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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Amanresorts Limited and Amanresorts International Pte Ltd. v. Eric Tomacruz

Case No. D2006-1219

 

1. The Parties

The Complainants are Amanresorts Limited, Hong Kong, SAR of China and Amanresorts International Pte Ltd, Singapore (hereinafter referred to as “the Complainant”), internal representative.

The Respondent is Eric Tomacruz, Florida, the United States of America.

 

2. The Domain Names and Registrars

The disputed domain names <amanbagh.net>, <amangalla.net>, <amangani.net>, <aman-i-khas.net>, <amanjena.net>, <amanjiwo.net>, <amankila.net>, <amankora.net>, <amanpuri.net>, <amansara.net>, <amanusa.net>, <amanwana.net>, <amanwella.net>, <hotelborabora.net>, and <lemelezin.net> are registered with Schlund+Partner AG. The disputed domain name <amanpulo.net> is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2006. On September 25, 2006, the Center transmitted by email to Schlund+Partner AG and Go Daddy Software, Inc. a request for registrar verification. On September 25, 2006, Go Daddy Software Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <amanpulo.net> and providing the contact details for the administrative, billing, and technical contact. On September 26, 2006, Schlund+Partner AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the other abovementioned domain names and providing contact details. In response to a request by the Center regarding Complaint Paragraph IX (Other legal proceedings), the Complainant communicated the necessary confirmation to the Center on October 2, 2006. 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. The Respondent submitted a response on October 18, 2006, and the Center acknowledged receipt and notified the Complainant on October 19, 2006.

The Center appointed William A. van Caenegem as the Sole Panelist in this matter on November 10, 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.

The Complainant submitted supplemental filings to the Center. The Rules do not provide for the making of supplemental filings as of right, the matter being at the discretion of the Panel. Given the decision the Panel has arrived at on the material before it, the Panel exercises its discretion to refuse the filing of supplemental material by the Complainant. Supplemental filing would generally require the other party to be given the opportunity itself to respond, which is not in the interest of an expeditious resolution of this matter in the circumstances.

 

4. Factual Background

The Complainant owns and/or manages 18 luxury resort hotels around the world. Except for the hotels Le Melezin in France and Bora Bora in French Polynesia, the hotels bear names consisting of the ‘Aman-’ prefix, with a different suffix for each hotel, so that no two hotels bear the same name. The Complainant has obtained trademark registrations in each of the countries for the hotel(s) there situated, except for the resort names Amangalla and Amanwalla (both in Sri Lanka) and Amankora (in Bhutan) for which trademark applications are pending. In relation to these three marks the Complainant claims common law rights. The Complainant submits evidence of numerous publications and advertisements, as well as of awards and accolades, supporting the international reputation of both its individual hotels and of the Amanresorts chain.

The Respondent operates the travel website “www.travelsmart.net”. Six of the domain names at issue, namely <amanpulo.net>, <amanjiwo.net>, <amankila.net>, <amanusa.net>, <amanwana.net> and <amanpuri.net> (hereinafter ‘the six domain names’) resolve to the Respondent’s “www.travelsmart.net” website. As evidenced by webpage printouts submitted by the Complainant, eight of the domain names at issue, namely <aman-i-khas.net>, <amanbagh.net>, <amansara.net>, <amangalla.net>, <amanwella.net>, <amangani.net>, <amanjena.net> and <amankora.net> resolved to a domain parking web page operated by SEDO, with a portal in each case where sponsored links appeared and the domain names were offered for sale. However, the Respondent points out in his response that these parking pages have been removed. When the Panel accessed these domain names a notice ‘The requested URL /none.html was not found on this server.’ appeared. The same is now the case for the domain names <lemelezin.net> and <hotelborabora.net>, but the Complainant provides evidence that on August 31, 2006, they each resolved to a webpage indicating that the domain name was registered, and which provided generalized information concerning opportunities for domain name acquisitions.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain names at issue are identical to its own trademarks, both registered and at common law. The domain names at issue differ only by the addition of the suffix ‘.net’ which it says is a difference without significance. The Respondent does not hold any license or permission in relation to the trademarks, or to apply for any domain names incorporating them. Neither does the Respondent have a similar name or business, nor is he making a legitimate or fair use of the domain names without commercial intent.

