Gatwick Express Limited v. JungMo Lee

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gatwick Express Limited v. Jungmo Lee

Case No. D2002-0311

1. The Parties

The Complainant is Gatwick Express Limited of 75 Davies Street,

London, United Kingdom.

The Respondent is Jungmo Lee ("the Respondent") of Yoksam-Dong,

34-86, Seoul, Kangnam-Gu, Republic of Korea.

2. The Domain Name and Registrar

The Domain Name the subject of the Complaint is <gatwickexpress.com>

("the Domain Name").

The Registrar with which the Domain Name is registered is TLDs Inc., dba

SRSPLUS of 1100 Glendon Avenue, 8th Floor, Los Angeles,

California, United States of America.

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation

Center ("the Center") received an e-mail copy of the Complaint

on April 2, 2002, and a hard copy of the Complaint on April 5, 2002.

An acknowledgement of Receipt of Complaint was sent by the Center on

April 9, 2002.

On April 10, 2002, a Request for Registrar Verification was transmitted

to the Registrar requesting it to :

(1) confirm that a copy of the Complaint was sent to the Registrar

by the Complainant as required by WIPO Supplemental Rules for Uniform

Dispute Resolution Policy ("the Rules"), Paragraph 4(b);

(2) confirm that the Domain Name is registered with the Registrar;

(3) confirm that the Respondent is the current registrant of the Domain

Name;

(4) provide full contact details (i.e., postal address(es), telephone

number(s), facsimile number(s), e-mail address(es)) that are available

in the Registrar’s WHOIS database for the Domain Name registrant, technical

contact, administrative contact and billing contact, for the Domain Name;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy

("the Policy") applies to the Domain Name;

(6) indicate the current status of the Domain Name;

(7) confirm the language of the registration agreement, and

(8) indicate whether the Respondent has submitted in its Registration

Agreement to the jurisdiction at the location of the principal office

of the Registrar for court adjudication of disputes concerning or arising

from the use of the Domain Name (paragraph 1, Rules).

On April 17, 2002, the Registrar confirmed by reply e-mail that the Domain

Name is registered with it and that the Respondent is the current registrant

of the Domain Name. The Registrar also confirmed the Respondent’s address

and that the Respondent was listed as the Administrative, Technical and

Billing Contact, providing e-mail and telephone details. The Registrar also

forwarded the requested WHOIS details and confirmed that the Policy applies

to the domain name at issue.

The Registrar confirmed that the language of the registration agreement

is English and also confirmed that the Respondent has submitted in his Registration

Agreement to the jurisdiction at the location of the principal office of

the Registrar (Los Angeles County-California) for court adjudication of

disputes concerning or arising from the use of the Domain Names.

On April 18, 2002, the Center completed a Formal Requirements Compliance

Checklist, verifying that the Complaint satisfied the formal requirements

of the Policy. It is apparent that there was such compliance.

Also on April 18, 2002, a Notification of Complaint and Commencement

of Administrative Proceeding ("the Complaint Notification") and

the Complaint (without exhibits) was transmitted by e-mail to the Respondent.

As no Response was filed within the time specified by paragraph 5 of the

Rules, on May 14, 2002, the Center gave the Respondent formal

Notification of Respondent Default.

The Complainant elected to have the dispute determined by a single-member

Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.

The Administrative Panel appointed consists of Dr Annabelle Bennett SC

("the Panelist"). On May 22, 2002, after the Center

received a completed and signed Statement of Acceptance and Declaration

of Impartiality and Independence from the Panelist, the Center notified

the parties of the appointment of the Panelist.

4. Factual Background

The following facts are asserted by the Complainant in the Complaint and

are not disputed. The Panel finds these facts are proved.

The trade mark "Gatwick Express" ("Trade Mark") has

been registered in the United Kingdom since December 18, 1993.

It is registered in respect of services in classes 39 and 42; registration

numbers 1,557,628 and 1,557,629 respectively.

