WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Trademarks Holding LLC, Grand Heritage Hotel Group v. CopperLeaf Technologies, Madhu Sudhanan Case No. D2010-0673 1. The Parties
The Complainants are Trademarks Holding LLC and Grand Heritage Hotel Group of Annapolis, Maryland, United States of America, represented by ALG India Law Offices, India.
The Respondent is CopperLeaf Technologies, Madhu Sudhanan of Peediyak, Cochin, Kerala, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Net 4 India Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2010. On April 28, 2010, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name. On May 1, 2010, Net 4 India Limited 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 May 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2010.
The Center appointed Adam Samuel as the sole panelist in this matter on May 31, 2010. 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 First Complainant is a management affiliate of the Second Complainant. The Second Complainant owns and operates hotels and resorts. The First Complainant is the owner of the United States trademark No. 1997991, registered on September 3, 1996 and the Indian trademark No. 1461973, both for GRAND HERITAGE. The disputed domain name was registered on April 18, 2009. The Respondent appears to be an individual, trading under the name, Copper Leaf Technologies. 5. Parties' Contentions A. Complainants
This section sets out the Complainants' contentions with which the Panel may or may not agree.
The disputed domain name fully incorporates and is confusingly similar to the trademark, GRAND HERITAGE, registered in favour of the First Complainant.
The Second Complainant has also owned the domain name, , since September 21, 1995; since October 1, 2001 and since October 1, 2001. An active common website displaying the GRAND HERITAGE trade mark has been hosted at these domain names since 1995.
The addition of a prefix before the mark GRAND HERITAGE is an insubstantial difference. The prefix “de” is not a distinctive word by itself and is an ordinary generic prefix and does not render the disputed domain name distinctive and substantially different from the mark. The addition of the prefix does not eliminate recognition of the GRAND HERITAGE portion of the disputed domain name.
GRAND HERITAGE is an invented mark with high degree of inherent distinctiveness reinforced by widespread international use. The word “de” exploits the trademark signification of GRAND HERITAGE as an indication of origin as consumers will understand the disputed domain name to offer the Complainants' services. The prefix “de” does nothing to dispel but serves only to reinforce the connection in the public mind between the word GRAND HERITAGE and the Complainants, and therefore increases the risk of confusion.
The website hosted at the disputed domain name solicits business with regard to a hotel property. The website indicates that the hotel property is owned by “Amrutha Park Inn Private Limited”, itself incorporated only in July 18, 2005. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services.
The use of the expression bona fide is sufficient to prevent a respondent who knowingly adopted another's well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute. Owing to its worldwide registration and a long standing in the market, GRAND HERITAGE is a very famous and a well-known mark and Respondent is further precluded from claiming a right or legitimate interest in the disputed domain name by the fact that he had constructive notice of the GRAND HERITAGE mark before any use or demonstrable preparation to use the disputed domain name in connection with bona fide offering of goods or services.
The website hosted at the disputed domain name says that the owner – Amrutha Park Inn Private Ltd. ― of the hotel property has more than three decades of experience in the industry and it is quite unlikely that it adopted the DE GRAND HERITAGE mark in good faith. Three decades of experience of the hotel owner further shows that at all times it was aware of the existence of GRAND HERITAGE hotel and it adopted the name De Grand Heritage so as to capitalize on the goodwill associated with the mark GRAND HERITAGE. The use of a mark, like this, which intentionally trades on the fame of another, cannot constitute a bona fide offering of goods or services.
The Complainants have not licensed or otherwise permitted the Respondent to use its trademark GRAND HERITAGE or to apply for or use any domain name incorporating any of those marks. There has not been any past dealing between the Complainants and the Respondent permitting any kind of use of the mark GRAND HERITAGE. The Respondent has not acquired trademark or service mark rights in the disputed domain name.
There is no other plausible explanation as to why Respondent chose the mark DE GRAND HERITAGE for its hotel, other than the fact that it wanted to trade upon the goodwill of the Complainant. Such use trades on the fame of the Complainant and in no circumstances, can constitute a bona fide offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. It is evident that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods; instead, use by the Respondent is fraudulent.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and its sole intent behind use of the disputed domain name is to make unlawful commercial gains by fraudulently and dishonestly misappropriating the goodwill, reputation and brand value of the Complainants' mark, GRAND HERITAGE. The website hosted at the disputed domain name is commercial in nature, where a user can manage its reservations at the hotel and the website provides information about their promotional rates/packages, availability of rooms etc.; which sufficiently establishes commercial nature of the use of the disputed domain name. The Respondent is using the disputed domain name in connection with its profit making hotel and therefore, this use cannot be termed non-commercial. Also, it is using the disputed domain name in such a way that tarnishes and dilutes the brand value of the Complainants' mark GRAND HERITAGE, which makes the use unfair.
It is evident from the website to which disputed domain name resolves that the Respondent registered the disputed domain name for the sole purpose of renting/licensing it to a third party (Amrutha Park Inn Private Limited). Therefore, bad faith registration and use is self evident. Bad faith is implicit in the registration of the disputed domain name. The Respondent registered the disputed domain name on April 18, 2009, by which time the Complainants had been trading under the GRAND HERITAGE mark for almost 20 years; therefore constructive knowledge has to be attributed to the Respondent. The Respondent does not have any trade mark rights or otherwise in the mark GRAND HERITAGE and there is no legitimate reason for the Respondent to create a confusingly similar domain name. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name featuring the Complainant's famous GRAND HERITAGE mark. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's trade mark GRAND HERITAGE at the time it registered the disputed domain name. In such a case, the inference should be drawn therefore that in some way the Respondent planned to capitalize on the reputation of the Complainant; which indicates bad faith on the part of the Respondent.
