WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Amanresorts Limited and Amanresorts International Pte Ltd. v. Will Watson Case No. D2009-1513 1. The Parties
The Complainants are Amanresorts Limited of Singapore and Amanresorts International Pte Ltd of Singapore, internally represented.
The Respondent is Will Watson of 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 November 9, 2009. On November 10, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 11, 2009, 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” 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2009.
The Center appointed Adam Taylor as the sole panelist in this matter on December 4, 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 the Rules, paragraph 7. 4. Factual Background
The Complainants are part of the Amanresorts group of companies.
Amanresorts International Pte Ltd is the main trading company of the group, which currently owns and/or manages more than twenty luxury resort hotels around the world, including the Amanpuri resort and spa in Phuket, Thailand, opened in 1988. The name “Amanpuri” was coined from the Sanskrit words “Puri” and “Aman” meaning “place” and “peace” respectively.
The Amanpuri resort and spa has been featured in magazines and newspapers worldwide including The South China Morning Post, Conde Nast Traveller, Vogue and Elle and it has won a range of industry awards. For example, in 2006 Amanpuri” was awarded “No. 1 Best Spa Worldwide” in the Gallivanter's Guide (UK) and Virtuoso (an American network of high-end travel agencies) named Amanpuri as its “2008 Hotel of the Year” in its “Best of the Best” Awards.
Amanresorts International Pte Ltd owns a number of domain names for “Amanpuri” including .
Amanresorts Limited owns the following registrations for the trademark “AMANPURI”:
(a) Brunei: Registration no. 16,234 dated December 22, 1988 in class 16 (stylized word)
(b) Brunei: Registration no. 33,415 dated September 6, 2000 in class 42 (word)
(c) Hong Kong: Registration no. 3790 of 1989 dated September 14, 1988, in class 16 (word)
(d) Hong Kong: Registration no. 3232 of 1994 dated March 2, 1992, in class 39 (word)
(e) Hong Kong: Registration no. 3233 of 1994 dated March 2, 1992, in class 42 (word)
(f) Hong Kong: Registration no. 6882 of 1994 dated March 2, 1992, in class 41 (word)
(g) Thailand: Registration no. SM2568 dated April 24, 1992, in class 35 (word)
(h) Thailand: Registration no. SM3160 dated April 24, 1992, in class 39 (word)
(i) Thailand: Registration no. SM3159 dated April 24, 1992, in class 41 (word)
(i) Thailand: Registration no. SM3194 dated April 24, 1992, in class 42 (word)
For ease of reference, both Complainants will hereinafter be referred to as “the
Complainant”.
The Respondent registered the disputed domain name on September 14, 2009.
On October 5, 2009, the Complainant sent a cease and desist letter to the Respondent. No response was received.
As of October 20, 2009, the disputed domain name resolved to a one page website branded “Discover Amanpuri Luxury Resort” comprising a picture of the Complainant's Amanpuri resort together with a short description of the resort and an undeveloped search function. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The term “Amanpuri” is a fanciful, unique mark which was invented by the Complainant for use as a trademark. Due to the Complainant's extensive use and promotion of the trademark for more than twenty years, the Complainant has acquired tremendous goodwill and reputation in the mark, which is now well-known throughout the world.
The disputed domain name is identical or confusingly similar to the Complainant's trade mark as the descriptive terms “luxury” and “resort” do not serve to differentiate the disputed domain name from the mark. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
(a) the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or apply for any domain names incorporating the trade mark;
(b) the Respondent is not using the disputed domain name in a bona fide offering of goods or services;
(c) the Respondent is not commonly known by the disputed domain name; and
(d) the Respondent is not making a legitimate noncommercial or fair use of the Respondent's disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Use of the disputed domain name in relation to the Complainant's goods / services does not constitute a bona fide offering of goods / services.
While the disputed domain name does not appear to be used to obtain any commercial benefit (although as the disputed domain name has just been registered, the Respondent may have plans to gain commercially by developing the search function further), the Respondent's use of the disputed domain name is, in any case, not legitimate. Registered and Used in Bad Faith
The facts of this case do not fall within the illustrations of “bad faith” described in paragraphs 4(b)(i) to (iv) of the Policy. However, paragraph 4(b) of the Policy is stated expressly to be a non exhaustive list of examples of bad faith.
The Respondent has clearly registered and used the disputed domain name in bad faith.
The Respondent has registered the disputed domain name with actual knowledge of the Complainant's trademark. This is evident from the fact that the disputed domain name resolves to a website featuring the Complainant's resort in Phuket, Thailand. This fact, coupled with the close identity between the disputed domain name and the Complainant's registered mark, leads to the conclusion that there are no plausible circumstances in which the Respondent could legitimately use the disputed domain name. The Respondent is acting in opportunistic bad faith.
Other factors alone or in combination can support a finding of bad faith including actual or constructive knowledge, failure to respond to requests to transfer; and use of the entire mark without plausible good faith use. These factors apply here. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the name AMANPURI by virtue of its registered trademarks referred to above as well as common law rights derived from extensive use of that distinctive mark over a period of some 20 years.
The disputed domain name consists of the Complainant's trademark combined with the descriptive terms “luxury” and “resort”, separated by hyphens. Those descriptive terms are insufficient to differentiate the domain name from the trademark; on the contrary they enhance the connection – and the likelihood of confusion – because the terms are directly referable to the Complainant's business.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The Panel therefore finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any offering of goods or services at the website of the disputed domain name, let alone a bona fide offering. All that appears on the site is a short description of the Complainant's resort.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant concedes that the facts of this case do not fall within the illustrations of “bad faith” described in paragraphs 4(b)(i) to (iv) but correctly points out that those factors are non exhaustive examples of bad faith.
The Panel notes the following factors:
First, it is obvious that the Respondent registered the disputed domain name with the Complainant's trademark in mind. The domain name is referable only to the Complainant's resort and is being used specifically to provide a description of the resort.
Second, while it is not evident that the disputed domain name has thus far been used for a commercial purpose, it is still difficult to see what plausible genuine use could be made of it. The Respondent's use of the disputed domain name, effectively the name of the Complainant's resort, in conjunction with a website, similarly branded “Amanpuri Luxury Resort”, with a picture of the resort plus a glowing description (e.g., “If there is a perfect illustration of peace, it would most probably be Amanpuri in Phuket, Thailand”), suggests that the Respondent has set out to impersonate the Complainant. Whatever the reason for this, it is unlikely to be a legitimate one.
Third, the Respondent has not denied the Complainant's assertions by responding to the Complainant's cease and desist letter or to the Complaint in this proceeding. If the Respondent did have a genuine reason for registering the disputed domain name, it would surely have come forward to explain it.
Taking the above matters together, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith. The Complainant has established the third element 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 be transferred to the Complainant Amanresorts International Pte Ltd.
Adam Taylor
Sole Panelist
Dated: December 18, 2009
Full & Egal Universal Law Academy