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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Official Site Hotel Ltd. v. 1001 Web Promotions

Case No. D2006-0322

 

1. The Parties

The Complainant is Official Site Hotel Ltd., London, United Kingdom of Great Britain and Northern Ireland, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is 1001 Web Promotions, Paris, France, represented by Cabinet Plasseraud, France.

 

2. The Domain Names and Registrar

The disputed domain names <official-hotel-site.com>, <officialhotelsite.com>, <official-hotel-site.net>, <officialhotelsite.net>, <official-hotel-site.org>, <officialhotelsite.org>, <officialsitehotel.net> and <officialsitehotel.org> are registered with Go Daddy Software Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006 electronically and on March 24, 2006 in hardcopy. On March 16, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 16, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2006. The Response was filed with the Center on April 13, 2006.

The Center appointed Torsten Bettinger as the sole panelist in this matter on April 23, 2006. The Panel finds that it was properly constituted. 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.

In addition to the Complaint and the Response, the Center received a “Supplemental Filing in reply to the Respondent’s Response” by the Complainant on April 25, 2006, and a “Supplemental Filing in reply to the Complainant’s new observations” by the Respondent on April 26, 2006.

 

4. Factual Background

Complainant is a company based in London and incorporated under the laws of the UK on October 14, 2005.

Complainant provides a research engine on the Internet for hotel trade and catering. The concept has been developed, commercialized and promoted since February 2004, through a joint venture between Habban Ltd. and the French company Apicius.com executed on February 11, 2004. The business activities have been transferred to the Complainant on the basis of a business purchase agreement dated October 17, 2005. Complainant launched its website at “www.officialsitehotel.com” providing research tool for hotel trade and catering on September 30, 2005.

Complainant is owner of the following trademarks:

- Benelux trademark registration OFFICIAL SITE HOTEL + logo n°0792639 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration OFFICIAL HOTEL SITE + logo n°0792641 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration OFFICIAL WEB SITE HOTEL + logo n°0792638 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration SITE OFFICIAL HOTEL + logo n°0792640 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43.

The Complainant has filed the following trademark applications:

- International Trademark application OFFICIAL SITE HOTEL + logo n°004865002 from February 1, 2006, in classes 35, 38, 43;

- International Trademark application OFFICIAL HOTEL SITE + logo n°004865036 of February 1, 2006, in classes 35, 38, 43;

- Community Trademark application OFFICIAL SITE RESTAURANT + logo n°004870853 of January 31, 2006, in classes 35, 38 and 43;

- Community Trademark application OFFICIAL SEARCH HOTEL + logo n°004870846 of January 31, 2006, in classes 35, 38 and 43;

- Community Trademark application OFFICIAL WEB SITE HOTEL + logo n°004864989 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Community Trademark application SITE OFFICIAL HOTEL + logo n°004865028 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Community Trademark application OFFICIAL SITE HOTEL + logo n°004865002 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Community Trademark application OFFICIAL HOTEL SITE + logo n°004865036 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- UK Trademark application OFFICIAL SEARCH HOTEL + logo n°2412625 of February 1, 2006, in classes 35, 38 and 43;

- UK Trademark application OFFICIAL SITE RESTAURANT + logo n°2412624 from February 1, 2006, in classes 35, 38 and 43;

- UK Trademark application OFFICIAL SITE HOTEL + logo n°2412626 of February 1, 2006, in classes 9, 16, 35, 38, 39 and 43;

- UK Trademark application OFFICIAL HOTEL SITE + logo n°2412623 of February 1, 2006, in classes 9, 16, 35, 38, 39 and 43

Furthermore, Complainant argues to be the legitimate rightholder of the following domain names which have been originally reserved by Apicius.com pursuant to the joint venture agreement:

- <officialsitehotel.com> created on August 16, 2005;

- <official-site-hotel.net> created on August 16, 2005;

- <official-site-hotel.org> created on August 16, 2005;

- <official-site-hotel.info> created on August 16, 2005;

- <official-site-hotel.biz> created on August 16, 2005;

- <official-hotel.com> created on August 8, 2005;

- <official-web-site-hotel.com> created on October 31, 2004;

- <officialwebsitehotel.com> created on October 31, 2004 (Annex 7).

