Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Thomas Cook Holdings Limited a private limited company incorporated in England whose registered office is at Thorpe Wood, Peterborough, Cambridgeshire, PE3 6SB, UK, represented by Dechert, Solicitors, of 2 Serjeants’ Inn, London, EC4Y 1LT, UK. The Respondent is Neil Tucker of Fir Tree Cottage, Duck Street, Little Eastern, Great Dunmow, Essex CM6 2JG, UK.

The domain names in issue are "jmcairline.com" and "jmc-airline.com" (the Domain Names"), the Registrar of which is CORE INTERNET COUNCIL OF REGISTRARS of World Trade Center II – 29 Route de Pre Bois, CH-1215, Geneva, Switzerland ("CORE").

The WIPO Arbitration and Mediation Center ("the Center") received on October 10, 2000, the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On October 24, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On October 17, 2000, the Center received from CORE its Verification Response, confirming that the registrant is Neil Tucker, the Respondent herein, and stating that the Administrative Contact is Judith Bonser of The Onion House, 41 Goddard Way, Saffron Walden, Essex CB10 2DQ. The Technical and Zone Contacts are Designer Servers Ltd. of PO Box 81, Manchester M32 OFE, UK.

No response was received by the Center by the due date, and Notification of Default was sent to the Respondent and to Judith Bonser on November 20, 2000. This Notification led to a flurry of activity during November 20. First, Judith Bonser replied to the Center, as follows:-

‘if you would kindly let us have the necessary tag holder details for the domain names in question we will happily transfer the names away – we cannot transfer the names until we have this information.’

This message was forwarded to the Complainant’s solicitor, who promptly sent the required tag holder details to Judith Bonser, and asked:-

‘Please let me know whether you are transferring the domain names to my client so that Domain Disputes can be informed before the Panel is appointed.’

Finally, the Respondent himself, apparently unaware of the above exchanges, e-mailed the Center in the following terms:-

"I have recently returned home after working away for the Summer and found that you have sent me communication via e-mail and by post regarding the domain dispute over the "JMC" domain names mentioned.

I instructed Judith Bonser of Onion productions before I went away (Quite a few months back now!) that I wished to transfer the domain names requested to Dechert who are acting on behalf of Thomas Cook Holdings. I am therefore surprised that this case is still ongoing and these domains are still registered in my name.

What do I need to do to transfer these names as requested at the earliest opportunity, (Please bear in mind I am not an experienced user of the Internet etc myself)."

On November 30, the Complainant’s solicitor e-mailed the Center as follows:-

‘Although the registrant appears to be willing to transfer the domains I have not received any forms for my client’s signature and so regretfully I must request that a Panel be appointed.’

On December 15, 2000, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by December 29, 2000.

A. The Trade Marks

The Complainant is the registered proprietor of UK Trade Marks covering the mark JMC ("the Trade Mark"), as follows:-

Number 2186709 registered January 20, 1999 – classes 39, 41 and 42

Number 2207367 registered September 3, 1999 – classes 39, 41 and 42

In addition, the Complainant or one of its subsidiary companies has pending trade mark applications or registrations in the USA and some 14 other countries and two pending Community Trade Mark applications.

B. This administrative proceeding is closely related to two earlier such proceedings instituted by the Complainant, namely:-

1) Case No. D2000-0804 against the same Judith Bonser who is the Administrative Contact for the Domain Names here in issue; and

2) Case No. D2000-0805 against Neil Tucker, the Respondent.

The contentions of the Complainant in the current proceeding recite no new facts, and the Panelist refers to his Decision in Case No. D2000-0805 to save repeating the factual background here. Suffice it to repeat that the Domain Names were two out of four additional variants on "jmc airlines" registered by the Respondent as domain names after the Complainant had initiated Cases Nos. D2000-0804 and D2000-0805.

In view of the background to this Administrative Proceeding discussed above, the Panelist sees no necessity in repeating the Complainant’s Contentions. The Respondent’s e-mail of November 20, 2000, expresses his consent to the transfer of the Domain Names to the Complainant.

The question is raised whether the Panel has power under the Policy to order the transfer of a domain name to a Complainant on the simple basis of the bare consent of the Respondent. Under the Policy, paragraph 3 lists three circumstances under which a Registrar will, inter alia, transfer a domain name registration. Only paragraph 3(c) is applicable to an Administrative Panel:-

"c. Our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN."

For an administrative proceeding to be "conducted under this Policy" it must be one that complies with paragraph 4(a) of the Policy. In particular: -

"In the administrative proceeding, the complainant must prove that each of these three elements are present."

However, for the reasons set out in Case No. D2000-0805, the Panelist finds that all three of the elements set out in paragraph 4(a) of the Policy have been proved to be present in this case. Further, in view of the Respondent’s consent to transfer, no repetition of the Panelist’s findings in Case No. D2000-0805 is necessary here.

In the light of the findings in paragraph 6 above, the Panelist concludes that: -

- the domain names "jmcairline.com" and "jmc-airline.com" are confusingly similar to the trademark JMC of the Complainant;

- the Respondent has no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, the Panelist orders that the domain names "jmcairline.com" and "jmc-airline.com" be transferred to the Complainant, Thomas Cook Holdings Limited.

Christopher Tootal
Sole Panelist