WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jet Marques v. Vertical Axis, Inc
Case No. D2006-0250
1. The Parties
The Complainant is Jet Marques, Ivry-Sur-Seine, France, represented by Bardehle Pagenberg Dost Altenburg Geissler, France.
The Respondent is Vertical Axis, Inc, Gyeonggi-do, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jettour.com> (the “Domain Name”) is registered with Nameview Inc. (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2006. On March 1, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 7, 2006, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 15, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2006. The Response was filed with the Center on April 5, 2006.
The Center appointed David E. Sorkin and Pierre-Yves Gautier as panelists in this matter. On April 26, 2006, the Center appointed Warwick Smith as presiding panelist. The Panel finds that it was properly constituted. Each member of 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.
By procedural direction dated May 6, 2006, the Panel requested a further statement form the Respondent relating to the use of some French language expressions on the website linked to the Domain Name. The Respondent duly provided a further statement dated May 11, 2006. The Panel then invited the Complainant to reply to that further statement, and the Complainant submitted a reply dated May 19, 2006. The supplementary statements have been considered by the Panel.
The time for the Panel to give its decision was extended to May 19, 2006, and was later further extended to May 26, 2006.
4. Factual Background
The Complainant is a French corporation, which provides travel agency services in France and elsewhere. It says that it has used the service mark JET TOURS (“the mark”) since at least 1968, and that the mark is well-known all over the world.
At Annex 6 of the Complaint, the Complainant has produced extracts from publications showing the use of the mark over the period since the early 1970s. These documents are all in the French language, but they do appear to support the claim that the mark has been used in France from at least that time. Although it is not stated in the body of the Complaint, it appears from these publications that Jet Tours is or has been owned by or otherwise associated with one or both of the internationally well known corporations Air France and Club Med.
One publication produced by the Complainant appears to be an Air France brochure from the winter of 1972 - 73, headed “Jet Tours”. This publication advertises holidays in many parts of the world, including some Asian countries, but not the Republic of Korea (where the Respondent appears to reside). One page from the winter 1972 - 73 brochure refers to Jet Tours having agents in numerous cities, but again, none in the Republic of Korea.
The last brochure produced by the Complainant, is a summer-autumn 2006 document which appears to offer tours in partnership with the United Nations Organization, UNESCO.
In summary, the Complainant’s evidence appears to establish that the mark has been used prominently as a trademark in France for a period in excess of 30 years. Within that period, the Complainant appears to have been involved in partnerships or associations with famous organizations such as Air France, UNESCO, and Club Med.
The Complainant’s Registered Mark
The mark is the subject of a Community Trade Mark registration, effective from April 1, 1996, in international classes 16, 21, 35, 39, 41, and 42. The class 42 registration is for “Rentals, travel agencies”. The Community Trade Mark Certificate produced by the Complainant refers to senior registrations in France, Portugal, Spain, Italy, and the Benelux countries.
The Complainant’s domain name
The Complainant did not state in the body of its Complaint that it owns a domain name, but it appears from certain Google searches produced by the Complainant that it is the owner of the domain name <jettours.com>. The Respondent appears to acknowledge that in its Response – it also produced Google search results, in order to identify the extent of third party use of the expression “jet tour”. Its search was conducted excluding any references to “jettours.com”, “in order to eliminate references to Complainant”.
We are not told when the Complainant acquired the <jettours.com> domain name.
The Respondent and the Domain Name
The Domain Name was first registered on November 30, 1997, but the Respondent was not the first registrant. In its supplementary statement, the Respondent says it acquired the Domain Name on January 9, 2005, and (at the top of page 8 of the Response) that it “registered the Disputed Domain when it was deleted and became available for anyone to register”.
The Complainant says in its amended Complaint that when its agent in Korea made enquiries in May 2005, it did not find any information locally on the Respondent.
In its Response, the Respondent says that it registers generic domain names that have either expired or been deleted. In a document signed on behalf of the Respondent on April 5, 2006, by a Mr. Chad Park, it is stated that the Respondent hosts the Domain Name on a website that provides sponsored links related to air travel and city tours, and that the sponsored links are provided by Yahoo! Search Marketing (“Yahoo”).
Mr. Park denies that the Respondent had any knowledge of the mark when it registered the Domain Name, and he says that the Domain Name was not registered with the mark in mind. He says further that there was no intent to disrupt the Complainant’s business, to confuse consumers seeking to find the Complainant’s website, or to prevent the Complainant from owning a domain name incorporating the mark.
