The complainants are Hyatt International Corporation and Hyatt Corporation, of Chicago, United States of America (hereinafter, the “Complainants”), represented by DLA Piper US LLP, United States of America.
The Respondent is Mr. Martin Mir, of Dubai, United Arab Emirates (hereinafter, the “Respondent”). 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC and Ascio Technologies Inc, respectively (hereinafter, the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter, the “Center”) on September 7, 2012. On September 10, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 12, 2012 and September 17, 2012, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on September 18, 2012.
The Center verified that the Complaint together with the amendment to 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 September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 17, 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 domain names in dispute and were respectively registered on January 23, 2012 and January 31, 2012. They both direct towards websites where hotel rooms are offered for sale.
According to the Complainants, the trademarks HYATT and GRAND HYATT have been well known long before the registrations of the disputed domain names.
In addition, the Complainants contend that they have received five awards for the Grand Hyatt Macau.
The Complainants are the holders of various trademarks HYATT and GRAND HYATT around the world.
The Complainants are in particular the holders of the following trademarks granted by the United States Patent and Trademark Office:
Trademark HYATT n°945384 registered on October 17, 1972; and
Trademark GRAND HYATT n°1329085 registered on April 2, 1985.
The Complainants are also the holder of the following trademark granted by the United Arab Emirates Trademark Office:
Trademark HYATT n°23778 registered on February 14, 2000.
The Respondent is Martin Mir, of Dubai, located in the United Arab Emirates. 5. Parties’ Contentions A. Complainants
First, the Complainants assert that the disputed domain names are confusingly similar to the Complainants’ trademarks HYATT and GRAND HYATT.
The Complainants also argue that the addition of the words “macao” and “macau” do not prevent a finding of confusing similarity.
Second, the Complainants allege that the Respondent has no right or legitimate interest in the disputed domain names. The Complainants claim that the Respondent has no rights or legitimate interest in said domain names in view of Complainant’s prior statutory and common law rights in trademarks HYATT and GRAND HYATT. The Complainants also claim that the Respondent has never been authorised to sell products bearing the trademark HYATT and GRAND HYATT.
Third, the Complainants contend that the disputed domain names were registered and are used in bad faith due to the reputation of the trademarks HYATT and GRAND HYATT. Among other things, the Complainants claim that the Respondent could not have ignored the aforementioned trademarks when registering the domain names. Furthermore, they assert that the Respondent uses the disputed domain names in bad faith to create a likelihood of confusion in order to attract Internet users for commercial gains. B. Respondent
The Respondent did not reply to the Complainants’ 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 the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the Respondent’s domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of domain names 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 the Respondent has rights and legitimate interests in the disputed domain names. A. Identical or Confusingly Similar
It is clearly beyond doubt that the Complainants have rights in the trademarks HYATT and GRAND HYATT for purposes of paragraph 4(a)(i) of the Policy.
The Complainants trademarks are incorporated in the disputed domain names in their entirety with the adjunction of the geographical terms “macao” and “macau”. The addition of these terms is certainly not sufficient to exclude confusing similarity with the HYATT and GRAND HYATT trademarks. (See Chocoladefabriken Lindt & Sprüngli AG v. Jules Mass & Yuan Yuan Chou,WIPO Case No. D2007-0446; Pepsico Inc., of Purchase v. Johan De BroyerWIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng,WIPO Case No. D2008-0437; and L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072).
These terms are also an obvious reference to the Grand Hyatt Macau.
Furthermore, a domain name is confusingly similar to a trademark when it comprises said well-known mark in its entirety. In the present case, the Panel believes that the Complainants have managed to demonstrate by the submitted evidence that the trademarks HYATT and GRAND HYATT are well-known.
As for the adjunction of gTLD “.com”, it is now well established that the generic top-level domain, in this case “.com”, may be excluded from consideration when determining whether the domain names at issue are identical or confusingly similar to the trademarks held by the Complainants. It is indeed deemed to be a functional or generic component of the domain names (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp,WIPO Case No. D2006-0223).
Therefore, the Panel finds that in this case the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the contested domain names by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use the contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute; or
(ii) it (as individual, business, or other organizations) has been commonly known by the contested domain names, even if it acquired no trademark or service mark rights; or
(iii) it is making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert internet users or to tarnish the trademarks or service marks at issue.
The Complainants are required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent may rebut the prima facie case by demonstrating that it has rights or legitimate interests, under paragraph 4(c) of the Policy.