The Respondent knew at the time of registering the disputed domain name that if it were to create a website at the disputed domain name, there was a strong likelihood that it would be able to attract Internet users for commercial gain, by creating a likelihood of confusion in the Complainants' mark. The Respondent, at the website hosted at is using the prefix “de” in a much smaller font as compared to GRAND HERITAGE so as to make it look like GRAND HERITAGE before the consumers. This shows that the Respondent deliberately copied and is using the Complainants' GRAND HERITAGE mark using a smaller font for the prefix DE, which further shows bad faith.
Bad faith is evident since (1) disputed domain names incorporates the Complainants' well-known trade mark (2) the website hosted at the disputed domain name provides hotel services and the Complainants are also into hotel service (3) the Respondent does not have any statutory or common law rights in the mark GRAND HERITAGE (4) the Respondent is/has never been known by the disputed domain name. The Respondent has registered the disputed domain name solely for expropriating the goodwill and brand image of the Complainants' trade mark by entering into a commercial agreement (renting/license) with a competitor of the Complainants viz. Amrutha Park Inn Private Limited. Bad faith registration is evident when the Respondent has made no use of the disputed domain name other of having some kind of arrangement of renting/licensing with Amrutha Park Inn Private Limited.
In the absence of any trademark rights (statutory as well as common law) in either GRAND HERITAGE or DE GRAND HERITAGE, bad faith while registering the disputed domain name is evident. If Amrutha Park Inn Private Limited claims to be the actual owner of the disputed domain name, bad faith finding is inevitable as it provided the registrar with the incorrect information regarding the actual registrant. The Respondent's blatant disregard for the fact that the disputed domain name infringes upon the trademark rights of another is itself evidence of bad faith in the registration and use of the disputed domain name. The disputed domain name is so obviously connected with the Complainant and its brand name and its very use by someone with no connection with the Complainant suggests opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainants must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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. A. Identical or Confusingly Similar
The First Complainant owns the trademark GRAND HERITAGE in the United States and India. The disputed domain name consists of this name, the necessary addition of the suffix “.com” and the letters “de”. “De” is used in certain parts of the English-speaking world as slang for “the”. It is also the French word “of”. Otherwise, it has no independent meaning that could be relevant in this context. The addition of “de” at the start of the disputed domain name does not detract from the meaning of that name which is essentially the First Complainant's trademark. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the First Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not called “De Grand Heritage” or anything similar and does not appear to trade under that or any related name. The website, to which the disputed domain name resolves, appears to be used to market a hotel called “De Grand Heritage”. However, the owner given on the website to which the disputed domain name resolves is not the Respondent but Amrutha Park Inn Private Limited, a company that claims to have three decades experience of running hotels. It is apparent from the small font in which “de” appears on the website that whoever designed the website was aware of the Complainant's trademark.
There is no evidence that either of the Complainants has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response in spite of notification of the Complaint in accordance with the Rules, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In the absence of a response to this complaint, it is difficult to know why the Respondent registered the disputed domain name which appears to bear no relationship to his name or that of his business. The Complainants have alleged that either the Respondent and the owner of the hotel advertised on the website to which the disputed domain name resolves, Amrutha Park Inn Private Limited, are the same person or the Respondent has registered and developed the website for the hotel owner. Either way, the Complainant says that the Respondent knew of the Complainants' trademark and registered and designed the resulting website to infringe it and use it to divert business away from the Complainant to Amrutha Park Inn Private Limited, its asserted client. These allegations have not been contradicted by the Respondent.
The Respondent's business name appears as the developer of the website from the web-pages to which the domain name resolves. The Respondent appears to have been involved in the development and design of the website.
The disputed domain name has no real meaning since the word “de” has no independent meaning as such, except as indicated above. Its significance to whoever is really behind the content of the website is apparently minimal as can be seen from the way in which it appears in much smaller font than the First Complainant's trademark on the website to which the disputed domain name resolves. It appears that whoever was behind the design of the website to which the disputed domain name resolves knew of the Second Complainant's name.
The disputed domain name was registered after the Complainant's trademark was registered in India, the Respondent's home country and that of the hotel and business advertised by the website connected to the disputed domain name. Whoever is really behind the website, presumably Amrutha Park Inn Private Limited, must have a connection to the Respondent and operates in the same field as the Complainants and seems to know of the First Complainant's trademark. This would suggest that the Respondent was aware of the First Complainant's trademark when he registered the disputed domain name, presumably on Amrutha Park Inn Private Limited's instructions and developed it using the First Complainant's trademark.
In the absence of any response to the Complaint, the most likely explanation for the Respondent's registration of the disputed domain name seems to be, as the Complainants say, simply to disrupt the Second Complainant's relationship with its customers or potential customers and attempt to attract Internet users for potential gain. These constitute evidence of registration and use in bad faith: paragraph 4(b)(i) and (iii) of the Policy.
In the circumstances, it is unnecessary to deal with the Complainants' other allegations. For all the above reasons, the Panel concludes that the disputed domain name was on balance registered and is being used in bad faith. 7. Decision
The Complaint requests the Panel to transfer the disputed domain name to the Complainants without specifying which. The First Complainant owns the trademark registrations on which this Complaint was based. The Panel concludes that the First Complainant has proved its entitlement to receive the transfer of the disputed domain name.
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 First Complainant.
Adam Samuel
Sole Panelist
Dated: June 9, 2010
Full & Egal Universal Law Academy