WIPO Domain Name Decision: D2007-1884

The Complainant is Jet2.com Limited of Leeds, United Kingdom of Great Britain and Northern Ireland, represented by Gill Jennings & Every, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Jet2ski.com, c/o Whois IDentity Shield, of Vancouver, British Columbia, Canada, represented by ESQwire.com Law Firm, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the domain name at issue. On December 24 and 28, 2007 and January 7, 2008, the Center reminded Nameview, Inc. of its pending request for registrar verification. On January 15, 2008, the Center notified Nameview, Inc. that, unless the Center heard to the contrary from Nameview, Inc. by January 18, 2008, notwithstanding Nameview, Inc.’s failure to respond to the request for registrar verification, the Center would proceed to carry out its further responsibilities under the Uniform Domain Name Dispute Resolution Policy (the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) on the assumption that the information provided in Nameview, Inc.’s public WHOIS database was correct, and also on the assumption that Nameview, Inc. was carrying out its responsibilities as registrar of the disputed domain name. The Center received no reply from Nameview, Inc. and, on January 22, 2008, the Center advised ICANN of its decision to proceed with notification of the Complaint in light of the time lines provided for in the Policy and Rules.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 22, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 11, 2008. The Response was filed with the Center on February 11, 2008.

On February 29, 2008, the Complainant filed a supplemental submission with the Center and the Respondent requested the opportunity to file a reply to Complainant’s supplemental filing. Both communications were transmitted to the Panel on March 12, 2008 as per the Panel’s request.

The Center appointed Brigitte Joppich, Gordon Harris and Diane Cabell as panelists in this matter on March 6, 2008. 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 paragraph 7 of the Rules.

The Complainant, Jet2.com Limited, is a company incorporated under the laws of England and Wales and has been trading under the names “jet2”, “jet2.com” and other variations of “jet2” since fall 2002, offering flights under its trademarks and from its website at “www.jet2.com” to destinations throughout Europe, including popular ski hubs, since 2004. The Complainant is also providing various other travel and holiday services, including those in relation to ski holidays.

The Complainant is the registered owner of various “jet2” trademarks in Europe in international classes 39 and 43, mainly for airline and holiday services, including a series of three trademarks registered in the United Kingdom on October 11, 2002, a Swiss trademark with a priority of November 4, 2003, a Community trademark (device only) with a priority of October 22, 2003 and various trademarks registered in Eastern European countries, e.g., Belarus and Croatia with priorities of October 2003 (the “Jet2 Marks”). The Complainant also acquired other domain names including the combination “jet2”.

The Respondent registered the disputed domain name in September 2005 when it expired and was deleted by the Registry. The Respondent is using a Canadian identity shield and has registered other domain names incorporating the word “jet”. It uses the disputed domain name in connection with pay-per-click advertising links.

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The domain name <jet2ski.com> is identical to the Complainant’s company name and the Jet2 Marks as it differs only in inessentials, namely the descriptive word “ski”, which simply refers to the intended purpose of the customer’s holiday.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not been commonly known by the domain name, as it has not made any legitimate use of the domain name in connection with any bona fide offering of goods ands services but rather uses it as a portal to other sites which offer services competing with those of the Complainant. As a result, the Respondent is not making a legitimate non-commercial or fair use of the domain name.

(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that, given the significant goodwill of the Jet2 Marks at the time of the registration of the disputed domain name, the Respondent registered it in bad faith, purely to take advantage of the Complainant’s successful business. Given the Complainant’s reputation under the Jet2 Marks, the frequent usage of the Complainant’s website at “www.jet2.com” and the popularity of the Complainant’s flights to ski destinations, the choice of the disputed domain name can from the Complainant’s point of view hardly be a coincidence. With regard to bad faith use, the Complainant contends that customers will be diverted and confused and that the Respondent’s use of the domain name is disrupting the Complainant’s business, while the Respondent attempts to attract, for commercial gain, Internet users to its own website. The Complainant also contends that the use of an identity shield further supports the Respondent’s bad faith.

The Respondent contends that none of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant does not own trademark rights under the Policy because its mark is generic, or at best descriptive of its services, since the Complainant sells airline flight reservations, enabling consumers to “jet to” different destinations. Even if the Complainant’s mark was enforceable, the mark is descriptive and extremely weak. The Respondent contends that there is a very low threshold for dissimilarity under the Policy with respect to weak descriptive marks. The Complainant’s mark is only for “jet2”, which is not confusingly similar to “jet2ski”.