The Complainants declared in their Complaint that the Respondent has no legitimate relationship with the Complainants, via, notably, an authorized reseller agreement.
The evidence suggests that the Respondent has not made any effort to use the domain names for any purpose that might explain its choice in a manner consistent with having rights or legitimate interests. (See Chocoladefabriken Lindt & Sprüngli AG v. Jules Mass & Yuan Yuan Chou,WIPO Case No. D2007-0446 and Chocoladefabriken Lindt & Sprüngli AG v. Domain Magic LLC,WIPO Case No. D2007-0461).
Indeed, there is no evidence that the Respondent holds registered trademarks in any country consisting of/comprising the elements HYATT and GRAND HYATT. There is also no evidence that the Respondent has ever filed applications for the registrations of such trademarks. Furthermore, due to the fact that the trademarks HYATT and GRAND HYATT are well known worldwide, it is to be understood that the Respondent must have known said marks at the time of the registrations.
It seems quite obvious for this Panel that, in this case, the Respondent never intended to conduct a legitimate activity via the domain names at issue. Indeed, the Respondent used the domain names to sell hotel rooms, which corresponds exactly to the services offered by the Complainants. Had Respondent had intended to conduct a legitimate activity via the domain names, one would have expected it to respond to the Complaint by explaining the reasons behind the registrations.
It also seems to this Panel that the Respondent is leading internet users to believe that it is either the Complainants themselves, or that it is authorized, in one way or another, to sell HYATT and GRAND HYATT products.
As a consequence, this Panel considers that the activity conducted by the Respondent via the websites towards which the domain names direct is not legitimate.
As previously observed, the Respondent has not made any attempt to rebut the “prima facie” case made by the Complainants. Therefore, the Panel will decide this dispute on the basis of the Complainants’ undisputed contentions of facts. Although the Respondent’s default does not automatically result in a decision in favour of the Complainants, the Panel may draw negative inferences from the same (See Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain names, so the requirements of paragraph 4(a)(ii) are also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain names in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquire the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainants who are the owner of the trademarks or service marks or to a competitor of the Complainants, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain names; or
(ii) the Respondent has registered the domain names in order to prevent the owner of the trademarks or service marks from reflecting the marks in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants’ marks 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.
a. Registered in bad faith
The Complainants trademarks are incorporated in the disputed domain names in their entirety with the adjunction of the geographical terms “macao” and “macau”. Said terms evoke precisely the Grand Hyatt Macau hotel.
Besides, the Complainants’ trademarks are well known. Accordingly, the Panel believes that the Respondent knew or should have known of the existence of the Complainant’s trademarks at the time of the registration of the disputed domain names. (See Credit Industriel et Commercial S.A v. Maison Tropicale SAWIPO Case No. D2007-0955 and Volvo Trademark Holding AB v. Unasi, Inc.WIPO Case No. D2005-0556).
In the Panel’s opinion, it is likely that the fame of the trademarks HYATT and GRAND HYATT was the reason that decided the Respondent to register the domain names. Had said marks been unknown, it would have been far less appealing.
Last, but not least, the Panel notices that the Complainants declared in their Complaint that the Respondent has no legitimate relationship with the Complainants, via, notably, an authorized reseller agreement.
These findings lead the Panel to conclude that the domain names in dispute have been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain names are registered in bad faith, it is also necessary to prove that the domain names are being used in bad faith.
b. Used in bad faith
The Respondent is using the domain names in an apparent effort to try attracting internet users to its websites where products allegedly from Complainants and some of its competitors are for sale. The presence of the GRAND HYATT logo on some pages of the disputed websites seems to this Panel an obvious trick to lead internet users into believing that the Respondent is the Complainants or that it was linked to them, via sponsorship or endorsement for instance.
Including the trademark HYATT and GRAND HYATT in its domain names was one of the best ways to lure internet users to its website. Even if some, but not all, internet users could realize once on the websites that the latter was not an official the Complainants’ website, this does not decrease the harm made to the trademarks and the likelihood of confusion.
As a conclusion, the use of the domain names is an undisguised attempt to trade off the fame of the trademarks HYATT and GRAND HYATT by creating a likelihood of confusion in the mind of internet users. This certainly falls within the previously cited category of bad faith use set out in paragraph 4(b)(iv) of the Policy (See, Tiffany (NJ) Inc., Tiffany and Company v. Herbert Diaz,WIPO Case No. D2008-1635). 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 domain names and be transferred to the Complainants.
Nathalie Dreyfus
Sole Panelist
Dated: October 26, 2012
Full & Egal Universal Law Academy