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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amanresorts Limited, Amanresorts International Pte Ltd. v. Birgit Schaad

Case No. D2009-1310

1. The Parties

The Complainants are Amanresorts Limited of Hong Kong, SAR of China, and Amanresorts International Pte Ltd. of Singapore, Singapore, internally represented.

The Respondent is Birgit Schaad of Zurich, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <amanhotelgroup.com> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2009 in English. On October 5, 2009, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On October 7, 2009, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. However, Key-Systems GmbH dba domaindiscount24.com was not able to confirm that the language of the registration aggrement was English, as the disputed domain name was registered through a reseller. On October 8, 2009, the Center received an email communication from the reseller concerned, stating that the language of the registration agreement for the disputed domain name was German. On October 9, 2009, the Center sent an email communication to the Complainants, asking the Complainants to provide either satisfactory evidence of an agreement between the Complainants and the Respondent to the effect that the language of the proceedings be English; or to submit a translation of the Complaint into German; or to submit a request that English be the language of the administrative proceedings. On October 12, 2009, the Center received an email communication from the Complainants, requesting that English be the language of the administrative proceedings, on the grounds that the Respondent is familiar with the English language, providing evidence of former communications of the Respondent in English. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 12, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on November 16, 2009. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainants are both owned by Silverlink Holdings Limited and are part of the Amanresorts group of companies, which owns and manages more than 20 luxury resort hotels around the world, collectively marketed and promoted under the name "Aman". The first resort called "Amanpuri" was opened in Phuket in 1988.

The Complainants are the proprietors of numerous trademark registrations for AMAN, inter alia European trademark registration No. 005892757 AMAN filed on May 10, 2007, International trademark registration No. 953150 AMAN filed on August 24, 2007, and U.S. trademark registration No. 3587316 AMAN filed on August 24, 2007 (the "AMAN Marks"). The AMAN Marks mainly cover good and services in classes 09, 16, 39 and 41 and have previously been considered as being well-known (cf. Amanresorts Limited and Amanresorts International Pte Ltd v. Minakumari Periasamy / Domain Finance Inc., WIPO Case No. D2007-0526).

Furthermore, the Complainants are the proprietors of various domain name registrations including their AMAN Marks, inter alia <amanhotels.com>, <amanhotel.com> and <aman.com>.

The disputed domain name was first registered on February 27, 2009 and points to the Complainants` website at "www.amanresorts.com".

5. Parties` Contentions

A. Complainant

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the AMAN Marks because it comprises the Complainants` registered AMAN Marks followed by the descriptive words "hotel" and "group" which do not distinguish the domain name from the Complainants` marks.

(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainants contend that they have not licensed or otherwise permitted the Respondent to use the AMAN Marks or to register the disputed domain name, that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

(3) The Complainants finally claim that the domain name was registered and is being used in bad faith. The Complainants state that the Respondent`s registered name "Birgit Schaad" is an alias for "Michael Hacker" who is using the disputed domain name for criminal activities, i.e. to host a personal email address of Michael Hacker, who sent out a forged letter in the name of the Complainants` chairman appointing himself as the Managing Director / Chairman of the Complainants as well as a letter soliciting financial donations from the public for Sri Lankan war victims, naming the Complainants as a partner in this transaction. The fact that the disputed domain name resolves to the Complainants` official website is supposed to further enhance the impression that Michael Hacker is an authorized representative of the Complainants. The Complainants contend that the Respondent`s failure to respond to the Complainants` demand letter is additional evidence of bad faith. Finally, the Complainants state that if the Respondent`s use of the disputed domain name was found to be passive holding, such passive holding would equal active use in the present case.

B. Respondent

The Respondent did not reply to the Complainants` contentions.

6. Discussion and Findings

The Complainants both belong to the AMAN group of companies and may therefore constitute a single entity for the purposes of the UDRP (cf. L`Oréal S.A. and LancГґme Parfums et Beauté et Compagnie v. MyFashionFiesta.com LLC, Will Turnage, WIPO Case No. D2009-0729; L`Oréal, Helena Rubinstein, LancГґme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; LancГґme Parfums et Beauté & Cie, L`Oréal v. 10 Selling, WIPO Case No. D2008-0226). The Panel will therefore hereinafter refer to the Complainants as "the Complainant".

The second point to be dealt with is the language of the present proceeding. The registration agreement, under which the disputed domain name was registered, is in German. However, the Complaint was filed in English and the Complainant requested the Panel to accept the submission in English, contending that the Respondent is familiar with the English language. It is consensus view that in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can be the language of the complaint, even if it is different to the language of the registration agreement (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; L`Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In view of the Complainant`s submissions and the circumstances of the case, the Panel decides that English is acceptable as language of the present administrative proceeding, as the Respondent in all likelihood is able to understand English. Even if the Respondent should not be able to conduct this proceeding in English, he received all communications from the Center in German language, too, and therefore had every opportunity to object.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant`s trade mark; 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant`s highly distinctive and well-known AMAN Marks in which the Complainant has rights.

The mere addition of the generic words "hotel" and "group" following the trademark does not eliminate the similarity between the Complainant`s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as "hotel" or "group" (cf. Dockwise Ltd. v. Inda l. Marshall, WIPO Case No. D2009-1235; Burberry Limited v. Domain Admin, WIPO Case No. D2009-0703).

Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant`s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent cannot have any legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use the AMAN Marks or to apply for the disputed domain name, as the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and as the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the respondent`s website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).

The Complainant is well-known internationally and has been carrying on business activities under the AMAN Marks for more than two decades. Given the high distinctiveness of the AMAN Marks in connection with the Complainant`s services, it is inconceivable that the Respondent registered the disputed domain name which consists of the Complainant`s AMAN Marks and the words "hotel" and "group" without knowledge of the Complainant`s rights in the AMAN Marks. This finding is supported by the fact that the disputed domain name points to the Complainant`s website at "www.amanresorts.com". The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant`s marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.

As the domain name is not actively used by the Respondent but merely points to the Complainant`s website, the Panel has to decide whether or not the Respondent`s (non-) use of the disputed domain name is to be considered as bad faith use under the Policy.

It is consensus view that the lack of active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

In the present case the Respondent neither replied to the Complainant`s demand letter nor to the Complaint and therefore failed to provide evidence of any actual or contemplated good faith use. On the other hand, the Complainant provided evidence that its trademarks are used internationally, inter alia in the country where the Respondent is domiciled, and are well-known. Furthermore, the domain name fully incorporates the Complainant`s highly distinctive AMAN mark by merely adding the generic words "hotel" and "group", giving the false impression that the Complainant, who operates numerous luxury resort hotels around the world, owns the disputed domain name and therefore is a name Internet users might falsely enter when searching for the Complainant`s services or website.

In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the domain name has not yet been actively used, the Respondent`s non-use of the domain name equals to use in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 name <amanhotelgroup.com> be transferred to the Complainant, Amanresorts International Pte Ltd.


Brigitte Joppich
Sole Panelist

Dated: November 26, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-1310.html

 

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