WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Companhia Hotéis Palace S.A. v. David Webb Case No. D2008-1314 1. The Parties
The Complainant is Companhia Hotéis Palace S.A, of Rio de Janiero, Brazil, represented by SEQ Legal LLP, of the United Kingdom.
The Respondent is David Webb, of Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On August 29, 2008, 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 Domain Name. The Center verified that the Complaint together with the amendment to 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 15, 2008. 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 view of the fact that the Respondent did not file a Response, the Panel has checked to ensure that the Center has discharged its responsibility under paragraph 2(a) of the Rules to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so. The courier delivery of the Complaint appears to have been effected successfully, and there has been no notification of any failure of the email transmission of the Complaint to the Respondent. 4. Factual Background
The following facts are taken from the uncontested statements in the Complaint. The Complainant and its Trade Marks
The Complainant is the owner of a luxury hotel in Rio de Janiero, Brazil. The hotel was built between 1919 and 1923, and has been continuously operated under the COPACABANA PALACE trade mark since its opening in 1923. The hotel is one of the best known landmarks of the city of Rio de Janiero, and is well known around the world (not least because Fred Astaire and Ginger Rogers danced at the hotel in the movie “Flying Down to Rio”).
The Complainant purchased the hotel in 1989, and has operated the hotel under the same name (“Copacabana Palace”) since that date.
The Complainant has spent considerable sums of money marketing the hotel – the Complainant's total sales and marketing spending in 2006 was US $1,247,000, and in 2007, it was $1,975,000.
The Complainant has run a Google search on the expression “Copacabana Palace”. The first ten results referred to the Complainant's hotel.
The Complainant owns the following registered trade marks:
(i) The word mark COPACABANA PLACE, with effect from November 17, 1992.
(ii) A device mark incorporating the words “Copacabana Palace”, registered in Brazil with effect from November 1993.
The trade mark registrations just referred to cover passenger transportation, travel and tourism services in class 38.30, hotel services in class 38.50, and food services in class 30.60.
The Complainant owns the Domain Name . The Complainant's parent company, Orient-Express Limited, owns the domain names , , and . The Respondent and the Domain Name
According to a Whois search on the Domain Name, the Domain Name was originally registered on February 21, 1999.
However, historical searches conducted by the Complainant show that, as at January 2007, the registrant of the Domain Name was “Bestinfo”. Subsequent searches conducted by the complainant showed that, by April 7, 2007, the Respondent had become the registrant of the Domain Name.
The Complainant has produced two pages from the website at the Domain Name (“the Respondent's website”). The two pages appear to be typical landing pages, operating as little more than a platform for providing links to third party websites. There is one click-on link “Copacabana Palace Hotel Rio”, and links to various other hotels around the world, listed either by name or generically by city – e.g. “Bangkok Hotel”. There is also the usual group of click-on links one finds on sites of this sort, listed under a “Popular Categories” heading ( including links such as “finance”, “mortgage”, “car insurance”, and so on).
The Complainant has referred to previous panel decisions under the Policy involving the Respondent. In one such case, where the respondent was Bestinfo, the respondent was mentioned in the contact details for the disputed domain name (WIPO Case No. D2002-0543). In another case, where the respondent was “Goldmark”, the Respondent was again mentioned in the contact details for the disputed domain name (WIPO Case No. D2004-0827). Bestinfo and Goldmark have featured as respondents in a number of National Arbitration Forum decisions. Pre-commencement Communications between the Parties
The Complainant's web consultants wrote to the Respondent on April 9, 2008, asking if the Respondent would be interested in selling the Domain Name. The Respondent replied:
“We did not buy the name to sell, however, for a reasonable price we might sell the domain. If you want to submit a REASONABLE offer I will get with my partners and give you a reply within 48 hours. We do not price our names as we do not have any advertised for sale so we will reply to REASONABLE offers only.”
The Complainant made an offer of $5,000 on April 11, 2008. The Respondent responded:
“Last twelve (12) months the name had 3,972 unique visitors …”
After further prompting from the Complainant, the Respondent confirmed on April 14, 2008, that the offer of $5,000 was not sufficient. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Domain Name, discounting the suffix, is identical to the Complainant's COPACABANA PALACE mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) There is no evidence that the Respondent has used, or made demonstrable preparations to use, the Domain Name (or any corresponding domain name), in connection with a bona fide offering of goods or services.
(ii) There is no evidence that the Respondent is or has been commonly known by the Domain Name.
(iii) The COPACABANA PALACE mark is highly distinctive of the Complainant, and any use of the Domain Name by the Respondent would likely infringe the Complainant's registered and unregistered trade mark rights.
(iv) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
3. The Domain Name was registered and is being used in bad faith:
(i) Given the distinctiveness and fame of the Complainant's COPACABANA PALACE mark, the Respondent must have been aware of the mark when he acquired the Domain Name in early 2007.