The Respondent is said to have acted in bad faith by not using some of the domain names, and offering them for sale through the domain name broker SEDO. Even if he were not deemed to be selling them, the Respondent is passively holding them, which amounts to bad faith in such circumstances as pertain here: the marks were well-known at the time of the registration of the domain name; the Respondent did not answer a letter of demand; and since the Respondent has no rights or legitimate interests in the domain names, no good faith use can be conceived of. It can be inferred that the Respondent has derived financial benefits from Internet traffic connected with the presence of eight of the domain names and sponsored links at the SEDO website.

The Respondent registered sixteen ‘exact copies’ of the Complainant’s marks within a three day period. Six of the domain names resolve to webpages on “www.traverlsmart.net, the Respondent’s own website, featuring the Complainant’s resorts, with similar fonts used to present the names of the resorts on the webpages. This all establishes that the Respondent was fully aware of the Complainant and registered the domain names to prevent the Complainant from obtaining them, as part of a pattern of conduct of such kind. The Respondent is attempting to attract Internet users to his website for commercial gain by creating likely confusion as to the existence of a connection with the Complainant. The Respondent is alleged to have falsely claimed in the press that Travelsmart.net has ‘teamed up’ with the Complainant.

B. Respondent

The Respondent maintains that he is using the trademarks not in the trademark sense but to describe different resorts available on the “www.travelsmart.net” reservation system. The domain names are said to describe the Respondent’s service offerings resulting in Internet visibility. The domain names are used in connection with a bona fide offering of goods and services, that is, booking services for the Complainant’s resorts. Through his website “www.travelsmart.net” the Respondent ‘has been representing’ Amanresorts since 1999, providing a booking service, to the Complainant’s benefit. The Respondent states that he was one of the Complainant’s top agents for the Amanpulo resort. Reservations for the resorts incorporated in the pages to which the six domain names resolve are said currently to be coursed through hotels.com’s instant confirmation system. The Respondent says that pending development of similar web pages for the other relevant resorts the parking pages to which the other domain names resolved have been removed. The Respondent asserts in his response that he has no intention of selling the domain names.

Correspondence between the Respondent and staff at a number of resorts is annexed to the Response. It concerns providing information about the resorts to the Respondent, and discounts or commissions offered to the Respondent for reservations completed via “www.travelsmart.net”. Whereas the Respondent retains a commission fee the rest of the payments made via the booking system go to the Complainant, so they are not competitors, and no confusion is created since the material presented by the Respondent comes from the Complainant, pricing is consistent between Travelsmart.net and Amanresorts, and reservations go into the Complainant’s system. The Travelsmart.net website shows multiple resorts from different providers because this is the ordinary manner of conducting a compendious travel site’s business.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain names at issue differ only in the addition of ‘.net’ and the contraction of terms in the case of the Le Melezin and Hotel Bora Bora. However, these differences are of no legal significance. The Complainant has established its rights by submitting proof of registration for all the marks at issue except for <amangalla.net>, <amanwalla.net> and <amankora.net>. The Complainant’s evidence establishes that it has acquired common law rights in those marks partly by promotion and advertising of the hotels at issue and partly by their association with the strong reputation of Amanresorts generally. Similarly common law rights in all the marks registered in the countries where the hotel resorts are situated exist in numerous jurisdictions in which the trademarks are not registered, due to the international nature of the Complainant’s business and widespread promotion in tourism source markets outside the countries of registration.

Therefore the Panel finds that all the domain names are identical to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant has not licensed or permitted the Respondent to incorporate its trademarks in domain names and/or to register such domain names. In relation to the six domain names, the correspondence annexed to the Response (as referred to above) does not bear upon the use of the Complainant’s trademarks for the purpose of incorporation in a domain name, nor grant the Respondent the right to instigate or operate websites resolving to domain names including the Complainant’s marks. It merely relates to the supply of information concerning the resorts and commissions on offer relating to resort bookings via the “travelsmart.net” website operated by the Respondent. Providing information about the resort to him may implicitly entitle the Respondent to make that information available to others, but it does not imply authorization to incorporate the Complainant’s trademarks in domain names as a means to this end.