The services in class 39, in respect of which the "Gatwick Express"

Trade Mark is registered are: transportation by rail of passengers, passengers’

vehicles and passengers’ luggage into and out of Gatwick Airport; luggage

storage services; escorting of travelers; ticket booking and seat berth

reservation services; timetable enquiry services; travel agency, tourist

agency and travel information services; all provided for rail passengers

and arranging the transportation of passengers.

The services in class 42, in respect of which the Trade Mark is registered

are catering services.

The Trade Mark was originally registered by the British Railways Board

in December 1993. It was assigned to the Complainant in November 1994,

and then to The Director of Passenger Rail Franchising in July 1995,

being the current registered proprietor of the Trade Mark. The Complainant

was granted an exclusive license to use the Trade Mark by The Director of

Passenger Rail Franchising on December 10, 1995: a copy of the

agreement was annexed to the Complaint. The Trade Mark is very widely known

and has a very strong reputation.

The Complainant is the operator of passenger railway services between London

Victoria railway station and the station at Gatwick Airport. Before privatization

of British Rail these services were operated under the name "GATWICK

EXPRESS" by the Complainant’s predecessor, British Railways Board from

around 1993, and then by the Complainant as a subsidiary of British Railways

Board from 1994. Since April 2, 1996, pursuant to a franchise

agreement between the Complainant, the Director of Passenger Rail Franchising

and the National Express Group Plc, the Complainant has operated GATWICK

EXPRESS as a wholly owned subsidiary of National Express Group Plc.

Gatwick is the busiest single runway airport in the world, the second largest

airport in the United Kingdom and the sixth busiest international airport

in the world. "Gatwick" is well known as referring uniquely to

London’s second airport and "Gatwick Express" is known as referring

uniquely to the rail service operated by the Complainant between Gatwick

Airport and the center of London.

The Gatwick Airport – London center link is widely marketed in the United

Kingdom and worldwide by both National Express Group Plc, the parent company

of the Complainant, and by BAA which owns and operates Gatwick Airport.

The Complainant has been the registrant of the domain name <gatwickexpress.co.uk>

since June 1997, and operates a website at the address http://www.gatwickexpress.co.uk

whereby it provides information on the "GATWICK EXPRESS" rail

link. The Complainant was also the registrant of the Domain Name until early

January 2002, but, through an administrative oversight, its registration

of the Domain Name lapsed in January 2002, and the Respondent registered

the Domain Name on January 15, 2002.

Members of the traveling public and other internet users are likely to

assume that by visiting the Domain Name website they would access information

provided by the Complainant. They are also likely to expect that any information

accessed by visiting the Domain Name website is accurate.

On March 20, 2002, the Complainant’s solicitors sent an e-mail to the Respondent

setting out the position of the Complainant, its background and prior use

of the Domain Name and requesting that the Respondent transfer the Domain

Name to the Complainant. Copies of this e-mail was annexed to the Complaint.

The Respondent replied to the Complainant’s e-mails as follows:-

"My name is Mr JnugMo Lee. I am the administrator of the domain name

gatwickexpress.com. If you want to get this domain, you have to pay money

as much as I have invested. The amount is USD $1,650. If you can not pay

the fee, please take the domain after you will have won the case in court.

If so, you must spend on more charge than the domain price and furthermore

you must face the trial in which I live. If not, you had better pay the

money than the lawsuit? If you are interested in this domain, please take

the domain through choosing one of both ways. I want you to negotiate by

fair and reasonable methods."

No explanation for his having registered the Domain Name was given nor

was any indication of his possible legitimate use of the Domain Name given.

5. Parties’ Assertions

A. The Complainant

The Complainant asserts that the Domain Name should be transferred to it

as it is able to satisfy all three conditions provided in paragraph 4(a)

of the Policy.

