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Thomas Cook Holdings Limited v. Tailor Made Travel [2001] GENDND 1013 (24 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomas Cook Holdings Limited v. Tailor Made Travel

The Complainant in this proceeding is Thomas Cook Holdings Limited a private limited company incorporated in England whose registered office is at Thorpe Wood, Peterborough, England

The Respondent in this administrative proceeding is Tailor Made Travel of 96 Glebe Street, Penarth, Vale of Glamorgan, United Kingdom.

This dispute concerns the domain name jmccruises.com (hereinafter referred to as the "Domain Name").

The Registrar with whom the Domain Name is registered is CSL GmbH (CORE-11)whose address is Rathausufer, Dusseldorf, Germany

The Domain Name was registered on September 1, 2000.

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on March 27, 2001, and in hardcopy on March 29, 2001. Payment in the required amount to the Center has been made by the Complainant.

On March 30, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name. Confirmation was received from the Registrar on March 20, 2001.

On April 5, 2001, the administrative proceeding began.

On April 25, 2001 notification of the Respondent's default was received.

On, May 10, 2001, notification of appointment of an administrative Panelist and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist Clive Elliott and advised that the decision should be forwarded to WIPO by May 24, 2001.

On May 24, 2001, no response had been received from the Respondent and the decision was made.

The Complainant 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.

Thomas Cook Group Limited and Interpayment Services Limited are subsidiaries of the Complainant.

The Complainant has trade mark rights in respect of transportation of persons and goods by sea and inland waterways and also has use of its JMC registered trade marks in relation to inter alia cruises. It also has a number of UK, Community and US trade mark registrations for JMC.

In addition the Complainant has trade mark applications and/or registrations in the following countries:- Turkey, Malta, Gibraltar, Canada, Mexico, Japan, New Zealand, Australia, Thailand, Hong Kong, SAR, China, Jamaica, Egypt and Tunisia.

The Complainant advertises JMC holidays extensively in a number of media, including terrestrial national UK television.

It trades from its web-site at the domain name <jmc-holidays.co.uk> and <jmc.com> which provides extensive information about the Complainant’s services. The JMC name and logo features prominently on the top left of the web-site on the pages.

Evidence of these activities was provided by the Complainant and is accepted.

The Respondent is called Tailor Made Travel. It is a travel agent. It has its own web-site at <fly4less.co.uk>.

A. The Complainant

The Complainant claims to have acquired and owns goodwill and reputation in the name, JMC, in the United Kingdom, the United States, the European Community and worldwide. In particular it claims that goodwill and reputation in relation to travel and related services.

The Complainant notes 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 "cruises", which is included in the goods/services for which the JMC trade mark is registered.

The Complainant admits that on or around 23 March 2001 the Complainant’s solicitors entered into correspondence and discussions with the Respondent in relation to the domain name jmccruise.co.uk, with a view to reaching an amicable resolution of this matter but negotiations have been unsuccessful and have subsequently broken down.

An employee of the Respondent telephoned the Complainant’s solicitors on 26 March 2001 and explained that the .co.uk domain name had been registered as the Respondent was developing a web-site for JUST MY CHOICE CRUISE(S). The Respondent then replied to the Complainant’s solicitors letter by e-mail on 26 March 2001. The Respondent’s position was that since the Complainant did not have a JMC cruise product it was unfair for the Complainant to complain. However, the Respondent offered to "release" the .co.uk domain name to the Complainant if it paid £2000 excluding VAT

The Complainant’s solicitors responded the same day indicating that the Complainant had previously taken action to recover the domain names <jmcairlines.com> (WIPO Case No. D2000-0805) <jmc-airlines.com> (WIPO Case No. D2000-0804) <jmcairline.com> and <jmc-airline.com> (WIPO Case No. D2000-1360) and <jmcflights.com> (WIPO Case No. D2000-1716). Again an offer was made of £200 for the transfer this time of both domain names registered by the Respondent.

On the same day the Respondent sent a further e-mail indicating that it would release the .co.uk domain name for £2,000. As for the .com domain the Respondent indicated that it was "going to transfer, the domain to a US citizen for holding and eventual sale at auction".

B. The Respondent

There was no response received from the Respondent

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain name is identical or confusingly similar to the trade mark; and

- The Respondent has no right or legitimate interest in respect of the domain name; and

- The domain name has been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

It appears from the complaint and evidence that the trade mark JMC is registered in the United Kingdom and a large number of other countries. Likewise, it appears from the complaint and evidence that the trade mark JMC has been applied for and has been used in large number of countries around the world.

This evidence has not been challenged or disputed by the Respondent.

In the Panel's view, the Complainant's claim to own goodwill in the trade mark JMC is well founded. By the same token it would be reasonable to infer that a website identified by the trade mark JMC and the generic term "cruises" was in some way connected or associated or at least approved by the Complainant.

Accordingly, it is found that the Domain Name is confusingly similar to the Complainant's trade mark JMC.

The Complainant accepts that the Respondent is a travel agent and that it may have sold JMC holidays as a travel agent and would indeed be entitled to so. It is also accepted the Respondent has a right to use the Complainant's trade mark in the course of trade, provided it is accordance with honest practices in commercial matters. On this basis it is accepted that this could mean the Respondent would display JMC travel brochures in its branches and assist its customers in arranging JMC holidays through the Complainant.

However, it is submitted that this does not entitled the Respondent to register domain names incorporating the Complainant's trade mark or to make extensive use of the JMC trade mark in a Domain Name or elsewhere.

Accordingly, it is submitted that the Domain Name, made up solely of the mark JMC with the generic term cruises, takes unfair advantage of the distinctive character and reputation of the mark JMC.

In the panel's view this submission has merit and in the absence of any attempt to explain its adoption of the Domain Name it is found that this ground is made out.

The Complainant states that the website at the domain name, jmccruise.co.uk is currently a holding page for UK2.net. It is understood from the Complainant that no use is currently being made of the Domain Name by the Respondent. In view of this and the above findings it appears reasonable to infer that the Domain Name was chosen to attract customers of the Complainant and as a result benefit the Respondent. Internet users are likely to be attracted to the good name and reputation of the JMC service and these customers will be diverted to the Respondent's site if it sets up a website under the Domain Name.

The evidence indicates that the JMC service was well underway before the Domain Name was registered. It is also reasonable to infer that the Respondent must have been aware of the use of the trade mark JMC, being in the same industry.

It is now well established that under the UDRP that passive holding of a domain name i.e. without actual use may amount to bad faith conduct.

In view of the above findings it, and in particular the failure of the Respondent to attempt to justify its actions, it is found that this ground is made out.

Accordingly, the Complainant succeeds in its complaint. In making this conclusion the panel takes notice of the various other Panel decisions wherein "JMC" type marks have been acquired by third parties and where previous panels have required their transfer of the domain names to the Complainant. This suggests that the present case is one in a pattern of conduct by various parties and that the relief granted is not substantially out of line with these other cases.

In view of the above, the Domain Name should be transferred to the Complainant.

Clive L. Elliott
Sole Panelist

Dated: May 24, 2001