WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Amanresorts Limited and Amanresorts International Pte Ltd v. Domain Admin c/o Dynadot Privacy Case No. D2008-1973 1. The Parties
The Complainants are Amanresorts Limited and Amanresorts International Pte Ltd, both of the Republic of Singapore (collectively, the “Complainant”).
The Respondent is Domain Admin c/o Dynadot Privacy of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2008 electronically and in hardcopy on December 29, 2008. On December 24, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on January 6, 2009, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2009, naming the Respondent as Domain Admin c/o Dynadot Privacy. 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”).
3.2 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 January 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 6, 2009.
3.3 The Complaint has been submitted in English.
3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on February 17, 2009. The Panel finds that it was properly constituted. It 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. 4. Factual Background
4.1 The Complainant has stated that it is the current owner and/or manages nineteen luxury resort hotels around the world, including the “Amankila” resort in Bali, Indonesia. The Complainant has also stated that it has used the trademark AMANKILA since the resort opened for business in 1992. It is said that the term “Amankila” is a fanciful, unique mark which was invented by the Complainant for use as a trademark.
4.2 The AMANKILA trademark has been registered by the Complainant as a trademark in various forms in various countries. The Complainant has annexed to its Complaint a list of the trademark registrations, which include the following (all of which appear to be simple word marks):
- Hong Kong, SAR of China: Registration for AMANKILA in classes 3, 16, 25, 42;
- Brunei Darussalam: Registration for AMANKILA in classes 3, 16, 42;
- the Republic of Indonesia: Registration for AMANKILA in classes 3, 16, 25;
- Malaysia: Registration for AMANKILA in classes 3, 16, 25.
The Complainant's counsel has claimed that the “Amankila” resort is very well-known to the public as well as to the travel industry and that it has been regularly featured in leading travel and leisure magazines throughout the world and has won numerous awards and accolades through the years. The Complainant has annexed to its Complaint a list of the clippings of the travel and leisure magazines which do show the “Amankila” resort. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) The disputed domain name reproduces the trademark AMANKILA in the disputed domain name The trademark AMANKILA is clearly identifiable in the disputed domain name and the mere adjunction of the descriptive term “hotel” does not serve to distinguish in any way the Domain Name from the Complainant's registered trademark. The Complainant submitted that since the word “hotel” is a generic descriptive term, the Panel ought to adopt similar reasoning as in previous UDRP decisions such as Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700. In the said decision of Lucasfilm Ltd., the panel held that the addition of generic descriptive words such as “pictures” and “sounds” to the trademark STAR WARS in the domain names did not serve to distinguish the domain names.
(ii) The Complainant further submitted that the mere adjunction of the suffix “.com” in the Domain Name has no legal significance and is not a distinguishing feature.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:
(i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or apply for any domain names incorporating the trademark;
(ii) the Domain Name bears no resemblance to the Respondent's name or business;
(iii) the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Domain Name resolves to a domain parking web page operated by SEDO and the web page contains sponsored links to websites featuring other hotels in Bali, including those belonging to the Complainant's competitors.
(ii) The Complainant had on November 13, 2008 sent a cease and desist letter to the Respondent using the limited contact particulars in the WhoIs search available then and that no response was received by the Respondent.
(iii) The Complainant had again on November 20, 2008 sent a further cease and desist letter to the Respondent using updated particulars in the WhoIs search available and that no response was received by the Respondent.
(iv) The Respondent's passive holding of the Domain Name that resolves to a Sedo web page containing sponsored links constitutes bad faith.
The Complainant requests a decision that the Domain Name be transferred to the Complainant, Amanresorts International Pte Ltd. B. Respondent
5.4 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith.
6.5 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., WIPO Case No. D2006-0808). A. Identical or Confusingly Similar
6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.7 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name's use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.8 The Complainant has appended to the Complaint a list of registered trademarks that incorporate the term “Amankila”. It is quite clear that the Complainant is the owner of a number of trademarks in various jurisdictions that simply comprise the word “Amankila”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the gTLD “.com” is not a distinguishing feature and does not have an impact on the confusing similarity analysis.
6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.10 At the heart of the Complaint is the Complainant's contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website, where it offers the same or similar services as those offered by the Complainant. In this case, the Respondent has resolved to a domain parking web page which contains sponsored links to websites featuring the Complainant's competitor hotels in Bali. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the Domain Name.
6.11 According to paragraph 4(a) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
6.13 As another panel had held in the case of Owens Corning v. NA,WIPO Case No. D2007-1143, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant's mark.
6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.16 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name in the knowledge of the Complainant's business and its use of the AMANKILA trademark. This is inherently probable given the fact that the Complainant has demonstrated its widespread usage of the AMANKILA trademark as being used for its hotel resorts in international travel magazines. In addition, the Singapore High Court decision of Amanresorts Limited and Another v Novelty Pte Ltd [2007] SGHC 201 has also clearly indicated that “Amankila” and the other “Aman” prefixed names used by the Complainant have acquired sufficient goodwill and reputation to qualify as “well-known trademarks” under the Paris Convention.
6.17 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with a view to diverting Internet users with an interest in Amankila hotels to its website for its own commercial gain.
6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source of a website.
6.19 Given that the Respondent has failed to show (for the reasons set out under the heading 6.B Rights and Legitimate Interests above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add two further points before drawing this decision to a close.
6.21 First, the recent use by the Respondent of the Domain Name in connection with a domain parking service appears to provide yet further evidence of bad faith use in this case (see Carrefour v Iwana, WIPO Case No. D2007-1522). The Complainant has also cited the case of General Growth Properties Inc. v. Baker Ballantine,WIPO Case No. D2005-0919 wherein the respondent in that case had similarly resolved to a domain parking web page which created a portal with sponsored links to commercial websites. The Panel agrees with the Complainant's conclusion on this aspect of the present case that the recent use of the Domain Name by the Respondent provides similar evidence of bad faith.
6.22 The Complainant has contended that the Respondent's failure to reveal the true identity of the registrant of the Domain Name is indicative of bad faith. In this context, the Complainant cites Osuuspankkikeskus Osk v. R,WIPO Case No. D2006-0461 to support its conclusions. In view of the facts of the case, the Panel accepts these submissions of the Complainant.
6.23 Finally, in coming to its decision the Panel has given very little weight to the Complainant's contention that the failure on the part of the Respondent to respond to its “cease and desist letter” is also evidence of bad faith. The Panel accepts that the decision of the panel in Velcro USA Inc. & Anor v. Domain Master, Kentech Inc.,WIPO Case No. D2006-0653 suggests that this was one of a number of factors that could be taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. See Deutsche Post AG v. Yonghua Zhang,WIPO Case No. D2008-0326.
6.24 Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to a “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. Although this has been done by the Complainant in a letter dated November 20, 2008, the failure to respond to the cease and desist letter is not by itself conclusive of bad faith registration and use of the domain name for the reasons give earlier above. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith for other reasons. 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, Amanresorts International Pte Ltd.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: March 9, 2009
Full & Egal Universal Law Academy