In its supplementary filing, the Respondent says that it is not sure when the Domain Name was first linked to the website to which the Domain Name presently resolves (“the Respondent’s website”), but that it was most likely shortly after the Domain Name was acquired by the Respondent.
The Complainant has produced some pages from the Respondent’s website, which it downloaded on August 29, 2005, and on February 28, 2006. Most of the Respondent’s website as it stood on August 29, 2005 was in English. For example, under the heading “jettour.com” (with a magnifying glass device beside it), were the words “all the best resources on the net”. Further down on what appears to be the home page, were the words:
“We sift through the web to find the best resources …. You won’t have to. Simply click on what you see above or search our comprehensive indexes ….”
This web page listed various categories on which the browser could click for further information. Under the heading “Popular Searches”, were listed “Hotel”, “France”, “Paris”, “Jet-tour”, and some others. Some of these click-links were in the French language – e.g. “Maroc Voyage”, and “Vacances”.
Also on this web page, there was a heading “More Categories”. The click-through links listed underneath that heading were all in the French language e.g. “Tourisme”, “Asie”, and “Bien-Etre”. Also listed under the “More Categories” heading, was “Jetours”.
The Complainant produced a copy of the “Hotel” page from the Respondent’s website as at August 29, 2005. It contained links to other websites where one could book hotel accommodation, and it also contained a number of links to other websites or locations listed under the heading “Main Categories”. Again, these links were almost exclusively in the French language. They included “Jet-tour”, “Paris”, “France”, and “Jetours”.
Specific “Sponsored Results” displayed on the “Hotel” page, consisted of links to a number of websites offering hotel and travel booking services.
The page produced from the Respondent’s website as at February 28, 2006, was entirely in the English language. It was headed:
“Welcome to jettour.com
For resources and information on Europe tour and Jet-Tour.”
Underneath, there were listed a number of links to airlines or other businesses offering airline travel. Under the heading “Related Links”, there were listed a number of click-through options. All appeared to be in the English language e.g. “Tour of Italy”, and “Travel Agency”. One of the related links was “Jet-Tour”.
In its supplementary filing submitted (at the Panel’s request) on May 11, 2006, the Respondent states that it does not know why French terms were listed among the keywords on the website as at August 29, 2005. It says that these key words were supplied by Yahoo “as well as the content optimization service that hosts the domain name”. It does not identify that “content optimization service”, or explain precisely what function it performed, but the Respondent does make it clear that the relevant French language expressions on the Respondent’s website were selected by Yahoo, and not by it. It explains that Yahoo’s algorithms automatically select these “key words”. The Respondent states that it “is likely that the French links appeared because Yahoo’s technology detected that a number of users residing in France were accessing the website, which Yahoo can determine by analysis of the computer I.P. (Internet Protocol) address”. The Respondent says that it has been advised that Yahoo was experimenting with keywords based on geographic location, and speculates that the fact that a user’s geographic location was in France may have “triggered” the appearance on the website of key words in the French language.
With its supplementary filing, the Complainant produced a copy of Yahoo’s terms and conditions for its “Network Beta Programs”. In brief summary, Yahoo maintains a database of its client advertisers’ advertisements, which often contain links to the advertisers’ websites. These advertisements are referred to in the terms and conditions as the “Matched Ads”. A website owner (such as the Respondent) who joins the Beta program as a “publisher”, derives revenue by permitting Yahoo to place a Java script or other form of code on the publisher’s web page, which automatically generates a request for a Matched Ad each time an internet browser visits that web page. The publisher has no control over the content of the Matched Ads, and is not permitted to alter them.
The Complainant accepts in its supplementary filing that the French language expressions on the Respondent’s website would have been placed there by Yahoo (presumably under the Beta Program terms and conditions), but it points out that those terms and conditions make the publisher solely responsible for the content displayed on the website, and contain an undertaking by the publisher not to display or use any content that would infringe the rights of any third party. The Complainant also points out that the Yahoo program appears to be reserved exclusively to United States-based businesses operating solely for viewing and use by users within the United States.
Whois Information
When the Complainant first checked the WHOIS information on the Domain Name, on February 10, 2005, the Respondent was shown as the Registrant, with an address in the Republic of Korea. When the Complainant checked the WHOIS information again in June of 2005, the name and address of the Registrant had been removed. A WHOIS search conducted on August 24, 2005 listed the Registrant as “jettour.com, C/o Whois Identity Shield”, at the Registrar’s address in Vancouver, Canada. The WHOIS report noted:
“This Registrant uses an Identity Shield service to keep some or all of their information private.
