Complainant is Serena Tourism Promotion Services S.A., Geneva, Switzerland, represented by E. Blum & Co., Switzerland.
Respondent is Gerald Wanga, Nairobi, Kenya. 2. The Domain Names and Registrar
The Disputed Domain Names , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 10, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On November 10, 2011 GoD, Inc. 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 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Response was filed with the Center on December 5, 2011.
The Center appointed Richard W. Page as the sole panelist in this matter on December 22, 2011. 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
Complainant is a globally established and internationally known hotel group known as “Serena Hotels” which has been operating hotels, lodges and resorts in Africa and Asia for numerous years and continuously expands it business activities. At present, Complainant operates hotels under the designation SERENA in Afghanistan, Kenya, Mozambique, Pakistan, Rwanda, Tajikistan, Tanzania and Uganda. Complainant’s hotel group contains several hotels which are members of the world’s leading hotels, two of which are located in Africa, namely the Nairobi Serena Hotel in Kenya and the Kampala Serena Hotel in Uganda.
Complainant is the owner of the well-established trademarks SERENA and “Serena (with Device),” (hereinafter the “SERENA Marks”) which have been registered and applied for in a large number of countries in the world since 1975, including since 1975 in Kenya.
Complainant is the registered holder of the domain names , and .
Complainant discovered the existence of the Disputed Domain Names in October 2011 and requested that Respondent transfer them. Respondent has refused to do so. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Names are confusingly similar to the SERENA Marks, because the Disputed Domain Names are characterized by the world element SERENA. The other word elements of the Disputed Domain Names are descriptive words and geographical indications which are nondistinctive.
Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. In addition, Complainant contends that Respondent has communicated with potential guests of the SERENA Hotels, taking payments for bookings which have never been paid over to Complainant.
Complainant argues that it is required only to make the allegations that Respondent has no rights or legitimate interests which it has done in its Complaint. Because this is a negative proposition, the burden of disproving the allegations switches to Respondent.
Complainant further contends that Respondent has registered and used the Disputed Domain Names in bad faith because Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s websites by creating a likelihood of confusion with the SERENA Marks. Complainant asserts that these facts satisfy the test in paragraph 4(b) establishing Respondent’s bad faith.
Complainant asserts that it has not granted any rights to use the trademark SERENA, or any other designation of Complainant, to Respondent, including the respective hotel names. B. Respondent
Respondent contends that he has a contract with Tourism Promotion Services (Kenya) Limited which owns the properties Mara Serena Lodge, Nairobi Serena Hotel and Serena Beach Hotel Mombasa.
Respondent further contends that he has made no claim of ownership to any of Complainant’s hotel properties. In addition, the prices quoted on Respondent’s website are truthful and based upon his contract with Tourism Promotion Services (Kenya) Limited. Respondent further states that Naady Travel Limited is a travel agency based in Nairobi. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to the SERENA Marks in which Complainant has rights; and
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii) that the Disputed Domain Names been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant alleges that it is the owner of the “SERENA Marks” which have been registered and applied for in a large number of countries in the world since 1975. Respondent has not contested that Complainant is the owner of the SERENA Marks. Therefore, the Panel finds that for purposes of this proceeding Complainant has enforceable trademark rights.
Complainant contends that the Disputed Domain Names are confusingly similar to the SERENA Marks, because the Disputed Domain Names are characterized by the word element SERENA. Complainant further contends that the other word elements of the Disputed Domain Names are descriptive words and geographical indications which are non-distinctive “mara”, “Nairobi”and “beachhotel”. Respondent has not contested that the Disputed Domain Names are confusingly similar to the SERENA Marks. Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the SERENA Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. In addition, Complainant contends that Respondent has communicated with potential guests of the SERENA Hotels, taking payments for bookings which have never been paid over to Complainant.
Complainant argues that it is required only to make the allegations that Respondent has no rights or legitimate interests which it has done in its Complaint. Because this is a negative proposition, the burden of disproving the allegations switches to Respondent.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Names. Once Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has alleged that Respondent has no rights to or legitimate interest in the Disputed Domain Names, thereby challenging each of the three factors set forth above. In addition, Complainant asserts that Respondent communicated with potential guests of the SERENA Hotels, taking payments for bookings which have never been paid over to Complainant. This allegation supports an inference that Respondent has made no bona fide offering of service and has sought commercial gain.
Respondent claims that it has permission from Tourism Promotion Services (Kenya) Limited to sell room nights in the hotels and by inference to advertise.
Complainant has denied that it has granted any permission to Respondent to use the SERENA Marks or any other designations of Complainant. The Panel finds that Respondent’s allegations are insufficient to show that Respondent has the right to use the SERENA Marks in domain names or otherwise. Therefore, the use of the Disputed Domain Names is not bona fide.
The Panel finds that Complainant has come forward with a sufficient showing that Respondent has no rights to or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant further contends that Respondent has registered and used the Disputed Domain Names in bad faith because Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s websites by creating a likelihood of confusion with the SERENA Marks. Complainant asserts that these facts satisfy the test in paragraph 4(b) establishing Respondent’s bad faith.
Respondent claims that it has permission to advertise and sell room nights in the hotels. The Panel finds that Respondent has made an insufficient showing of such permission. The Panel further finds that Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the SERENA Marks. Therefore, Complainant has met the requirements of paragraph 4(b)(iv) for showing bad faith pursuant to the Policy paragraph 4(a)(iii). 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 Disputed Domain Names , and be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: December 23, 2011
Full & Egal Universal Law Academy