Respondent has registered the disputed domain names on October 26, 2005, and November 2, 2005, and launched a website under the domain name <official-hotel-site.com> providing services similar to those provided by the Complainant on February 2, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the term OFFICIAL HOTEL SITE was protected as a common law trademark at the time the disputed domain name were registered. In support of this assertion of Complainant argues that:

- the domain name <official-site-hotel.com> has been used since October 2004 and that numerous professional have subscribed to the services provided by Complainant;

- it promotes regularly its services through numerous conferences directed to managers of hotel and restaurants since October 2004;

- it has released several press statements and advertisements in specialized magazines such as the “Journal de l’Hфtellerie Restauration”, the most widely read magazine in the sector in France;

- it has frequently promoted its business in magazines;

- the Panel is not permitted to determine whether a mark is valid or invalid based upon lack of distinctiveness.

Furthermore, Complainant asserts that its common law trademark OFFICIEL SITE HOTEL and registered trademarks are identical or confusingly similar to the disputed domain names. In support of this assertion Complainant argues that the fact that the domain names contain the word elements of the Complainant’s trademark in inverse order and add the top level domain “.com”, “.net” or “.org” and a hyphen does not affect the domain names for the purpose of determining whether they are identical or confusingly similar pursuant to paragraph 4 (a) of the Policy.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has no authorization or licence to use the Complainant’s trademark in his domain names and that there is then no evidence of the Respondent’s use of, or demonstrable preparations to use the domain names in connection with a bona fide offering of services before the Complainant started its own activity. Furthermore Complainant asserts that Respondent’s use of the domain names for the same services as those provided by Complainant is neither a legitimate non-commercial or fair use of the domain names.

Furthermore, Complainant disputes the validity of the licence agreement between Respondent and its U.S. parent company because it has been concluded only 5 days after the filing of the trademarks and it is not registered in the “French National Register of Marks”.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that:

- Respondent is a direct competitor of the Complainant, and therefore must have been aware of Complainant’s activities and his common law trademark rights;

- Respondent knowingly selected a similar domain name in order to disrupt the business of the Complainant;

- Respondent uses the disputed domain names in order to attract Internet users, to its website, by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent

Respondent asserts that none of the elements specified in paragraph 4(a) of the Policy have been satisfied.

As to Complainant’s contested rights in a common law trademark, Respondent argues that the term OFFICIAL SITE HOTEL is descriptive for the services provided by the Complainant.

In addition, Respondent disputes that Complainant has provided evidence of long, intense and constant use of the term OFFICIAL SITE HOTEL required for the establishment of a common law trademark.

With regard to the registered trademarks of the Complainant Respondent asserts that they are posterior to the registration dates of the trademarks and domain names of Respondent.

In reference to the element in paragraph 4(a)(ii) of the Policy, Respondent contends that its US parent company Industrial Webs Machine Inc. is the registered owner of the following trademark registrations:

- French Trademark Registration OFFICIAL HOTEL SITE & device, n° 053375982, August 19, 2005, in classes 35, 38, 43 and

- French Trademark Registration SITE OFFICIEL DE L’HOTEL & device, n° 053375982, August 19, 2005, in classes 35, 38, 43,

In addition Industrial Webs Machine Inc. holds a Community Trademark application “OFFICIAL HOTEL SITE & device” filed with priority of its French trademark registration.

Respondent contends that it has obtained an exclusive licence by its US parent company to use the French Trademark Registrations and that it therefore has a right or legitimate interest in the corresponding domain names.

Furthermore, Respondent contends that it has a legitimate interest in the domain names in dispute because they are descriptive of its service of providing access to hotels’ “official websites”.

In reference to the element in paragraph 4(a)(iii) of the Policy, Respondent asserts that the disputed domain names have been registered in good faith as the disputed domain names are descriptive and Complainant does not own prior rights to those registered by the Respondent.

