the Respondent and no licence or permission to use the Complainant's trademarks has been granted to the Respondent. The Respondent's use of a proxy service provider has been to hide its identity, indicating it is not known by the disputed domain name. The disputed domain name is not in use for the provision of any products or services. The Complainant says the Respondent has the onus of proof that it has rights or legitimate interests in the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name is passively held, which in certain circumstances may constitute registration and use in bad faith. It would be appropriate to consider the parallels between the present dispute and the previous case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant's trademarks are in substantial use in Turkey and abroad. The Respondent has attempted to conceal its identity. The Respondent has no identifiable business. It is not possible to conceive of any way in which the disputed domain name could be used by the Respondent in good faith.
The Complainant says this dispute is one in which rights and legitimate interests, and bad faith, may appropriately be dealt with together.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its position, and draws attention to its success in the case of Club Jolly Turizm ve Ticaret A.Ş. v. Whois Agent, Whois Privacy Protection Service, Inc. / Fred Millwood, WIPO Case No. D2016-1256.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply formally to the Complainant's contentions.
A communication from an email address associated with the disputed domain name, sent to the Center on June 8, 2018, forwarded to the Panel, reads as follows:
"I do not understand what is happening with my domain Jolly.com
Nothing has been changed or should be changed. Is someone trying to steal it from me?
Mary Ruth Jolly".
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties. In the interests of treating the Parties with equality (Rules, paragraph 10(b)) the Panel has considered the informal communication received from the Respondent.
A. Identical or Confusingly Similar
The sole or prominent word in the Complainant's trademarks is JOLLY. An assessment of confusing similarity between the disputed domain name and the Complainant's trademarks requires solely an objective comparison, without taking account of relative registration dates and other considerations. The Panel finds the disputed domain name, disregarding the generic Top-Level Domain (gTLD) ".com", to be identical to the Complainant's trademark JOLLY and confusingly similar to the Complainant's trademarks JOLLY INTERNATIONAL TOURS and JOLLYTUR for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that it has had no relationship with the Respondent, which has not been licenced or permitted to use the Complainant's trademarks, and therefore the Respondent is without rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy advises the Respondent as follows:
"c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) [of the Policy]:
(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The examples listed in paragraph 4(c) of the Policy are non-exhaustive and rights or legitimate interests in a disputed domain name may be satisfied by alternative means.
The Complainant, in pre-emption of any Response under paragraph 4(c) of the Policy, asserts that the disputed domain name is not in use for the provision of any products or services that would have relevance with the disputed domain name, and by implication, cannot qualify under paragraph 4(c)(i) of the Policy; and that the Respondent, because of its use of a privacy service, is not known by the disputed domain name under paragraph 4(c)(ii) of the Policy.
The principle that it is for the Respondent to satisfy the requirements of paragraph 4(c) of the Policy lies within the framework of the overriding principle, as cited above in reference to paragraph 4(a) of the Policy, that "the complainant must prove that each of these three elements are present". The Complainant is not absolved from the obligation to make reasonable enquiries of readily available information in order to ascertain whether it has a valid case. It is furthermore prudent to do so in order to pre-empt any Response, since the Complainant has no right of reply to the Response (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
The Complainant's assessment of the disputed domain name appears to rely on the recent parking page of the website, produced in evidence. As specifically sanctioned under section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Panel checked the Wayback Machine ("www.archive.org"). A similar check by the Complainant would have revealed that the disputed domain name hosted an active website from December 5, 1998 (before the Complainant's trademark number 198468 was granted registration) until January 28, 2013, dealing consistently in the business of specialised electronic apparatus. The business was named Jon B. Jolly, Inc., with a Seattle, United States, street address, telephone and fax numbers stated, and an email link to "Jon" at the disputed domain name. Thus, the Complainant was not in a position to assert, in terms of paragraphs 4(c)(i) and (ii) of the Policy, which are written in the past tense, that there were no "products or services provided by the Respondent that would have relevance with the disputed domain", or that the use of a proxy service was to hide the name by which it was known, which was clearly stated on its website together with contact details.
On the evidence and on the balance of probabilities, the Panel finds for the Respondent under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is for the Complainant to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found in other circumstances by the Panel.
As the Complainant has noted, considerations of rights and legitimate interests may interact with those of registration and use in bad faith. It is in connection with bad faith that the WIPO Overview 3.0 discusses the registration of a domain name before a complainant has acquired trademark rights, stating in part at section 3.8.1, "Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent". The potential exception to this logic is where a respondent can be shown to have anticipated the registration of a trademark, the examples in section 3.8.2 of the WIPO Overview 3.0 being "(i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application".
The WhoIs shows that the disputed domain name was first registered on February 27, 1997. No evidence has been produced that the Respondent acquired it later. The earliest trademark registration produced by the Complainant, registration number 198468, was granted registration on July 27, 1999, having been applied for on July 10, 1998. The disputed domain name was therefore registered a year and four months before the application date of the earliest of the Complainant's trademarks, and two years and five months before the trademark was granted registration.
The registration of a domain name is a single act at a moment in time. There has been no evidence or suggestion that the Respondent intended, or was in any position at that time, to anticipate the Complainant's registration of its trademark or to direct any other act against the Complainant in bad faith. Accordingly the registration of the disputed domain name by the Respondent is found not to have been in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
For completeness, there is no evidence the disputed domain name was registered with the primary intention of sale; that the Respondent has engaged in a pattern of blocking registrations; that the Respondent has engaged in disrupting the business of a competitor; or that the Respondent, dealing in electronics, has attempted to attract the Complainant's tourist customers.
The Complainant says the disputed domain name is not in use but is passively held. The owner of a legitimately registered domain name is not obliged to use it for a website, or at all, and may continue to renew it. In fact the disputed domain name is in use, if only for an email address, as are a great many domain names, and it is from the email address shown on the previously active websites that Mary Ruth Jolly has replied.
On the evidence, the circumstances of the Respondent's use of the disputed domain name do not come close to fulfilling the criteria outlined in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as cited by the Complainant. Furthermore, the use of a privacy service by a registrant is entirely legitimate, some may say prudent, unless, for example, it is part of a scheme to avoid service of proceedings in respect of a domain name that is an abusive registration in other respects. The Respondent acknowledged receipt of the Complaint.
The registration and use of the disputed domain name by the Respondent are found not to have been in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Date: July 2, 2018