The Complainant is Mövenpick Holding AG of Cham, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondents are Robin King of Shanghai, China and Domain Discreet of New York City, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2011. On December 6, 2011, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On December 7, 2011, R transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On December 8, 2011, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant amended the Complaint on December 13, 2011.
The Center verified that the Complaint, together with the amended 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 Respondents of the Complaint, and the proceedings commenced on December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. Respondents Robin King/ Domain Discreet did not submit any response. Accordingly, the Center notified the Respondents’ default on January 5, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 19, 2012. 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
According to the R Whois database, the disputed domain name was registered on June 24, 2011. It was registered via Domain Discreet, a privacy shield service provider. After the filing of the Complaint, Complainant amended it to take the person behind the registration into account. Both Domain Discreet and Robin King are Respondents in this file.
The disputed domain name currently resolves to a parking page offering several links to different web sites.
Complainant is the holder of various trademark registrations MÖVENPICK, MÖVENPICK - FRUCHT DES JAHRES and MÖVENPICK - PICK THE BEST noticeably in China and in the United States of America, covering in particular services in class 43. 5. Parties’ Contentions A. Complainant
First, Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trademark MÖVENPICK, MÖVENPICK - FRUCHT DES JAHRES and MÖVENPICK - PICK THE BEST. Complainant further argues that the addition of the city name Shanghai does not prevent a finding of confusing similarity.
Second, Complainant alleges that Respondents have no right or legitimate interest in the disputed domain name. Complainant claims that Respondents’ names do not correspond to the domain name, that they have not been authorized to use the trademark MÖVENPICK as a domain name and that they use the disputed domain name in connection to a pay per click website.
Third, Complainant contends that the disputed domain name was registered and is being used in bad faith due to the reputation of the trademark MÖVENPICK. Among other things, Complainant claims that Respondents could not have ignored the trademark MÖVENPICK when registering the domain name. Furthermore, the fact that the disputed domain name has the same structure as Complainant’s other domain names (MÖVENPICK + location of the hotel) demonstrates that Respondents are well aware of Complainant’s business. Last, using the disputed domain name to direct towards a pay-per-click-website relating to hotels is evidence of bad faith use. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that Complainant has established its registered trademark rights in MÖVENPICK as evidenced by the trademark registrations submitted with the Complaint.
The Panel accepts that the disputed domain name is confusingly similar to Complainant’s MÖVENPICK trademark. The disputed domain name incorporates the term “moevenpick” in full, which provides the dominant element of the disputed domain name. . The only difference is the replacement of the ö by “oe”. As mentioned by Complainant, “ö” and “oe” are phonetic equivalents and “ö” with the umlaut cannot be included in a gTLD domain name. Therefore, “mövenpick” and “moevenpick” can be deemed identical or at least highly similar. Moreover, previous UDRP decisions have often held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark (Allianz SE v. Antonio Porchia,WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com,WIPO Case No. D2009-1249).
The domain name further incorporates the city name Shanghai. In light of previous UDRP decisions, the use of a known mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark (Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768). Moreover, confusion is all the more likely to occur since the association of the trademark MÖVENPICK with the word Shanghai in the domain name is a copy of Complaint’s method to register its domain names. Indeed, Complainant usually registers domain names consisting of the trademark MÖVENPICK and the name of the city or region where the hotel is located.
Furthermore, the adjunction of “.com”, due to the current technical requirements of the domain name system should not be taken into account when evaluating the identity or similarity between the disputed domain name and Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828).
Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a)(ii) of the Policy requires Complainant to establish that Respondents lack rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Numerous prior UDRP decisions have established that once Complainant has made a prima facie case that Respondent lack legitimate interest or right, the burden of production shifts to Respondent to rebut such prima facie case (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
Firstly, the Panel believes from the record that there is no relationship between Respondents and Complainant and that Respondents are neither licensees of Complainant nor have they otherwise obtained an authorization to use Complainant’s trademark.
Secondly, the Panel considers that the fact that the disputed domain name directs towards a parking page displaying sponsored links does not constitute a bona fide offering of goods. Therefore, it is an indication that Respondents lack of rights or legitimate interests (National Bedding Company L.L.C. v. Back To Bed, Inc.,WIPO Case No. D2010-0106 and LEGO Juris A/S v. J.h.Ryu,WIPO Case No. D2010-1156).
Finally, there is no evidence that Respondents are making any legitimate noncommercial or fair use of the Disputed Domain Name.
Taking all of these elements into consideration, the Panel finds that Respondents have registered and used Complainant’s trademark with the sole intention of exploiting the reputation of Complainant’s MÖVENPICK trademark. Therefore, Respondents is deriving advantage from Internet users’ confusion. The Panel accepts that such behavior does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
In the present case, the Panel finds that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interests with respect to the disputed domain name. The Panel’s opinion is further corroborated by the lack of a Response by Respondents in these proceedings as well as the Panel’s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that Respondent has registered or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above. 1. Registration in bad faith
The Panel considers that it is unlikely that Respondents were unaware of Complainant’s trademark when it registered the disputed domain name. Firstly, according to Complainant, the MÖVENPICK trademark has been used in 25 countries. Therefore, the trademark itself seems to have acquired worldwide recognition in its class of products and services. Secondly, a simple and easy search of the term “mövenpick” with a search engine further shows the trademark’s degree of exposure to the public and, accordingly, to Respondents.
In previous UDRP decisions, panels have considered that in certain circumstances when a complainant’s trademark is known, Respondents’ bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of Complainant’s marks, such that Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto”).
Moreover, a trademark search would have revealed the existence of Complainant’s prior trademark rights. Respondents failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226).
In addition, the association of the trademark MÖVENPICK with the word Shanghai in the disputed domain name has obviously been done with Complainant in mind. Indeed, the latter usually registers domain names consisting of the trademark MÖVENPICK and the name of the city or region where the hotel is located.
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by Respondents.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith. 2. Use in bad faith
As previously indicated, Respondents were likely aware of the existence of Complainant’s trademark MÖVENPICK. In light of this knowledge, Respondents used the disputed domain name as a “pay-per-click portal site” or “parking page”. In Mpire Corporation v. Michael Frey, supra, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” In the present case, the Panel finds that Respondents are using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
The Panel accepts that the MÖVENPICK trademark is known worldwide. As such, the use of the domain name to post pay-per-click links based on the trademark value of the disputed domain name is clearly indicative of Respondent’s bad faith.
Finally, by using the disputed domain name, Respondents are not only preventing Complainant from further use of the domain name, but it is also intentionally attempting to attract Internet users expecting to reach the web site dedicated to the MÖVENPICK hotel in Shanghai.
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: February 2, 2012
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