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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amanresorts Limited, Amanresorts International Pte Ltd. v. Registerfly.com
Case No. D2006-1322
1. The Parties
The Complainants are Amanresorts Limited and Amanresorts International Pte Ltd., of Singapore, represented by Penny Leng, Singapore.
The Respondent is Registerfly.com, of Boonton, New Jersey, United States of
2. The Domain Name and Registrar
The disputed domain name <hotelborabora.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2006. On October 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 17, 2006, eNom 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 October 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2006.
The Center appointed John Katz as the sole panelist
in this matter on December 12, 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,
4. Factual Background
The Complainants are both wholly owned subsidiaries of Silverlink Holdings Limited, a British Virgin Islands company, and operate generically under the umbrella of the Amanresorts Group of companies. Since 1999, that Group has been based in Singapore. The Group is well known in the premium end of the hotel/resort market.
The Complainants are hotel operators owning and/or managing 18 luxury resort hotels worldwide. These include resorts in a number of countries in Asia and the Pacific region. One of these is the Hotel Bora Bora in French Polynesia. That particular hotel has operated under that name since 1961, and has been owned by the Complainants since 1989.
The Complainants are beneficiaries of various registered trade marks in France, these being registered in the name of Amanresorts Limited, the first named Complainant, with trading goodwill owned or shared by the second named Complainant.
The Complainants operate a website “www.amanresorts.com” which contains links to the various hotels and resorts including a link for the Hotel Bora Bora.
It is relevant to note that the common name for the
hotel/resort in question is Hotel Bora Bora, located as it is on the island
of Bora Bora in French Polynesia.
5. The Parties’ Contentions
A. The Complainants
The Complainants claim the benefit of the rights they derive from their registered trade marks (in France) and the goodwill generated in their favour by virtue of their trading activities.
Evidence has been put before the Panel of the four classes in which trade mark registration has been achieved with registration of the sign HOTEL BORA BORA back to December 2001. Evidence has also been put forward of the annual turnover of the particular hotel which is measured in multiple millions of US dollars.
The Complainants contend that the Hotel Bora Bora is very well known to the public and travel industry. It features regularly in travel magazines, has won various awards as has also the Group as a whole.
The quality of the Hotel Bora Bora and the experience it offers is self evident from the Group’s website and the snaps of the particular hotel.
The Complainants contend that when the disputed domain name was first registered it defaulted to a domain parking web page operated by an entity called Sedo. That is a well known organization associated with a German ISP. The Complainants contend that SEDO is apparently also a facility which operates as a market place for buying and selling domain names. An example of its website <www.sedo.com> shows that it is indeed a facilitator of dealing in domain names. It advertises it has over five million domains for sale. Of these some 1,250,000 are said to be “parked”.
The Complainants submit that originally the disputed domain name was operated as a portal site with the usual links to commercial websites. The site contained an offer to sell the disputed domain name.
The Complainants complained to Sedo and lodged a formal complaint on August 26, 2006. On September 8, 2006, Sedo advised it had deleted the disputed domain name from its database and had placed the name on its blacklist.
Thereafter the domain name resolved (and continues to resolve) to a blank page.
The Complainants then wrote to the Respondent as the contact disclosed on a WHOIS search. To that letter of complaint there has been no response.
The Complainants contend that even though the domain name may now be parked or is passive this still amounts to abusive registration.
The Complainants also rely upon the fact that the Respondent is itself an ICANN accredited Registrar providing domain name and other internet related services. One of those services is a privacy protection service used to mask the identity of the real or beneficial owner of the domain name. By this means WHOIS will disclose only the Respondent as the apparent owner of the domain name.
The Complainants submit that they sought responses from the Respondent on September 14, 19 and 21, 2006, but without any success. The Complainants rely upon these facts as indicative of the type of activity and business of the Respondent.
B. The Respondent
The Respondent has defaulted. It has not responded to any of the Complainants’ correspondence nor to the Complaint submitted through the Center. Thus, no evidence is available from it as to its activities or the reasons it might put forward in defence of and in answer to the Complaint.