They are reachable at the following addresses only. Please note that the provided E-mail addresses ARE VALID but will function for only a few days and should not be added to any database.”
Following the commencement of this administrative proceeding, the Center sought verification of the Registrant’s name, and the Registrar confirmed that the Respondent was still the Registrant at the time the proceeding was commenced.
In its Response, the Respondent did not comment on its decision to use the WHOIS Identity Shield Service.
Pre-commencement Correspondence between the Parties
The Complainant says in its amended Complaint that it sent a warning letter to the Respondent on February 17, 2005. It said that it received no reply. It said that a reminder sent by registered mail on March 3, 2006, was returned to the Complainant’s representative. Neither the February 17, 2005 letter nor the March 3, 2006 reminder has been produced by the Complainant. However, the Respondent has not denied receiving the February 17, 2005 letter.
5. Parties’ Contentions
A. Complainant
The Complaint
1. The Complainant has rights in the mark by virtue of its registered Community Trademark and its extensive use of the mark.
2. The Domain Name is confusingly similar to the mark. The only difference is the deletion from the mark of the final letter “s”, and that is not sufficient to avoid any risk of confusion, particularly as the letter “s” is not phonetically perceptible and “tours” is simply the plural of the word “tour”. Taking into account the fact that the services offered through the Respondent’s website are identical to those provided under the mark, the Domain Name and the mark are confusingly similar.
3. The Respondent cannot demonstrate any right or legitimate interest in the Domain Name. The Complainant’s agent in Korea could not find any information in that country on the Respondent. The Respondent’s failure to reply to the warning letter of February 17, 2005, and its later removal of its name and address from the WHOIS information for the Domain Name, point to a lack of any right or legitimate interest in the Domain Name.
4. The Domain Name is confusingly similar to the mark, and has been registered to take unfair advantage of the reputation of the mark in the field of tourism and the organization of travel. That is apparent from the use of the Respondent’s website to display banner advertisements and banner links for travel agencies who are competitors of the Complainant. The Respondent’s intention has been to misleadingly divert consumers, for commercial gain, and to tarnish the mark. The Respondent is making a non-legitimate and non-commercial or non-fair use of the Domain Name.
5. The Respondent is not commonly known by the Domain Name. The fame of the mark in France and all over the world is sufficient to justify the inference that the Respondent knowingly registered the Domain Name in order to attract internet users that would be seeking to access the Complainant’s services. The Respondent obviously knew of the existence of the mark when it registered the Domain Name, because that mark has been used all over the world for many years, and the Respondent’s website is in the French language.
6. In addition, the Respondent’s bad faith is demonstrated by its decision, after receipt of the Complainant’s warning letter at the beginning of 2005, to make confidential the information appearing on the WHOIS database.
B. Respondent
The Response
1. The Complainant’s Community Trademark expired on January 4, 2006, and the Complainant had no registered mark when it commenced this proceeding. The Complaint must be dismissed, as an unregistered generic mark provides no enforceable rights under the Policy.
2. Even if a mark is registered, a Panel may conclude
that it is too descriptive or generic to be enforceable (citing Goldberg
& Osborne v The Advisory
Board Forum Inc., WIPO Case No. D2001-0711,
and American Airlines Inc. v Webwide Internet Communication GmbH, NAF
Case No. 112518).
3. Merely descriptive marks, like the mark, are entitled to only a very minimal degree of protection, if any. Minor differences between a mark and a domain name are sufficient to eliminate a finding of confusing similarity in such cases (citing Webvan Group Inc. v Stan Atwood, WIPO Case No. D2000-1512).
4. The Domain Name is not confusingly similar or identical to the mark. The “s” is sufficient to distinguish the two, considering the weak, generic nature of the mark.
5. The Respondent has rights and a legitimate interest in the Domain Name because it incorporates the generic term “jet tour”. That term is used by numerous third parties to describe the same type of tourism services as those offered by the Complainant. A Google search reveals 57,400 third party users of the common term “jet tour”. The mere registration of a common generic term, in and of itself, establishes the Respondent’s legitimate interest.
6. The Respondent only registers domain names which incorporate common words, descriptive and generic terms, or words and terms to which it believes no single party has exclusive rights. It registered the Domain Name because it is a generic term.