Paragraph 4a(i)

The Complainant asserts that the Domain Name is identical to or confusingly

similar to trade marks in which it has rights pursuant to an exclusive licensing

agreement. The registration numbers of the Trade Mark and the services in

respect of which it is registered, are detailed above.

Paragraph 4a(ii)

The Complainant asserts that the Respondent has no rights or legitimate

interests in respect of the Domain Name and relies upon the following assertions:-

(1) The Complainant is the operator of passenger railway services

between London Victoria railway station and the station at Gatwick

Airport.

(2) It also has been granted an exclusive license for the use of the

Trade Mark, by the Director of Passenger Rail Franchising, the proprietor

of the Trade Mark.

(3) Until recently, the Complainant was the registrant of the Domain

Name but, due to an administrative error, this registration was not renewed.

(4) When the Complainant wrote to the Respondent regarding his registration

of the Domain Name, the Respondent did not assert that he had any legitimate

right to the Domain Name.

Paragraph 4a(iii)

The Complainant asserts that the Respondent registered and is using the

Domain Name in bad faith and relies upon the following assertions:-

(1) The Domain Name does not presently resolve to any web site and

has not done so, insofar as the Complainant is aware, since it was registered

by the Respondent.

(2) The passive holding of the Domain Name by the Respondent amounts to bad

faith use as found by the Panelist in Telstra Corporation Ltd v Nuclear Marshmallows

(WIPO Case No. D2000-0003), and

(3) The circumstances clearly indicate that the Respondent registered

the Domain Name primarily for the purpose of selling it to the Complainant.

B. The Respondent

No Response was received from the Respondent.

6. Discussion and Findings

Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))

The Domain Name in issue is <gatwickexpress.com>. The relevant part

of the Domain Name is <gatwickexpress>. The Domain Name incorporates

the relevant portion of the trade mark "GATWICK EXPRESS". The

Administrative Panel is satisfied that this part of the Domain Name is identical

to or confusingly similar to the trade mark "GATWICK EXPRESS"

registered in the name of The Director of Passenger Rail Franchising and

licensed to the Complainant.

Respondent’s Rights or Legitimate Interests in the Domain Name (paragraph

4(a)(ii))

The Complainant submitted substantial evidence of its use, and the history

of the registration and use of the "GATWICK EXPRESS" trade mark,

since 1993.

Further, the Trade Mark has become well known both in the United Kingdom

and worldwide, through extensive use in connection with services provided

in respect of the sixth busiest international airport in the world.

The Complainant also submitted evidence in support of its assertion that

the Respondent can have no legitimate rights or interests in respect of

the Domain Name pursuant to paragraph 4(a)(ii) of the Policy: see paragraph

5A above.

Accordingly the Panel finds that the Respondent has no rights or legitimate

interests in the Domain Name.

Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))

For the Complainant to satisfy this requirement it must prove bad faith in

registration as well as bad faith in use of the Domain Name. Bad faith registration

alone is an insufficient ground for obtaining a remedy under the Policy: (Telstra

Corporation Limited v Nuclear Marshmallows, WIPO

Case No. D2000-0003).

The Complainant relies upon three grounds in support of its assertion

that the Respondent has both registered and used the Domain Name in bad

faith. These three grounds are detailed in paragraph 5A above and the facts

supporting these grounds are detailed in paragraph 4 above.

The Panel takes all these matters into account and, in the absence of any

Response from the Respondent, the Panel finds that the Complainant has established

that the Domain Name has been registered and is being used in bad faith.

7. Decision

The Panel decides that:

(i) the Domain Name is identical or confusingly similar to a trade

mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect

of the Domain Name, and

(iii) the Domain Name has been registered and is being used in bad

faith by the Respondent.

Accordingly, the Panel decides that the Complainant has proven each of

the elements in paragraph 4(a) of the Policy. The Panel requires the Domain

Name <gatwickexpress.com> to be transferred to the Complainant.

Dr Annabelle Bennett

Sole Panelist

Dated: June 5, 2002