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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gatwick Express Limited v. Jungmo Lee
Case No. D2002-0311
1. The Parties
The Complainant is Gatwick Express Limited of 75 Davies Street, London, United Kingdom.
The Respondent is Jungmo Lee ("the Respondent") of Yoksam-Dong, 34-86, Seoul, Kangnam-Gu, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name the subject of the Complaint is <gatwickexpress.com> ("the Domain Name").
The Registrar with which the Domain Name is registered is TLDs Inc., dba SRSPLUS of 1100 Glendon Avenue, 8th Floor, Los Angeles, California, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received an e-mail copy of the Complaint on April 2, 2002, and a hard copy of the Complaint on April 5, 2002. An acknowledgement of Receipt of Complaint was sent by the Center on April 9, 2002.
On April 10, 2002, a Request for Registrar Verification was transmitted to the Registrar requesting it to :
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Rules"), Paragraph 4(b);
(2) confirm that the Domain Name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the Domain Name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrar’s WHOIS database for the Domain Name registrant, technical contact, administrative contact and billing contact, for the Domain Name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Name;
(6) indicate the current status of the Domain Name;
(7) confirm the language of the registration agreement, and
(8) indicate whether the Respondent has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name (paragraph 1, Rules).
On April 17, 2002, the Registrar confirmed by reply e-mail that the Domain Name is registered with it and that the Respondent is the current registrant of the Domain Name. The Registrar also confirmed the Respondent’s address and that the Respondent was listed as the Administrative, Technical and Billing Contact, providing e-mail and telephone details. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the domain name at issue.
The Registrar confirmed that the language of the registration agreement is English and also confirmed that the Respondent has submitted in his Registration Agreement to the jurisdiction at the location of the principal office of the Registrar (Los Angeles County-California) for court adjudication of disputes concerning or arising from the use of the Domain Names.
On April 18, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
Also on April 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail to the Respondent.
As no Response was filed within the time specified by paragraph 5 of the Rules, on May 14, 2002, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant elected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.
The Administrative Panel appointed consists of Dr Annabelle Bennett SC ("the Panelist"). On May 22, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.
4. Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.
The trade mark "Gatwick Express" ("Trade Mark") has been registered in the United Kingdom since December 18, 1993. It is registered in respect of services in classes 39 and 42; registration numbers 1,557,628 and 1,557,629 respectively.
The services in class 39, in respect of which the "Gatwick Express" Trade Mark is registered are: transportation by rail of passengers, passengers’ vehicles and passengers’ luggage into and out of Gatwick Airport; luggage storage services; escorting of travelers; ticket booking and seat berth reservation services; timetable enquiry services; travel agency, tourist agency and travel information services; all provided for rail passengers and arranging the transportation of passengers.
The services in class 42, in respect of which the Trade Mark is registered are catering services.
The Trade Mark was originally registered by the British Railways Board in December 1993. It was assigned to the Complainant in November 1994, and then to The Director of Passenger Rail Franchising in July 1995, being the current registered proprietor of the Trade Mark. The Complainant was granted an exclusive license to use the Trade Mark by The Director of Passenger Rail Franchising on December 10, 1995: a copy of the agreement was annexed to the Complaint. The Trade Mark is very widely known and has a very strong reputation.
The Complainant is the operator of passenger railway services between London Victoria railway station and the station at Gatwick Airport. Before privatization of British Rail these services were operated under the name "GATWICK EXPRESS" by the Complainant’s predecessor, British Railways Board from around 1993, and then by the Complainant as a subsidiary of British Railways Board from 1994. Since April 2, 1996, pursuant to a franchise agreement between the Complainant, the Director of Passenger Rail Franchising and the National Express Group Plc, the Complainant has operated GATWICK EXPRESS as a wholly owned subsidiary of National Express Group Plc.
Gatwick is the busiest single runway airport in the world, the second largest airport in the United Kingdom and the sixth busiest international airport in the world. "Gatwick" is well known as referring uniquely to London’s second airport and "Gatwick Express" is known as referring uniquely to the rail service operated by the Complainant between Gatwick Airport and the center of London.
The Gatwick Airport – London center link is widely marketed in the United Kingdom and worldwide by both National Express Group Plc, the parent company of the Complainant, and by BAA which owns and operates Gatwick Airport.