7. Where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a legitimate interest (citing Target Brands Inc. v Eastwind Group, NAF Case No. 267475. Also citing HP Hood LLC v. hood.com, NAF Case No. 313566 – “where the domain name incorporates a common word, it is beyond debate that the posting of related advertising links constitute use of the domain name for the bona fide offering of goods and services”).
8. The Respondent uses the Domain Name to promote airline travel and tour services, bolstering its legitimate interest based on this bona fide offering of goods and services.
9. The Domain Name was not registered, and is not being used, in bad faith, for the following reasons:
(i) There is no evidence that the Respondent registered the Domain Name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, to prevent it from registering a domain name reflecting its mark, or to confuse users. The Respondent simply registered an available generic word domain name after it expired and became available for anyone to register.
(ii) The fact that the Domain Name is composed solely of a generic term weighs heavily against a finding of bad faith. Absent direct proof that a descriptive term domain name was registered solely for the purpose of profiting from a complainant’s trademark rights, there can be no finding of bad faith registration and use (hood.com, citing Ultrafem Inc. v Warren Royal, NAF Case No. 97682 – “a bad faith showing would require the complainant to prove that the respondent registered instead.com specifically to sell to the complainant, or that the value of “instead” as a domain derived exclusive from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on the complainant’s trademark interest, the complainant cannot assert an exclusive right over a domain name that is a common, generic term.”).
(iii) There is absolutely no evidence the Respondent had any knowledge of Complainant or the mark when it registered the Domain Name. On the contrary, the evidence is that the Respondent had no such knowledge. Bad faith requires that the Respondent must have registered the Domain Name with the Complainant in mind.
(iv) Registering a deleted domain name is a factor weighing against a finding of bad faith (citing the hood.com case, Vernons Pools Limited v. Vertical Axis, Inc., WIPO Case No. D2003-0041, and Corbis Corporation v Zest, NAF Case No. 98441).
Supplementary Filings
The Respondent
1. The Respondent did not place the French language links on the Respondent’s website, and it does not know why Yahoo chose to use those links. Yahoo has told the Respondent that it was experimenting with key words based on the site visitors’ geographic locations, and its technology would have picked up a number of site visitors from France. That may have been the reason the French language links were used.
2. The French language links were most likely removed on or about September 4, 2005, because they were determined by Yahoo to be irrelevant (Yahoo’s market being in the United States). The Respondent has been advised that Yahoo’s links on several sites were changed by Yahoo’s editorial staff on that date.
3. The Respondent does not know why the expressions “jetours” and “jet-tour” were displayed on the Respondent’s website on August 29, 2005. The links were provided by Yahoo’s live search feed, and were not modified by the Respondent in any way. Searches on “jetours” and “jet-tour” conducted via the search box on the Respondent’s website, now produce no results for “jetours”, and results for “Jet-Tour” which have no connection with the Complainant.
The Complainant
1. Concealment of a respondent’s identity is often regarded as an indicator of bad faith.
2. The Respondent (and not Yahoo) is responsible for the content posted on the Respondent’s website.
3. The relevant Yahoo program appears to be expressly reserved for United States-based businesses operating solely for viewing and use by users within the United States. It is not explained how a user having its registered office in Korea was accepted as a publisher in the Yahoo program.
4. Yahoo’s market is the United States. In those circumstances, why would Yahoo have experimented with key words based on an internet browser’s geographic location, and why would Yahoo have chosen French key words? France was not Yahoo’s market.
5. The Yahoo publisher network is not available without the publisher (in this case the Respondent) first providing some editorial content for the relevant web pages where Matched Ads are to appear. The Matched Ads are selected directly with reference to the content of the web pages selected by the publisher. Therefore, some of what is on the Respondent’s website must have been put there by the Respondent itself.
6. The purpose of the Yahoo program is to generate additional revenue for the publishing website, by displaying advertisements which are related to the content of the website. The Respondent is therefore using the Domain Name, which is almost identical to the mark, to generate traffic and income for its own benefit.
7. French consumers have visited the Respondent’s website, and the proper inference from that is that they have done so because they have confused the Domain Name with the mark.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the respondent of the dispute, use by the respondent 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) Where the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) Where the respondent is 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.
A. Identical or Confusingly Similar
The Complainant has proved that it is the registered proprietor of the mark. The mark was registered as a Community Trademark with effect from April 1, 1996, in a number of international classes, including in class 42 for “Rentals, travel agencies”. The expiry date was April 1, 2006, so the mark was clearly still registered when the Complainant commenced this proceeding.