The Respondent does however have a website “www.registerfly.com”
which gives some indication of its activities. These include an escrow service
and privacy protection service. The latter includes the statement “Your
real information is NEVER visible, ours is shown instead!” (original emphasis).
And also “We replace your registrant, technical, administrative and billing
information with our own” and “Although the WHOIS information shows
our information, you retain ownership of the domain”.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions
in support of its complaint. The expectation is that the Complainant will provide
such supporting evidence as is necessary to make out its case under all three
heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity
to respond. In this instance, the Respondent has defaulted. In such circumstances
it may be inferred that the Respondent takes no issue with the factual allegations
in the complaint (Graco Childrens Products Inc v. Domains Ventures, WIPO
Case No. D2006-0598).
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark 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
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Each of these three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainants have rights.
The Complainants must establish that they have such rights either to common law or registered trade marks or service marks.
The Complainants have registered trade marks for HOTEL BORA BORA. They also have goodwill in the common law trade marks or service marks generated as a result of many years advertising, trading and general familiarity within the travelling public and travel agency industry.
The disputed domain name carries with it the .com suffix. The disputed domain name differs from the registered trade marks solely by the addition of the .com suffix. It is of no relevance for present purposes as it merely denotes a website suffix and would commonly be understood as such. Thus the comparison is between the registered and common law trade marks HOTEL BORA BORA and “hotelborabora”.
The omission of spaces and the addition of the .com suffix are similarly of no significance.
Paragraph 4(a)(i) of the Policy is accordingly made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Panel notes that the Respondent does not put forward of in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
The fact that the Respondent may seek to mask or protect the identity of the true owner of the disputed domain name is not of itself and without more evidence proof of no rights or legitimate interests. However given that the name of the hotel/resort is so well known and that three perfectly proper and reasonable requests for information and to cease and desist from the Complainants have drawn no response, the Respondent cannot be heard to complain if the inference is drawn that it (or its beneficiary) has no rights or legitimate interests. Certainly none have been put before the Panel.
Paragraph 4(a)(ii) of the Policy is accordingly made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainants.
Any person legitimately searching for the Hotel Bora Bora would reasonably expect to find the hotel/resort in question. Even typing “www.hotelborabora.com” which would be a logical assumption as being the website of the hotel, would result in the reasonable expectation of securing a link to the Complainants’ hotel. It is also reasonable to conclude that the registration in favour of the present Respondent came about as a result of the earlier (August 2006) complaint by the Complainants to Sedo which, at that time, displayed the disputed domain name together with an offer to sell.
Moreover, the Respondent is no stranger to disputed domain name complaints. For similar complaints to the present the following may be cited merely as some examples where this Respondent has been the subject of a complaint resulting in an order of transfer of the disputed domain name in the case in question:
(a) Building Trade 1868 Kft v. Registerfly.com, WIPO
Case No. D2006-0396, (June 12, 2006);
(b) Chippendales USA LLC v. Registerfly.com, WIPO
Case No. D2006-0488, (June 15, 2006);
(c) Pfizer Inc v. Registerfly.com-reg # 12400771, WIPO
Case No. D2005-0156, (May 2, 2005);
(d) Pfizer Inc v. Registerfly.com, WIPO
Case No. D2004-0586, (October 2, 2004).
See also this Panelist’s earlier decision in The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112, November 20, 2006.
For all the reasons set out above, the inference is made that this Respondent has registered the disputed domain name in bad faith and is using it in bad faith.
Paragraph 4(a)(iii) is accordingly made out under both limbs.
For the reasons set out above the Panel finds:
(1) The domain name in suit registered by the Respondent is identical or confusingly similar to trade marks to which the Complainants Amanresorts Limited and Amanresorts International Pte Limited have rights;
(2) The Respondent does not have any rights or legitimate interests in respect of the domain name; and
(3) The domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4 of the Policy and 15 of the Rules the Panel orders that the registration of the disputed domain name <hotelborabora.com> be transferred to the second Complainant Aman Resorts International Pte Limited.
John Katz QC
Dated: December 26, 2006