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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Cook UK Limited v. (1) Villa Plus Limited and (2) R Mavani
Case No D2002-0632
1. The Parties
The Complainant is Thomas Cook UK Limited a private limited company incorporated in United Kingdom whose registered office is at The Thomas Cook Business Park, Coningsby Road, Peterborough PE3 8SB, United Kingdom. The Complainant is represented by Dechert of 2 Serjeants' Inn, London EC4Y 1LT, United Kingdom.
The Respondents are Villa Plus Limited and R Mavani of 1st Floor, Drover House, 16 Adelaide Street, St Albans, AL3 5BH, United Kingdom. The Complainant draws attention to the fact that a WHOIS search exhibited at Annex A to the Complaint merely refers to the Registrant as the address, 1st Floor, Drover House, 16 Adelaide Street, St Albans, AL3 5BH but that the administrative contact of the domain name in suit is R Mavani and Villa Plus Limited.
2. The Domain Name and Registrar
The domain name in dispute is <jmcholidays.net>. In the Complaint the Registrar is described as Server World of Saxon House, Station Approach, Sunbury, Middlesex TW16 6RT, United Kingdom. However the Complainant was subsequently notified by the Center on July 15, 2002, that the correct Registrar was "Capital Networks Pty Limited. d/b/a Total Nic.net". Accordingly the Complainants amended paragraphs 9 and 18 of its Complaint to refer to the Registrar of the domain name <jmcholidays.net> as Capital Networks Pty Limited d/b/a Total Nic.net.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ( the "Center") on July 9, 2002, by e-mail and in hard copy on July 10, 2002. A request for verification of the domain name was made to the Registrar on July 10, 2002. It was as a result of this request for verification that it transpired that the correct Registrar was in fact Capital Networks Pty Limited. d/b/a/ Total Nic.net that led to the amendment to the Complaint referred to above. Capital Networks Pty Limited d/b/a/ Total Nic.net confirmed that the Registrant was "1st Floor, Drover House, 16 Adelaide Street, St Albans, London "(Sic) with the administrative contact as R Mavani and Villa Plus Limited. Notification of the Complaint and commencement of the administrative proceedings was given to the Respondents on July 16, 2002, by email and by courier at the address referred to above.
No response was received from the Respondents and accordingly notification of the Respondent's default was given by the Center on August 7, 2002, by post and by email.
On August 8, 2002, the Complainant's representative informed the Center by emailed letter that it had on August 8, 2002, received a telephone communication from the Respondent Raj Mavani in which he apparently asked that the Complainant make a "proposal". This is referred to by the Panel further on in the decision.
On August 16, 2002, a sole panelist, Mr. Clive Duncan Thorne was appointed with a projected decision date of August 30, 2002. The Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that the appropriate fees have been paid by the Complainant. No interim orders have been made by the Panel. The language of the administrative proceeding is English.
4. Factual Background
The Complainant, Thomas Cook UK Limited, operates and has operated since September 1999 a travel and holiday business under the name JMC. It currently offers holidays world wide. Its aeroplanes carry the JMC name on their bodywork. Its travel ticketing also features the JMC name. The Complainant exhibits as Annex C to the Complaint front covers of the Complainant's travel brochures which carry prominently the marks JMC and Thomas Cook.
According to the Complainant the turnover of the Complainant between January and October 2001, was nearly Ј800 million while the annual marketing spend of the Complainant is approximately Ј8.5 million. The Complainant submits that it has established goodwill and reputation in the name JMC Holidays in the United Kingdom, the countries of the European Union and the world wide, particularly in relation to the provision of holidays.
The Complainant refers to a number of United Kingdom, European Community and US trade mark registrations for the mark "JMC". These are set out in a table to the Complaint and summarised in detail at Annex D to the Complaint. In addition the Complainant has trade mark applications and/or registrations in other countries including Turkey, Malta, Gibraltar, Cyprus, Mexico, Japan, New Zealand, Australia, Thailand, Hong Kong, Jamaica, Egypt and Tunisia. Details of these trade mark rights are set out at Annex E to the Complaint.
The Complainant also advertises JMC Holidays extensively in a number of media including terrestrial national UK television. The Complainant also trades from its web site at the domain name <jmc.com> which provides extensive information about the Complainants services.
The Complainant submits that it has acquired and owns goodwill and reputation in the name "JMC" in the United Kingdom, United States, the countries of the European Community and world wide. It also submits, in particular, that its goodwill and reputation is in relation to holidays and travel and related services. The Panel has taken into account the evidence of the Complainant's trading goodwill, reputation and trade mark rights referred to and exhibited in the Complaint. In the absence of any evidence to the contrary from the Respondent the Panel find that the Complainant has acquired goodwill and reputation in the mark "JMC".