The Respondent attempted to argue that the registration of the mark expired on January 4, 2006, but that submission is clearly misconceived. The Respondent appears to have read the expiry date on the online trademark printout produced by the Complainant, in the “month-day-year” order, when it is perfectly clear from the printout that the relevant dates are shown in the “day-month-year” order: the “Date of registration”, appearing immediately above the “Expiry Date” on the printout, is shown as “19/08/1999”, making it perfectly clear that the “day-month-year” order has been adopted by the author of the printout. The Respondent’s “January 4, 2006” expiry date, was in fact April 1, 2006.
The Respondent argued faintly that, even where there is a registered mark, a Panel may disregard it if the registered mark is descriptive or generic (relying on Goldberg & Osborne v. The Advisory Board Forum Inc., WIPO Case No. D2001-0711, and American Airlines Inc. v. WebWide Internet Communication GmbH, NAF Case No. 112518). But it is only in very limited circumstances that a Panel may examine the circumstances of a trademark registration to determine whether the registration satisfies the requirements of the Policy (e.g. in cases where the trademark registration is automatic or unexamined, as occurs with United States state registrations). Furthermore, it appears in this case that the Complainant has used the mark in a trademark sense in France for at least 30 years. In those circumstances, the Panel is in no position to conclude either:
(i) that the mark would be regarded by consumers in France (or in other countries in the European Community where the mark is registered) as purely descriptive or generic; or
(ii) that by the time it was registered the mark had not become distinctive of the Complainant’s services in those countries.
There is therefore no basis for the Panel to look behind the Community Trademark registration, and the Complainant has sufficiently proved that it has rights in the mark.
Apart from the generic “.com”, which is not to be taken into account in considering the “identical or confusingly similar” question, the Domain Name differs from the mark only to the extent that the letter “s” at the end of the mark has been omitted from the Domain Name. In the Panel’s view, that difference is insignificant. The Domain Name and the mark are very nearly identical visually, and they are almost indistinguishable when compared phonetically (indeed, in countries such as France where the letter “s” in “tours” would not be pronounced at all, the two are phonetically identical). If one then considers the impressions, or “ideas”, respectively created by the mark and the Domain Name, the conclusion is again that they are identical.
The Panel notes the Respondent’s submission based on the Webvan Group Inc v. Atwood case, that when the mark is a relatively weak, non-distinctive term, Courts have found that the scope of protection may be limited to the identical term, and that the addition of other descriptive matter may avoid confusion. But in this case, there is no “addition of other descriptive matter” which might serve to avoid confusion – there is only the addition of the letter “s”. In the Panel’s view, that is not enough in circumstances where the mark and the Domain Name convey identical “ideas” and would sound identical to a significant number of internet users, and where the Panel is unable to conclude that the mark would be read (or heard) by French consumers as being purely descriptive or generic.
For the foregoing reasons, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the mark, in which the Complainant has rights. The Complainant has therefore made out its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In Cassava Enterprises Ltd v. Victor Chandler International Limited, WIPO Case No. D2004-0753, the Panel said:
“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.”
The Panel agrees with and adopts that general approach.
In this case, the Complainant has shown confusing similarity between the mark and the Domain Name, and it has not authorized the Respondent’s use of the Domain Name. The question then is whether the Respondent has demonstrated that it has some right or legitimate interest in the Domain Name.
Examples of rights or legitimate interests in Paragraph 4(c) of the Policy
The Panel finds that the Respondent has not proved any of the examples of rights or legitimate interests set out at paragraph 4(c) of the Policy:
(i) Using a domain name in a wholly descriptive sense to promote related goods or services can, of course, qualify as a bona fide use under paragraph 4(c)(i). Merely using a domain name to post sponsored links using an automated service such as that offered by Yahoo, however, inevitably raises the question of whether there has been bona fide use sufficient to create a right or legitimate interest under paragraph 4(c)(i), especially where that has been the only claimed use of the domain name, as appears to be the case here. In the event, it is not necessary to decide the bona fide use issue under paragraph 4(c)(i), because the Respondent has not shown that it commenced any use of the Domain Name (or made demonstrable preparations for any use of it) before it had notice of the present dispute. The uncontested evidence is that the Complainant sent the Respondent a warning letter on 17 February 2005, only 39 days after the Respondent says it acquired the Domain Name. In its supplementary filing, the Respondent says that it is not aware when the Domain Name was first linked to the Respondent’s website, but that it was “most likely shortly after the Domain Name was acquired”. “Most likely shortly after” is simply not good enough in circumstances where the issue relates to matters wholly within the Respondent’s knowledge. The Panel is not satisfied that the Respondent has brought itself within paragraph 4(c)(i) of the Policy.