(ii) There are circumstances indicating that the Domain Name was registered or acquired primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. The correspondence between the Complainant's web consultant and the Respondent in April 2008, clearly shows that the Respondent was looking for a sum well in excess of his out-of-pocket expenses.
(iii) The Domain Name was registered in order to prevent the Complainant from reflecting its mark in a corresponding Domain Name, and the Respondent has engaged in a pattern of such conduct.
(iv) The Respondent has intentionally used the Domain Name to attract users to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainant's mark. Many of the advertisements on the Respondent's website relate to hotels and tourism associated with Brazil, and it appears that the advertisements are automatically generated to be relevant to the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It has shown that it is the registered proprietor of the word mark COPACABANA PALACE in Brazil, and that mark is identical to the Domain Name (the “.com” suffix is not taken into account in the comparison). C Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the Complainant's mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent is or has been commonly known by the Domain Name.
That is sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name. The onus therefore shifts to the Respondent to produce plausible evidence that he does have such a right or legitimate interest in respect of the Domain Name.
The Respondent has not filed a Response, and has therefore failed to discharge that evidential onus. But quite apart from that default, there is nothing in the evidence which would suggest that the Respondent might have some right or legitimate interest in respect of the Domain Name. The Respondent is operating a typical landing page website at the Domain Name, no doubt deriving pay-per-click or other revenue proportionate to the number of visitors to the Respondent's website who click on any of the sponsored links to third party websites. The Respondent's website is not simply selling or promoting the Complainant's hotel – it is redirecting site visitors to numerous unrelated third party websites, many of which are concerned with hotels and the travel industry, and it is using the Complainant's mark (in the Domain Name) in order to attract to the Respondent's website, Internet users who are looking for sites owned by or associated with the Complainant. For the reasons set out in more detail in section 6D of this decision, the Panel is satisfied that the Respondent registered and has been using the Domain Name in bad faith. Such bad faith registration and use cannot be regarded as use “in connection with a bona fide offering of goods and services” (paragraph 4(c)(i) of the Policy), and nor can it be regarded as a legitimate non-commercial or fair use, under paragraph 4(c)(iii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location.
The Panel is also satisfied that the Complainant has proved this part of the Complaint. The Panel has come to that view for the following reasons:
1. The Domain Name is identical to the Complainant's mark, and the Respondent has no connection with the Complainant or its hotel. He has not been authorized to use the Complainant's mark.
2. The Panel is satisfied from the uncontested statements in the Complaint, that the Respondent acquired, and therefore “registered”, the Domain Name, in early 2007. The Copacabana beach area of Rio de Janiero is famous throughout the world, and the evidence sufficiently proves that the Complainant's hotel was widely known throughout Brazil and other parts of the world. When the Respondent acquired the Domain Name, it appears that he acquired it from an earlier registrant, “Bestinfo”, an entity with which he had earlier been associated. In the absence of any evidence to the contrary, the Panel infers that Bestinfo had been using the Domain Name in precisely the same way the Respondent has been using it, and that, when he acquired the Domain Name, the Respondent was aware of the links on the Respondent's website, including the link which specifically refers to the Complainant's hotel.
3. In the absence of any Response, the Panel concludes that the Respondent has been deliberately trading off the Complainant's goodwill in its COPACABANA PALACE mark, by attempting to attract to the Respondent's website, Internet users looking for websites belonging to or associated with the Complainant or its hotel. There is a link on the Respondent's website relating to the Complainant's hotel, but there are also numerous other links to third party websites of commercial entities having nothing to do with the Complainant, including some links to other operators within the hotel industry. Numerous panel decisions under the Policy have affirmed the view expressed by the panel in Oki Data Americas, Inc. v. ASD Inc.,WIPO Case No. D2001-0903, that use of a third party trade mark owner's trade mark in a domain name by a reseller of that third party's products, will only be regarded as a bona fide offering of the third party trade mark owner's products if certain conditions are satisfied. One of those conditions is that the reseller must use the relevant website to sell only the trade marked products; otherwise, the reseller could be using the trade mark to bait Internet users and then switch them to other goods. In the Panel's view, that is precisely what has been happening in this case: the Respondent has used the Complainant's mark to “bait” Internet users into visiting the Respondent's website. There, site visitors are then exposed to the numerous (revenue-generating) third party advertising links on the Respondent's website.
4. In summary, the circumstances fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's COPACABANA PALACE mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Having regard to the Panel's view on the application of paragraph 4(b)(iv) of the Policy, it is not necessary for the Panel to refer to the Complainant's submissions based on other subparagraphs of paragraph 4(b).
The Complainant having made out its case on all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant. 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.
Warwick Smith
Sole Panelist
Dated: October 29, 2008
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