The history of the current dispute is that the Respondents apparently registered the domain name <jmcholidays.net> on June 4, 2001, i.e. a considerable period of time after the Complainant's UK trade mark was registered. On or around February 28, 2002, the Complainant's solicitors wrote to the Respondents in relation to the domain name seeking appropriate undertakings and in particular an undertaking that the Respondents would transfer the domain name to the Complainant. This letter is exhibited at Annex F to the Complaint as is an email from Kate Bantick who describes herself as managing director of "Netizen Limited Web Design and Consultancy". In it she responds to Dechert and states that she has passed their letter to her client Villa Plus. She indicates that she thinks it would be better if Dechert dealt with them direct in future. There was apparently no further correspondence or communication with the Respondents save for the telephone call referred to in Dechert's email letter of August 8, 2002.
5. Discussion and findings
In order to succeed in its request for an order to transfer the domain names to the Complainant the Complainant has the burden of proof in ensuring that each of the elements set out in paragraph 4(a) of the Uniform Domain Names Dispute Resolution Policy ("the Policy") are present. These are as follows:-
(i) The Respondents' domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interest in respect of the domain name;
(iii) The Respondents' domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondents' domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant submits that the domain name is made up of the mark JMC which is identical to the Complainant's trade mark in conjunction with the word "Holidays" which is included in the goods/services for which the JMC trade mark is registered.
Additionally the Complainant submits that the domain name is confusingly similar to the Complainant's trade mark in that it is phonetically confusingly similar containing the letter "J-M-C" and also visually confusingly similar since it contains the word "JMC" as a prominent and dominant part of the name. It is also submitted that it is conceptually similar since JMC has reputation and goodwill in relation to travel and is registered in relation to travel by sea and inland waterways.
Having accepted that the Complainant has goodwill and trade mark rights in the mark JMC the Panel finds that the domain name <jmcholidays.net> is confusingly similar to the mark JMC in which the Complainant has rights.
(ii) The Respondents have no rights in respect of the domain name
The Complainant submits that the Respondents registered the domain name on June 4, 2001, i.e. a considerable period of time after the Complainant's UK trade mark was registered. They assert that since the Respondent's are travel agents it is reasonable to suppose that the Respondent's must have known of the Complainant at the time the domain name was registered.
The Complainant also relies on the failure of the Respondent to reply to the demand letter of February 28, 2002. This is presumably on the basis that if the Respondents had rights in the domain name they would have set those rights out in a response to the demand letter. In the absence of a Response the Panel accepts the Complainant's submissions. There is no evidence that the Respondents have any rights in the domain name.
(iii) The domain name was registered and is being used in bad faith
In support of this claim the Respondents submit that the registration of the domain name must be in bad faith in view of the fact that the Respondents have no legitimate reason for registering the domain name and deliberately chose to register a domain name incorporating the Complainant's trade mark.
The Complainant also submits the domain name appears to have been deliberately chosen to attract JMC Internet users and/or purchasers of the Complainant's JMC holidays. In support of this submission the Complainant refers to the Respondents' website an extract of which is set out at Annex G to the Complaint. The Complainant points out that the Respondents are not authorised sellers of any of the Complainant's products or services. The Complainant submits that the Respondents can only have acquired the domain name intentionally to attract for commercial gain Internet users to its intended website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website.
Alternatively the Complainant submits that the Respondents registered the domain name with the intention of selling it to the Complainant for valuable consideration in excess of the Respondents reasonable costs of registration and/or transfer and point out that the Respondents have failed to respond to the Complainant's correspondence.
The Complainant's further submission based upon the email letter of August 8, 2002, is based upon the "proposal" made by telephone by Mr. Raj Mavani, one of the Respondents. In the conversation he apparently indicated that he would transfer the domain name. However he refused to say what the Respondents out of pocket expenses were and said only that it was up to the Complainant to make a proposal and that the Respondents would then "come back" on that proposal. The Complainant states that this is further evidence of the Respondents' bad faith since it shows that the Respondents registered the domain name with the intention of transferring the domain name to the Complainant for valuable consideration in excess of the Respondents' out of pocket expenses directly related to the domain name.
The Panel accepts this latter submission and finds that the Respondent's registered the domain name with the intention of selling it to the Complainant for valuable consideration in excess of the Respondents reasonable costs of registration and/or transfer. The Panel takes into account that there is no submission to the contrary from the Respondents.
It therefore follows that the Complainant has succeeded in relation to all three elements that are required to be approved by it under the terms paragraph 4(a) of the Policy.
The Complainant requests that the Panel issues a decision that the contested domain name <jmcholidays.net> be transferred to the Complainant. The Panel having found for the Complainant orders that the domain name <jmcholidays.net> be transferred to the Complainant from the Respondents.
Clive Duncan Thorne
Dated: August 30, 2002