The Complainant is Swissôtel Management GmbH of Kloten, Switzerland, represented by E. Blum & Co. AG, Switzerland.
The Respondent is N/A of Moscow, Russian Federation; PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 21, 2012, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On March 26, 2012, DomainContext, Inc. 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. The Center sent an email communication to the Complainant on March 27, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 27, 2012. On April 4, 2012, the Center notified the parties regarding the following formal Complaint deficiency: absence of the submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”), paragraph 3(b)(xiii), thereby inviting the Complainant to submit and amendment to the Complaint. On April 12, 2012, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amended Complaint and amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2012.
The Center appointed Ladislav Jakl as the sole panelist in this matter on May 18, 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
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant is the owner of the International trademark swissôtel, Registration No. 652800, Cl. 42 of the Nice Classification, basic registration (Switzerland) on April 1, 1993; CTM swissôtel, Registration No. 002285567, Cl. 34, 41 and 42 of the Nice Classification, filling date July 4, 2001; Russian SWISSÔTEL KRASNYE HOLMY trademark, Registration No. 348032, Cl. 37 and 43 of the Nice Classification, priority date November 22, 2004.
The disputed domain name was registered on June 10, 2009.
The Complainant requests the Panel that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks SWISSÔTEL, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that the disputed domain name is identical to the above mentioned trademarks, which all consists of the word “swissotel”. The element “online” is descriptive and the element “swissotel” thus the distinctive element of the disputed domain name which is identical to the Complainant’s International and Community trademark SWISSÔTEL, as well as to the distinctive element “swissotel” of the Complainant’s Russian trademark SWISSÔTEL KRASNYE HOLMY.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent uses the disputed domain name to operate a website under “www.” which shows information on the Complainant’s hotel Swissôtel Krasnye Holmy in Moscow, including the “swissôtel logo” of the Complainant, as well as pictures and the hotel address of Complainant’s hotel Swissôtel Krasnye Holmy in Moscow. The Complainant further argues, that this website provides the possibility to book the Complainant’s hotel Swissôtel Krasnye Holmy online. However, the telephone number has been changed by the Respondent and connects the caller to Business Hotel Group instead of Swissôtel Krasnye Holmy. The Complainant has neither any business relationship with the Respondent nor with Business Hotel Group and gave no authorization to use the trademark SWISSÔTEL such that the Respondent or Business Hotel Group are not in a position to legitimately offer services under the mark SWISSÔTEL. Besides, it is also possible to book other hotels in Russia via the mentioned telephone number which have no relation or cooperation with the Complainant. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name, without the intent, for commercial gain, to mislead the consumers or to tarnish the Complainant’s trademark. Therefore, the Respondent is using the disputed domain name to attract Internet users seeking a website linked to the Complainant and to its mark SWISSÔTEL to the Respondent’s own website, without the Respondent being in a position to legitimately offer services under the mark SWISSÔTEL. In the end, the Complainant concludes that the Respondent had and has no legitimate interest in respect of the disputed domain name .
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent is aware of the business field and activities of the Complainant and trademark SWISSÔTEL as it is providing information on the Complainant’s hotel Swissôtel Krasnye Holmy on the website at the disputed domain name and thereby using the Complainant’s trademark, logo and pictures of the Complainant’s hotel. He uses the domain name to attract Internet users to a page offering the reservation and booking of hotel services of the Swissôtel Krasnye Holmy or any other hotel in Russia. This creates a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website “www.”. By using the disputed domain name for a hotel services reservation and booking page the Respondent intentionally attempts to attract for commercial gain, Internet users to its website “www.” which offers services in the main business field of the Complainant. It is the purpose of the Respondent to exploit the reputation of the Complainant’s mark SWISSÔTEL in this field in order to falsely lead consumers/Internet users to the Respondent’s website offering links in the field of hotel reservation and booking. In the end, the Complainant argues that a further indication of Respondent’s bad faith is that it uses the Complainant’s logo and hotel address as well as pictures of the original hotel but replaced the telephone number of the Swissôtel Krasnye Holmy by the Respondent’s own telephone number to divert consumers/Internet users to its business and is also offering reservation and booking services in other hotels that have no relation to or connection with the Complainant.
The Complainant requests the Panel to order that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Panel accepts the Complainant’s assertion that the disputed domain name is confusingly similar to the Complainant’s trademark SWISSÔTEL and that the element “online” is descriptive and that the element “swissotel” is thus the distinctive element of the disputed domain name, which is identical to the Complainant’s International and Community trademark SWISSÔTEL, as well as to the distinctive element “swissotel” of the Complainant’s Russian trademark SWISSÔTEL KRASNYE HOLMY. Mere addition of the element “online” to the Complainant’s mark does not adequately distinguish the disputed domain name from the Complainant’s mark, pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717. Moreover, the addition of the generic top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and such suffix is therefore irrelevant to determining the confusing similarity between the trademark SWISSÔTEL and the disputed domain name. The Panel accepts the general principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant has proved that the Respondent uses the disputed domain name to operate a website under “www.” which shows information on the Complainant’s hotel Swissôtel Krasnye Holmy in Moscow, including the “swissôtel logo” of the Complainant, as well as pictures and the hotel address of Complainant’s hotel Swissôtel Krasnye Holmy in Moscow. This website provides the possibility to book the Complainant’s hotel Swissôtel Krasnye Holmy on line. The Complainant has neither any business relationship with the Respondent nor with Business Hotel Group and gave no authorization to use the trademark SWISSÔTEL so that the Respondent or Business Hotel Group are not in a position to legitimately offer services under the mark SWISSÔTEL. The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name, without the intent, for commercial gain, to mislead the consumers or to tarnish the Complainant’s trademark. The Respondent is using the disputed domain name to attract Internet users seeking a website linked to the Complainant and to its mark SWISSÔTEL to the Respondent’s own website, without the Respondent being in a position to legitimately offer services under the mark SWISSÔTEL. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, which tends to demonstrate that the Respondent knew or must have known of the Complainant’s trademark SWISSÔTEL at the time he registered the disputed domain name. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant’s business, it can be inferred that the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of that domain name. In this Panel’s view, there is no doubt that the Respondent was aware of the business field and activities of the Complainant and trademark SWISSÔTEL as it was providing information on the Complainant’s hotel Swissôtel Krasnye Holmy on the website and thereby using the Complainant’s trademark, logo and pictures of the Complainant’s hotel. In this Panel’s view, the Respondent used the disputed domain name to attract Internet users to its page offering the reservation and booking of hotel services of the Swissôtel Krasnye Holmy or any other hotel in Russia. This creates a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website “www.”. By using the disputed domain name for a hotel services reservation and booking page the Respondent intentionally attempts to attract for commercial gain, Internet users to his website “www.” which offers services in the main business field of the Complainant. Moreover, the Panel accepts the arguments of the Complainant that the purpose of the Respondent to exploit the reputation of the Complainant’s denomination SWISSÔTEL in this field is done so in order to falsely lead consumers/Internet users to its website offering links in the field of hotel reservation and booking. A further indication of Respondent’s bad faith is that he uses the Complainant’s logo and hotel address as well as pictures of the original hotel but has replaced the telephone number of the Swissôtel Krasnye Holmy by its own telephone number to divert consumers/Internet users to its business and is also offering reservation and booking services to other hotels that have no relation to or connection with the Complainant.
The Panel finds that by using the Complainant’s trademark SWISSÔTEL to draw Internet users to a website offering what appears to be competing and related goods to the Complainant’s goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant’s business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: June 6, 2012
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