(ii) There is no question of the Respondent being commonly known by the Domain Name, so paragraph 4(c)(ii) has no application.
(iii) Likewise, the Respondent’s intent has always been for commercial gain, so paragraph 4(c)(iii) can have no application.
Is mere registration of a generic term sufficient to create a legitimate interest?
The Respondent’s principal argument is that the expression “jet tour” is generic, and that that fact alone should be sufficient to establish its “legitimate interest” in the Domain Name. The Respondent refers to Target Brands Inc v Eastwind Group, NAF Case No. 267475, and the comment of the Panel in that case that “where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a legitimate interest”.
The Respondent also referred to a number of other cases to similar effect, including Williams, Babbitt & Wiseman Inc v. Ultimate Search, NAF Case No. 98813, Energy Source Inc v Your Energy Source, NAF Case No. 96364 (February 19, 2001), and Ultrefem Inc v. Warren Royal, NAF Case No. 97682 (August 2, 2001). In the Energy Source Inc case, the panelist found that the respondent had rights and legitimate interests in the at-issue domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”.
The majority of the Panel in HP Hood LLC v. hood.com, NAF Case No. 313566 (November 9, 2004), adopted the statements cited above from the Target Brands Inc and Energy Source Inc cases, and noted:
“The principal that the mere ownership of a common word domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN Panels. As one such Panel explained:
Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights/interests enquiry is more likely to favour the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyber piracy”, not every dispute that might arise over a domain name. See e.g. Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999).”
On the related topic of bad faith registration and use, the majority of the Panel in HP Hood LLC noted:
“Absent direct proof that a common word domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Ultrefem, Inc v Warren Royal FA 97682 (Nat. Arb. Forum August 2, 2001). There, the three member Panel, in ruling in favour of the owner of the common word domain name Instead.com held:
A bad faith showing would require Complainant to prove that Respondent registered Instead.com specifically to sell to Complainant, or that the value of “instead” as a domain derived exclusively from the frame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on Complainant’s trademark interest, Complainant cannot assert an exclusive right over a domain name that is a common, generic word …”.
The Panel acknowledges the force of the Target Brands Inc and HP Hood LLC line of authority, but notes the qualification in the Target Brands Inc case that, in order to obtain “legitimate interest”, the first person to register the domain must have done so in good faith. The Panel also notes the important qualification expressed by the Panel in the Ultrefem case, namely “in the absence of an intent to capitalize on complainant’s trademark interest”.
There are similar qualifications in another NAF case cited by the Respondent, namely Lumena s-ka zo.o. v Express Ventures LTD, NAF Case No. 94375 (May 11, 2000), where the Panel said:
“In addition, given the generic nature of the domain name, Respondent has at least the arguable position that were it to use lumena.com merely for the purposes of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to customers and does not tarnish a trademark.” (Our emphasis)
Under the Bad Faith heading, the Panel in the Lumena.com case noted that:
“If the domain name at issue were a common trademark such as IBM®, evidence of this might well be sufficient to demonstrate a bad faith registration and use. Lumena.com, however, involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest.” (Our emphasis)
In this Panel’s view, mere registration of a generic word as a domain name will not be sufficient in and of itself to create a “legitimate interest”, if the respondent’s substantial intention was to capitalize on the complainant’s trademark interest.
The need for a qualification of that sort is illustrated in Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, where the at-issue domain name was <allocation.com>. The evidence showed that “allocation” is a generic word in English, but not in Germany, where the complainant had registered the mark ALLOCATION. The Panel noted:
“The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while “Allocation” may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany.”
The Panel in the Allocation case went on to hold:
“Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.”
We think that is a correct statement of the position, and we note that it accords in general terms with the following summary of the decisions listed by the Center at section 2.2 of its “Overview of WIPO Panel Views on Selected UDRP Questions”:
“If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”
The questions, then, are whether the Domain Name is a generic expression, and if so whether the Respondent has satisfactorily demonstrated that it registered the Domain Name without intending to take advantage of the Complainant’s rights in the mark (or, to use the test applied by the Panelist in the Allocation case, whether the domain name was chosen without any “intent to profit from or otherwise abuse” the Complainant’s rights in the mark).