Neither the Respondent nor its business is commonly known by any of the domain names. The Respondent has not made a legitimate noncommercial or fair use of the domain name, without intending commercial gain.

The Respondent contends in his Response that the six domain names were used in connection with a bona fide offering of goods or services before notice of the dispute. However, it is well settled that knowingly incorporating widely-known marks in a manner that suggests a connection between the resulting domain name and the Complainant, owner of those marks, does not amount to a bona fide offering of goods or services. Instead, it is an offering of goods or services in circumstances where the Respondent may derive advantage from the misleading or confusing suggestion that an association exists between his domain name and the Complainant.

As to the other domain names, on the present evidence no contention of bona fide offering of goods or services can of course be sustained. If the Respondent were to put into operation his expressed intention to use all the domain names in the manner addressed in the previous paragraphs, the conclusions arrived at in relation to the six domain names would apply to all the contested domain names.

Therefore the Panel finds that the Respondent has no rights or legitimate interests in any of the domain names at issue.

C. Registered and Used in Bad Faith

The Complainant provides evidence that the domain names other than the six domain names, except perhaps for <lemelezin.net> and <hotelborabora.net> resolved to SEDO webpages where they were offered for sale and where sponsored links appeared. “lemelezin.net” and “hotelborabora.net” resolved to parking webpages which contained an invitation to purchase them at “www.sedo.com”. This obviously occurred before the Respondent put into practice his stated intention to develop them in a manner analogous to the six domain names, something that has not in fact happened to date (these domain names having been rendered inoperative). Therefore it is warranted for the Panel to conclude that the domain names were primarily acquired for the purposes of to selling them.

Turning to the use of the six domain names, and incidentally also the alleged analogous future use of the other domain names, the manner of this use supports a finding that the Respondent intends to derive financial gain from the erroneous impression made on web page visitors, i.e. that the Complainant is the source of those pages. They appear as pages constructed and operated by each resort hotel operator, including imitation of distinctive fonts used by the Complainant in the designation of each resort, and not as descriptive information included on pages operated by a travel agent, broker or compendious travel site. There is thus a likelihood that the Respondent’s conduct will cause Internet users to be misled or at least led into confusion about the source of the pages. They may also be led into making bookings via the Respondent’s website under the mistaken impression that they are being made directly with the resort hotels concerned. The Respondent stands to gain financially from the traffic so induced to visit his website and from commissions earned by bookings so made. It may be the case that strictly speaking the Complainant and Respondent are not competitors, as the Respondent contends, or that the Respondent has generated useful business for the Complainant’s resorts. However, this does not mean that in relation to the question at issue here the Complainant’s interests are in no way at odds with the Respondent’s, both because of the potential detriment to the Complainant’s reputation, and because the Respondent by its conduct gain commissions which the Complainant would avoid paying if the bookings were indeed made directly with its hotels.

The decision in CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000) which the Respondent refers to in his Response is of no assistance since it concerns generic or descriptive terms, whereas here the marks consist of terms with a high degree of inherent and/or acquired distinctiveness.

In any case, the Respondent registered a whole suit of domain names incorporating sixteen of the Complainant’s marks, all within a short period of days. The Complainant’s marks are all unique and distinctive, and being in the business of providing booking services for hotel resorts the Respondent would have been well aware of the Complainant and the reputation adhering to its marks at the time. It has been decided in other matters that multiple domain names in a single or few applications may amount to a pattern of conduct in the sense of article 4(b)(ii) of the P. It is clearly open to the Panel to find that the domain names were registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.

Therefore the Panel finds that all the domain names at issue were registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <aman-i-khas.net>, <amanbagh.net>, <amansara.net>, <amangalla.net>, <amanwella.net>, <amangani.net>, <amanjena.net>, <amanpulo.net>, <amanjiwo.net>, <amankila.net>, <amanusa.net>, <amanwan.net>, <amanpuri.net>, <amankora.net>, <hotelborabora.net> and <lemelezin.net> be transferred to the Complainant.

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Wiliam A. Van Caenegem
Sole Panelist

Dated: November 22, 2006