WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amanresorts Limited, Amanresorts International Pte Ltd v. Scott B. Myer
Case No. D2007-1354
1. The Parties
The Complainants are Amanresorts Limited, Hong Kong, SAR of China and Amanresorts International PTE Ltd, Singapore (referred to below as “Complainant”) represented by Penny Leng, Singapore.
The Respondent is Scott B. Myer, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007. On September 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 18, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2007.
The Center appointed Christian Schalk as the sole panelist in this matter on October 31, 2007. 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 Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.
4. Factual Background
The Complainant owns and manages luxury resort hotels around the world, which are collectively marketed and promoted under the AMAN trademark. The Complainant’s first “Aman” – resort was opened in 1988. Individually, the resorts bear different “Aman” – prefixed names like, for instance, “Amanpuri”, “Amandari” or “Amanpulo”. However, as a group, the Complainant’s resorts are marketed and promoted under the umbrella trademark AMAN.
Since 1993, the resorts have been regularly featured in leading travel and leisure magazines like Vogue and Elite Traveller. The Complainant has won numerous awards in the past years for its chain of luxury hotels as well as its resorts.
Furthermore, the Complainant has also promoted and marketed its wide range of products and services under the AMAN umbrella trademark, for instance, “Aman Villas”, “Aman Boutique”, “Aman Albums” or “Aman News”.
The Complainant owns trademark registrations for the term “Aman” in the following jurisdictions: Australia, Barbados, Cuba, Czech Republic, France, India, Japan, Malysia, Morocco, Peru, Philippines, Turkey and in the United States of America. Furthermore, the Complaint owns trademark rights in the term AMANRESORTS in these jurisdictions as well as throughout the European Union.
The trademarks have been filed with the trademark offices of the countries mentioned above between 1996 and 2004.
The Complainant owns also a number of domain names, which include the term “Aman”, for example, , , , , , , , .
The Respondent registered the disputed domain name on January 23, 2007. When the Complainant discovered this fact, the domain name at issue resolved to a blank page containing the following words:
“Error. Page cannot displayed. Please contact service provider for more details.”
It appears from the material brought before the Panel, that the disputed domain name resolved to this blank page at least until August 21, 2007.
On July 9, 2007, the Complainant sent a cease and desist letter to the Respondent requesting the Respondent to transfer the disputed domain name. The Respondent did not respond to this letter.
On August 20, 2007, the Complainant emailed a scanned copy of the letter to the Respondent at his email address to which the Respondent did not send any reply.
On September 19, 2007, the day of notification of the Complaint to the Respondent, the disputed domain name resolved to a website which provided links, among others, to restaurants in Milan, Dublin, Northampton, to Halal- and Ethiopian Restaurants and to Jackson Hole Resorts.
The main headline on the top of the website is:
“A
find something interesting”
There are further headlines such as:
“Find what you’re looking for”, providing links to the above mentioned restaurants)”
and
“Popular Destination”, providing links, among others to the Jackson Hole Resorts.”
On September 19, 2007, the Center received also the following email from the Respondent:
“The complaint is unwarranted. The domain name is most likely wanted for use by the Complainant, otherwise their is no merit for the complaint. The domain referred to has never been actively used or advertised or implemented this domain into the public. Their is plans for it, but it is in conjunction with other similar domain names also owned by me. I see no complaints against my other domains.
I am a responsible person. To resolve the issue quickly, please ask the Complainant if they would like to purchase the domain name from me for a fair price and this matter can be terminated.”
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the domain name at issue is identical or confusingly similar with its AMAN – trademarks since it incorporates the Complainant’s famous AMAN – trademark in its entirety. Furthermore, it differs only from the Complainant’s trademark by the generic descriptive suffix “guide” and the addition of the gTLD “.com”.
The Complainant alleges further, that the Respondent has no rights and interests in the disputed domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain names incorporating the trademark.
The Complainant states furthermore, that the Respondent is not making a legitimate non-commercial or fair use of the Respondent’s domain name without intent for commercial gain.
The Complainant alleges moreover, that the disputed domain name has been registered and is being used in bad faith.
The Complainant bases its arguments on the fact that the domain name at issue resolves to the blank page containing an error message. Therefore, the Complainant believes that the Respondent holds passively on the domain name. In its eyes, such passive use may constitute bad faith since the Complainant has a well-known trademark, there was no response by the Respondent to the Complainant’s demand letter, and that it is impossible to conceive a good faith use of the domain name by the Respondent.
In this context, the Complainant cites Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613, to support its conclusions.
Furthermore, the Complainant believes that the Respondent, by registering the disputed domain name creates a likelihood of confusion with respect to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. Potential customers of the Complainant which try to locate the Complainant’s guide at the disputed domain name may become frustrated or draw adverse inferences concerning the status of the Complainant’s business, especially since the domain name at issue resolves to a blank page with an error message.
B. Respondent
Other than the e-mail to the Center of September 19, 2007 and an one line e-mail communication to the Center dated, October 19, 2007, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules).
Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The domain name holder 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 Complainant has established trademark rights in the term “aman”. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant’s trademarks.
However, the Panel finds the disputed domain name to be confusingly similar with the Complainant’s AMAN trademark. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Cases No. D2004-0565 and D2004-0624; Toyota France and Toyota Motor Corporation v. Computer Brain,WIPO Case No. D2002-0002.
Also in this case the mere addition of the word “guide” does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademark. Furthermore, the word “guide” is a generic English term which is frequently used in the field of tourism and travel business.
B. Rights or Legitimate Interests
According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue. The Complainant has also never granted the Respondent a license to use its trademark.
Furthermore, the fact that the contested domain name has been linked with a website which provides links to restaurants and hotels resorts and therewith to the Complainant’s competitors does not show a bona fide offering of goods and services.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark 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
(2) the Respondent has registered the domain name in order to prevent the owner of the trademark 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
(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) 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 its website or location of a product.
According to the material brought before the Panel and in the absence of a formal response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. Given the fact that reports on the Complainant’s hotels and resorts can be found in a variety of magazines during the past fourteen years, that the Complainant has won several awards and that it has a considerable presence in the Internet, the Panel finds that the Respondent was in all likelihood aware of the Complainant’s trademark when he registered the disputed domain name (see Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the domain name at issue in bad faith.
Furthermore, given the nature of the website developed by the Respondent even after he has been contacted by the Complainant, the only purpose of having registered the disputed domain name, was to divert traffic intended for the Complainant’s website to its own, and thus to take advantage of the Complainant’s trademark and its reputation. Moreover, it provides Internet users, seeking information on the Complainant’s services, access to goods and services of the Complainant’s competitors. The Complainant risks commercial losses by this way if Internet users register for other hotels they became aware of when visiting the website. Furthermore, the use of the Complainant’s trademark in such a way does also dilute its goodwill.
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 be transferred to the Complainant.
Christian Schalk
Sole Panelist
Dated: November 14, 2007
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