Is Jet Tour a generic expression?
The Panel is certainly not prepared to hold that the expression is generic throughout the world and in all languages. Indeed, it appears not to be generic in France. But, as in the Allocation case, the question under paragraphs 4(a)(ii) and (iii) of the Policy is whether it is generic in English.
The Respondent has produced Dictionary.com extracts citing various meanings of the words “jet” and “tour”. For present purposes, the most appropriate definition produced for “jet” is probably “a jet-propelled vehicle, especially a jet-propelled aircraft”.
The Dictionary.com definitions offered for the word “tour”, include “a trip with visits to various places of interest for business, pleasure, or instruction”, and “a brief trip to or through a place for the purpose of seeing it”.
On their own, each word is clearly common, or descriptive, in ordinary English usage. Whether the combination “jet tour” is equally generic or descriptive is not quite so clear. Although the Respondent produced the first 50 results from a Google search which it says yielded 57,400 hits on “jet tour”, many of these results show the words as part of the longer expression “private jet tour”, and some appear to involve the use of the words with reference to popular music groups or sports teams. However, the Panel is satisfied that there are contexts in which the expression “jet tour” is used in English in a purely descriptive way, so that if, for example, someone has just been on a rapid 10 day tour of 10 Asian capital cities, one might reasonably say that that person had been on a “jet tour of Asia”. The references in the Google search to a “jet tour of the Bible”, and “a jet tour through the Book of Revelations”, also suggest a secondary meaning, namely a reference to a rapid, or “whistle stop” trip.
Did the Respondent register the Domain Name without intending to take advantage of the Complainant’s rights (and without intending to profit from, or otherwise abuse the Complainant’s rights in the mark)? — The Evidence
The critical point under this heading is that the Respondent says that it was unaware of the mark when it registered the Domain Name. If that were so, the Respondent could not have had any improper intent directed at the Complainant, and that would be enough to establish a legitimate interest in the Domain Name.
The Respondent says at page 2 of the Response that it “had no knowledge of Complainant’s business name or alleged mark when it registered the Disputed Domain”. In his statement dated April 5, 2006, Mr. Park says:
“We did not register the Disputed Domain with Complainant’s trademark in mind. We had no knowledge of the trademark when we registered the name.”
But the Panel notes that the Respondent does not appear to be saying that it had no knowledge of the Complainant at the time it registered the Domain Name – just that it had no knowledge of the Complainant’s business name or mark.
Indeed, it seems to the Panel that the Respondent probably was aware of the Complainant at the time it registered the Domain Name. The Respondent is clearly a sophisticated user of the internet, dealing in hundreds if not thousands of domain names, and it seems probable that, before registering the Domain Name, it would have checked on whether the plural form “jettours.com” was available, and if not, who the registrant of that domain name was. The registrant of <jettours.com> in January 2005, may have been the Complainant, but the Complainant has produced no evidence showing when it acquired that domain name, or whether it resolved to any website as at January 9, 2005, when the Domain Name was registered. If the Complainant was the registrant of <jettours.com> in January 2005, a WHOIS search conducted by the Respondent at that time would presumably have led the Respondent to the Complainant JET MARQUES, but it would not have told the Respondent anything of the existence of a service mark JET TOURS.
A Google or other online search on the words “Jet Tour”, or “Jet Tours”, would presumably have disclosed the existence of the Complainant, and probably also its JET TOURS service mark, but there is no evidence that the Respondent conducted such a search. Nor is the Panel aware of any decision under the Policy in which a Panel has fixed a Respondent with constructive knowledge of matters it would have discovered if it had conducted a Google (or similar) search.
In the Respondent’s favour, the mark appears only to be registered in the European Community. It does not appear to be registered anywhere outside Europe. Nor is there evidence of any trademark applications having been filed outside Europe. The Respondent appears to be resident in the Republic of Korea, and there is no evidence of the reputation of the mark extending to that country. The mark may be well known to professionals in the travel industry in countries outside Europe, but there is no evidence that the Respondent falls into that category. It appears to be involved in the business of acquiring and selling domain names in all sorts of categories, and we do not believe there is a sufficient basis to ascribe to the Respondent knowledge which a full-time professional in the travel industry may have had.