The Complainant has been the registrant of the domain name <gatwickexpress.co.uk> since June 1997, and operates a website at the address http://www.gatwickexpress.co.uk whereby it provides information on the "GATWICK EXPRESS" rail link. The Complainant was also the registrant of the Domain Name until early January 2002, but, through an administrative oversight, its registration of the Domain Name lapsed in January 2002, and the Respondent registered the Domain Name on January 15, 2002.
Members of the traveling public and other internet users are likely to assume that by visiting the Domain Name website they would access information provided by the Complainant. They are also likely to expect that any information accessed by visiting the Domain Name website is accurate.
On March 20, 2002, the Complainant’s solicitors sent an e-mail to the Respondent setting out the position of the Complainant, its background and prior use of the Domain Name and requesting that the Respondent transfer the Domain Name to the Complainant. Copies of this e-mail was annexed to the Complaint.
The Respondent replied to the Complainant’s e-mails as follows:-
"My name is Mr JnugMo Lee. I am the administrator of the domain name gatwickexpress.com. If you want to get this domain, you have to pay money as much as I have invested. The amount is USD $1,650. If you can not pay the fee, please take the domain after you will have won the case in court. If so, you must spend on more charge than the domain price and furthermore you must face the trial in which I live. If not, you had better pay the money than the lawsuit? If you are interested in this domain, please take the domain through choosing one of both ways. I want you to negotiate by fair and reasonable methods."
No explanation for his having registered the Domain Name was given nor was any indication of his possible legitimate use of the Domain Name given.
5. Parties’ Assertions
A. The Complainant
The Complainant asserts that the Domain Name should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
The Complainant asserts that the Domain Name is identical to or confusingly similar to trade marks in which it has rights pursuant to an exclusive licensing agreement. The registration numbers of the Trade Mark and the services in respect of which it is registered, are detailed above.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:-
(1) The Complainant is the operator of passenger railway services between London Victoria railway station and the station at Gatwick Airport.
(2) It also has been granted an exclusive license for the use of the Trade Mark, by the Director of Passenger Rail Franchising, the proprietor of the Trade Mark.
(3) Until recently, the Complainant was the registrant of the Domain Name but, due to an administrative error, this registration was not renewed.
(4) When the Complainant wrote to the Respondent regarding his registration of the Domain Name, the Respondent did not assert that he had any legitimate right to the Domain Name.
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith and relies upon the following assertions:-
(1) The Domain Name does not presently resolve to any web site and has not done so, insofar as the Complainant is aware, since it was registered by the Respondent.
(2) The passive holding of the Domain Name by the Respondent amounts to bad faith use as found by the Panelist in Telstra Corporation Ltd v Nuclear Marshmallows (WIPO Case No. D2000-0003), and
(3) The circumstances clearly indicate that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant.
B. The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))
The Domain Name in issue is <gatwickexpress.com>. The relevant part of the Domain Name is <gatwickexpress>. The Domain Name incorporates the relevant portion of the trade mark "GATWICK EXPRESS". The Administrative Panel is satisfied that this part of the Domain Name is identical to or confusingly similar to the trade mark "GATWICK EXPRESS" registered in the name of The Director of Passenger Rail Franchising and licensed to the Complainant.
Respondent’s Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
The Complainant submitted substantial evidence of its use, and the history of the registration and use of the "GATWICK EXPRESS" trade mark, since 1993.
Further, the Trade Mark has become well known both in the United Kingdom and worldwide, through extensive use in connection with services provided in respect of the sixth busiest international airport in the world.
The Complainant also submitted evidence in support of its assertion that the Respondent can have no legitimate rights or interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy: see paragraph 5A above.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))
For the Complainant to satisfy this requirement it must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy: (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Complainant relies upon three grounds in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith. These three grounds are detailed in paragraph 5A above and the facts supporting these grounds are detailed in paragraph 4 above.
The Panel takes all these matters into account and, in the absence of any Response from the Respondent, the Panel finds that the Complainant has established that the Domain Name has been registered and is being used in bad faith.
The Panel decides that:
(i) the Domain Name is identical or confusingly similar to a trade 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 by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires the Domain Name <gatwickexpress.com> to be transferred to the Complainant.
Dr Annabelle Bennett
Dated: June 5, 2002