 

6. Discussion and Findings

A. Procedural Aspects

Additional Submissions after Filing the Complaint and the Response

Given the proceeding’s aim of an expeditious settlement of disputes, the UDRP does not provide the parties with any right to reply, unless the panel requests, in its sole discretion, further statements or documents from either of the parties pursuant to paragraph 12 of the UDRP Rules.

Opinions differ as to whether and under what conditions the Panel can take into account unrequested additional submissions. The wording of paragraph 12 of the UDRP Rules, (“the Panel may request”) and the aim of expeditious settlement have occasioned a number of panels to take into account of sur-replies and sur-sur-replies only if the submissions have been requested by the panel. However, despite the wording of paragraph 12 of the UDRP Rules, the majority of the panels refer to the general requirement of procedural fairness and assume that unrequested submissions by the complainant can be taken into account by the panel, depending on the circumstances, if the additional submission concerns questions that were not known before the filing of the complaint (See Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 – <itoyota.com)> or if objections have been raised by the respondent that were not foreseeable when the complaint was filed.

In this case, Complainant’s and Respondent’s supplemental submissions concern the question of the Respondent’s alleged license agreement with its US parent company of which Complainant was not aware at the time of filing of the Complainant and legal pleading which is merely an expansion on the arguments already addressed in the Complaint and Response. The Panel has therefore elected to accept the Complainant’s and Respondent’s arguments in relation to the alleged license agreement but to disregard the unsolicited submissions as far as they contain merely additions to the arguments already articulated in the Complaint and Response.

B. Complainant’s rights in a trademark

Complainant has provided evidence that when it filed the Complaint, it was the registered owner of the following trademark registrations:

- Benelux trademark registration OFFICIAL SITE HOTEL + logo n°0792639 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration OFFICIAL HOTEL SITE + logo n°0792641 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration OFFICIAL WEB SITE HOTEL + logo n°0792638 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43;

- Benelux trademark registration SITE OFFICIAL HOTEL + logo n°0792640 of January 27, 2006, in classes 9, 16, 35, 38, 39 and 43.

The fact that these trademarks were registered after the registration of the disputed domain name is of no importance. The issue under paragraph 4 (a)(i) of the Policy is whether the Complainant has rights as of the time of the Complaint. Respondent’s lack of knowledge of Complainant’s trademark rights at the time of the registration of the domain names, however, is relevant to the second and third factors (legitimate interest and bad faith) (See Consejo de Promociуn Turнstica de Mйxico, S.A. de C.V. v. Latin America Telecom Inc. WIPO Case No. D2004-0242, <mexico.com>; Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner S.A. v. Patrick Waldron, WIPO Case No. D2001-0351, <seveballesterostrophy.com>; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, <htmlease.com>; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, <delikomat.com>).

As regards the question whether Complainant has also rights in a common law trademark, the Panel notes that Complainant has provided evidence of use of the expression OFFICIAL SITE HOTEL as a business name and domain name in France but not in the UK where Respondent resides. The Panel also notes that Complainant has not specified in the Complaint in which jurisdiction it claims to have a common law trademark or trademark acquired by use.

For the Complainant’s business name and domain name to be a common law trademark in the United Kingdom, the Panel would need to be persuaded that those names by virtue of extensive use of the names in the U.K., a significant proportion of hoteliers or consumers of hotel reservation services in the U.K. have come to associate the names exclusively with the services provided by the Complainant. The Complainant has not provided evidence to this effect and, accordingly, the Panel is not willing to find that the Complainant has common law trademark rights in either its business name or its domain name in the U.K.

If the Complainant’s contentions were to understand to the effect that Complainant relies on a unregistered trademark in France, Complainant would need to be persuaded that the expression “official site hotel”, despite the fact that it is descriptive of Complainant’s service by virtue of extensive use of the names in France, has acquired trademark protection through use under French law. The Complainant has neither made any statements as to the requirements of the protection of unregistered trademarks according to French law nor provided any significant evidence that the expression has become distinctive of Complainant or its goods or services in France.

The Panel therefore concludes that Complainant has not proven that OFFICIAL SITE HOTEL is protected as common law or unregistered trademark..

B. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement cases (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, <guiness.com>, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. 2001-0110, <ansellcondoms.com>, Dixons Group Plc v. Mr. Abu Abdullaah , WIPO Case No. D2001-0843, <dixons-online.net>, AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, <attinternet.com>, <attuniversal.com>, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, <britanniabuildingsociety.org>).

The disputed domain names wholly incorporate the word element “OFFICIAL SITE HOTEL” of Complainants’ registered trademarks in inverse order except that the domain names add the generic top-level-domains “.com”, “.org” and “.net” and a hyphen between the words “official”, “hotel” and “site” and do not comprise the figurative element.

The Panel notes that it is consensus view among Panelists that the assumption of confusing similarity between trademark and domain name is not refuted by the fact that the domain name contains the world elements of the trademark in inverse order (Sociйtй des Bains de Mer v. Michael Ditursi, WIPO Case No. D2005-1343, <montecarlointernationalcasino.com>) or contains additional figurative elements which cannot be reproduced in a domain name (Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, <sweeps.com>).

Also, it is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” and a hyphen does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the disputed domain names are confusingly similar to Complainant’s registered trademarks and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. Complainant contends that that Respondent has no authorization or licence to use the Complainant’s trademark in his domain names and that there is then no evidence of the Respondent’s use of, or demonstrable preparations to use the domain names in connection with a bona fide offering of services before the Complainant started its own business activity.

Furthermore Complainant asserts that Respondent’s use of the domain names for the same services as those provided by Complainant is neither a legitimate non-commercial nor a fair use of the domain names.

Respondent asserts that the disputed domain names are descriptive for the services of providing access to hotels’ official websites and that it is has an exclusive licence of its US parent company to use the French Trademark Registrations OFFICIAL HOTEL SITE & device, n° 053375982 and SITE OFFICIEL DE L’HOTEL & device, n° 053375982. Complainant disputes the validity of this licence agreement and points to the fact that the licence agreement has been concluded only 5 days dafter the filing of the trademarks and that the licence agreement was not registered in the French National Register of Marks.

The Panel notes that Respondent has provided evidence of a written agreement between Respondent and Respondent’s parent company to the effect that Respondent’s parent company has in fact granted a licence to the Respondent to exclusively use the French trademarks OFFICIAL HOTEL SITE & device and SITE OFFICIEL DE L’HOTEL & device before knowledge of the Complaint. In the Panel’s view, a licensee having the right to use a mark under its license is clearly a party having a right pursuant to paragraph 4(a)(ii) of the Policy.

The Panel further states that the validity of this licence agreement is not refuted by the fact that the licence agreement is not registered in the French Trademark Register or the fact that the licence agreement between Respondent and its U.S. parent company was concluded only 5 days after the filing of the trademark registrations.

If the Complainant had provided evidence that the trademarks were registered by Respondent’s parent company merely to protect its interest in the domain names and as a pretence to justify abusive domain name registrations, the Panel would have been inclined to find that Respondent’s licence does not evidence a right or legitimate interest in the disputed domain names.

However, having regard to the fact that the words “official site hotel” are descriptive of a research and hotel reservation service and that there is no evidence before the Panel that Respondent does not provide a genuine hotel research and reservation service, the Panel finds that Respondent has a right and legitimate interest in the domain names.

D. Registered and Used in Bad Faith

Finally, there is no evidence before the Panel to indicate that the Respondent registered and is using the domain names in bad faith. The Respondent registered the disputed domain names after Complainant used the expression “Official Site Hotel” as a domain name and business name in France. Given the normal steps undertaken by a company which wishes to start a new business, it appears not unlikely that Respondent was in fact aware of the Complainant’s business and domain names. However, this fact alone does not justify the conclusion that Respondent either registered or is using the domain names in bad faith given that the disputed domain names are descriptive of Respondent’s hotel research and reservation services and hence are domain names in which such service provider might have a legitimate interest.

This decision is of course not in any way meant to prejudge or influence an eventual national court proceeding between the parties which would be conducted under different procedural and substantive rules.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Torsten Bettinger
Sole Panelist

Dated: May 24, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0322.html

 

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