There is no doubt that, if the Respondent was aware of the mark, it must have contemplated the likelihood of confusion between the Domain Name and the mark, especially among French consumers to whom the Complainant and the mark would be well known. Indeed, it appears that that very confusion eventuated – the Respondent’s suggested explanation for the existence of the French language expressions on the Respondent’s website, is that Yahoo had been attracted by the number of site visitors who were located in France, and had elected to cater for them by providing links to French language sites. But of course those links were placed on the Respondent’s website by Yahoo, and not the Respondent. We do not think the placing of the French language links after the Domain Name was registered on January 9, 2005, necessarily tells us anything about the Respondent’s intentions when it acquired the Domain Name, or more specifically, whether it knew of the mark on that date.
There are significant gaps in the evidence provided on this issue by both parties, and the Panel believes it has insufficient information to make any reliable finding on it.
The Complaint must therefore be resolved on the basis of whether the relevant onus of proof has been discharged. In that regard, the critical matter to be decided, whether under paragraph 4(a)(ii) or paragraph 4(a)(iii) of the Policy, is whether the Respondent was aware of the Complainant’s mark on January 9, 2005. In the end, the Panel is clear in its view that the Complainant has failed to discharge its burden of proving bad faith under Paragraph 4(a)(iii), and it is therefore not necessary to reach a conclusion under Paragraph 4(a)(ii). Accordingly, we make no finding under paragraph 4(a)(ii) of the Policy, and the Complaint falls to be decided under paragraph 4(a)(iii).
C. Registered and Used in Bad Faith
The Complainant has failed to make out its case under this head, and for that reason the Complaint must be dismissed.
The reasons for the Panel coming to that conclusion are as follows:
1. The Panel accepts the Respondent’s submission that, for a finding of bad faith registration, the Respondent must have been aware of the Complainant when it registered the Domain Name, and it must have registered the Domain Name “with the Complainant’s trademark in mind” (citing the HP Hood LLC case). See also Emilio Pucci SRL v, Mailbank.com Inc., WIPO Case No. D2000-1786, Builder’s Best Inc. v. Yoshiki Okada, WIPO Case No D2004-0748, and Think Service, Inc. v. Juan Carlos, WIPO Case No. D2005-1033, all of which are to similar effect. For the reasons set out below, the Complainant has failed to satisfy us that the Domain Name was registered in order to take advantage of the mark, or even with the mark in mind.
2. The mark is registered only in Europe. The Respondent appears to be a domain name professional based in the Republic of Korea, and possibly with business interests in the United States. There is no evidence of the Respondent carrying on business in Europe, and no other reason to conclude that the Respondent’s residence or place of business would, in the ordinary course of things, have made it aware of the mark.
3. The Complainant’s evidence of the use of the mark outside France is insufficient to establish the reputation outside that country for which the Complainant contends. The Panel accepts that the mark may be known by those engaged in the travel industry, but the Respondent does not appear to fit into that category. The Respondent’s website appears to do little more than provide a platform for sponsored advertisements provided by others, with the Respondent deriving click-through revenue in exchange for providing that service.
4. In the English language, the Domain Name is a generic or descriptive expression. The Respondent says that it is in the business of acquiring such names that have either expired or been deleted, and the Panel has no reason to disbelieve that statement. Indeed, the earlier decisions under the Policy in which the Respondent has been a party appear to confirm that description of its business. Leaving aside any other considerations, it is therefore plausible that the Respondent may have chosen the Domain Name for no better reason than that it was a relatively short, common word English expression which had recently become available and was thought to have some value.
5. The Respondent denies that, when it registered the Domain Name, it had any knowledge of the Complainant’s business name or mark. The Panel has significant doubts about that denial, but in the end it is not in a position to say that the denial is clearly false. It may be that the mark appeared on a website operated by the Complainant at “www.jettours.com” in January 2005, and it would not have been surprising if the Respondent had visited any such site before registering the Domain Name. Equally it would not have been surprising if the Respondent had run an online search for use by others of the expression “Jet Tour”, and learned of the mark by that means. But there is no proof of any of those things, and they really do not go beyond the level of speculation.
6. The Complainant relies on the alleged concealment of the Respondent’s identity on the WHOIS database. In the Panel’s view, the use of the identity shield is not a sufficient indicator of bad faith as at January 9, 2005, to tip the scales in the Complainant’s favour. When the Respondent registered the Domain Name, it appears to have used its correct name, and it did not thereafter provide false registration details to the Registrar. Nor did the use of the identity shield prevent the Complainant from commencing this proceeding against the correct registrant.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick Smith | |
David E. Sorkin |
Pierre-Yves Gautier |
Dated: May 26, 2006