(2) The Respondent has a legitimate interest in the disputed domain name. The Respondent registered such domain name solely because it expired and was deleted by the Registry, and, as a result, available for anyone to register. The disputed domain name incorporates the descriptive phrase “jet 2 ski”, meaning “jet to ski” which is composed of the three common words “jet”, “to” and “ski”. The Respondent had never heard of the Complainant or its trademark when it registered the domain name. The Respondent further contends that it has registered other descriptive domain names, incorporating the word “jet”, such as <commercialjetcharters.com>, <hoverjet.com>, and <jetaircrafts.net>, thereby establishing an interest in the descriptive nature of the disputed domain name. In the view of the Respondent, the registration of deleted descriptive term domain names used in connection with pay-per-click advertising links establishes a respondent’s legitimate interest under the Policy.

(3) Finally, the Respondent contends that there is no evidence of registration of the disputed domain name by the Respondent in bad faith. There is allegedly not even any evidence that the Respondent had knowledge or should have had knowledge of the Complainant or its mark when it registered the disputed domain name, which occurred simply because it was deleted. According to the Respondent, it is well-accepted under the Policy that the deletion of a domain name sends a signal to the public that its owner has abandoned rights to the domain name and that there are no trademark owners claiming rights to it.

The first point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).

The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or new legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have made the Supplemental Filing solely to comment on the cases cited in the Response and to deal with the nature of its Jet2 Marks. Such a reply is not justified under the Rules (see AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc., supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485). Therefore, the Panel elects not to accept the Complainant’s supplemental submission and has not relied on it in reaching this decision, nor has it invited the Respondent to file a reply thereto.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

The Respondent contends that the Complainant does not own trademark rights under the Policy because its mark is generic, or at best descriptive of its services. However, it is consensus view among Panelists that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights. The question of whether a registered trademark is subject to revocation or deletion for inherent obstacles to registration is not to be decided under the UDRP as such a finding would be outside its scope (see Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas, supra). The Panel therefore concludes that the Complainant has rights in the Jet2 Marks.

The disputed domain name fully incorporates the Complainant’s Jet2 Marks. The mere addition of the generic word “ski” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; RRI Financial, Inc, v. Ray Chen, WIPO Case No. D2001-1242).

It is well established that the specific top level domain, in this case “.com”, is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name either (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the 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) 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) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Respondent has argued in favor of a use of the domain name in connection with a bona fide offering of services before any notice to the Respondent of this dispute. The question to be decided by the Panel in this case therefore is whether the activities of the Respondent, i.e., using an allegedly common phrase domain name by linking to third parties’ advertising services related to the descriptive meaning of the phrase compromising the domain name, are to be considered as having been carried out in good faith and conveying rights or legitimate interests on the Respondent.

The Respondent can only claim rights or legitimate interests if it has been acting bona fide, i.e., in good faith. The arguments provided by the Complainant in this regard do not support an inference that the Respondent did indeed know of the Complainant or its Jet2 Marks. In the circumstances of this case and particularly in view of the following facts, the Panel finds that the Respondent, more likely than not, acted in good faith when it registered the disputed domain name in September 2005 and subsequently used it:

- Outside the United Kingdom, the Jet2 Marks were only applied for in or after October 2003 and registered much later.

- The Complainant offered flights to ski hubs only about nine months before the Respondent registered the disputed domain name, i.e., to Geneva in December 2004.

- The Complainant’s activities are restricted to European countries (as is protection of the Complainant’s Jet2 Marks), while the Respondent is advertising ski resorts also in the United States of America and Canada.

- The figure “2” is a common abbreviation of the word “to”, and “jet2ski” therefore stands for “jet to ski”. “jet2ski” may, as a result, be considered as a common phrase domain name. Common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis (cf. Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005).

- In view of the descriptive character of the Jet2 Marks, the Complainant’s turnover and marketing expenditure are not sufficient to presume that the Respondent knew of the Complainant’s activities under the name “Jet2”.

- The use of an Identity Shield as such is not as an indication of bad faith (cf. WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975).

The advertising services provided by the Respondent on the website at the disputed domain name do not justify a decision against a finding of legitimate interests in this case. Firstly, the links appear not to be specifically aiming at the Complainant’s area of business (which is much broader than skiing) but are mostly related to skiing, nor do they have the same geographical focus (the Respondent’s website include links to Northern American resorts while the Complainant’s activities are purely European). The domain name is therefore used by the Respondent in its descriptive sense. Such use may be considered as legitimate (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 with further references).

Accordingly, the Panel finds that Respondent has rights to and legitimate interests in respect of the domain name at issue.

As the Complainant has failed to prove the second of the three requirements, the Panel has no need to determine further issues in order to decide this case.

Brigitte Joppich
Presiding Panelist

Gordon Harris
Panelist

Diane Cabell
Panelist