Thomas Cook Holdings Limited v. Tailor Made Travel

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Thomas

Cook Holdings Limited v. Tailor Made Travel

Case No.

D2001-0435

1. The Parties

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.

2. The Domain Name and

Registrar

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.

3. Procedural History

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.

4. Factual Background

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>.

5. Parties’ Contentions

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

6. Discussion and Findings

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.

Domain Name Identical

or Confusingly Similar

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.

No Right or Legitimate

Interest

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.

Domain Name Registered

and Being Used in Bad Faith

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.

7. Decision

In view of the above,

the Domain Name should be transferred to the Complainant.

Clive L.

Elliott

Sole Panelist

Dated:

May 24, 2001

More cases by this complainant

• Thomas Cook Holdings Limited v. R Mavani, Villa Plus Limited — D2002-0632 · jmcholidays.net · Transfer · 30 Aug 2002
• Thomas Cook Holdings Limited v. Vacation Travel — D2000-1716 · jmcflights.com · Transfer · 22 Jan 2001
• Thomas Cook Holdings Limited v. Neil Tucker — D2000-1360 · jmc-airline.com, jmcairline.com · Transfer · 27 Dec 2000
• Thomas Cook Holdings Limited — D2000-0813 · Terminated
• Thomas Cook Holdings Limited v. Neil Tucker — D2000-0805 · jmcairlines.com · Transfer · 02 Oct 2000
• Thomas Cook Holdings Limited v. Judith Bonser — D2000-0804 · jmc-airlines.com · Transfer · 21 Sept 2000