The Complainant is Sun International (Zambia) Limited of Livingstone, Zambia, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Nigel Garner (NIGEL28911) of Umhlanga, South Africa; Hamilton Mandizvidza / Hamand Ent of Gauteng, South Africa; P of Nobby Beach, Queensland, Australia.
2. The Domain Names and Registrars
The disputed domain name is registered with Ascio Technologies Inc. The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 14, 2012. On November 14, 2012, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainR and Ascio Technologies Inc. and (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On November 15, 2012 the Registrar PDR Ltd. d/b/a PublicDomainR 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 November 19, 2012, the Registrar Ascio Technologies Inc. transmitted by email to the Center its verification response confirming Nigel Garner (NIGEL28911) as the registrant of the disputed domain name and provided the contact details. The Center sent an email communication to the Complainant on November 19, 2012 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2012 requesting the consolidation of the registrants in this case.
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 the Respondent of the Complaint, and the proceedings commenced on November 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2012. The Response was filed by Nigel Garner with the Center on December 14, 2012.
On November 15, 26 and 27, 2012, the Center received a series of email communications from Nigel Garner objecting to consolidation of different registrants and claiming he is not the registrant for the disputed domain name .
The Center appointed Richard Hill as the sole panelist in this matter on December 21, 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.
On January 3, 2012, the Center informed the parties that the Panel had decided to extend the decision due date to January 10, 2012. 4. Factual Background
According to the WhoIs information, the disputed domain name (the “first disputed domain name) was registered in 2006 and the disputed domain name (the “second disputed domain name) in 2010.
The Complainant has registered trademark rights, dating back to at least 2001, for the mark THE ROYAL LIVINGSTONE, which it uses to market a variety of products and services, in particular The Royal Livingstone Hotel, near Victoria Falls, Zambia.
The websites at the two disputed domain names are essentially identical and offer booking services for The Royal Livingstone Hotel. Internet users could be misled into thinking that the websites in question are operated directly by the hotel itself, which is not the case.
The Respondent, a tour operator, operates the website at the first disputed domain name. He was authorized by the Complainant’s parent company to offer bookings for The Royal Livingstone Hotel. But he was not authorized to use the Complainant’s trademark in a domain name, nor to give the impression that his website was that of the hotel itself.
Internet users have been confused and thought that they were dealing directly with the hotel rather than with a tour operator. They have complained about this in communications which were annexed to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is equitable and procedurally fair to consolidate the cases concerning the two disputed domain names because common questions of law and fact will be raised in respect of these disputed domain names and the shared interests of the Complainant and the Respondent would be promoted by avoiding the unnecessary duplication of time, effort and expense involved in lodging two separate Complaints. The Complainant believes that the second disputed domain name is directly or indirectly controlled by or associated with the registrant of the first disputed domain name and that the websites under those disputed domain names are subject to his common control. The web content of the websites under both disputed domain names is similar and to a large extent contains identical images and text. For example, the “Feedback” tab found on the websites under both disputed domain names refers to the same comments by the same persons and the comments are identical. Further, the copyright notice found at the bottom of the website under the second disputed domain name indicates that the copyright owner of the corresponding website is the same as that of the website at the first disputed domain name. The contact addresses given for the booking agents at both websites are identical.
The Complainant notes that the registrant of the first disputed domain name denies being associated with the second disputed domain name.
The Complainant alleges that it owns registered trademarks for the mark THE ROYAL LIVINGSTONE for a variety of products and services (including hotels), in several African countries, including South Africa. The disputed domain names incorporate the Complainant’s mark, with the addition of the common word “hotel”. Thus the disputed domain names are confusingly similar, in the sense of the Policy, to the Complainant’s mark.
The Complainant states that it is a subsidiary of a company that operates numerous hotels, entertainment, complexes, casinos and other hospitality facilities which are extremely well-known in South Africa and internationally for the high emphasis on quality services. The Complainant was formed in 1997 to operate a hotel called The Royal Livingstone, near Victoria Falls in Zambia. This hotel opened in 2001 and attracts tourists from all over the world.
According to the Complainant, the first disputed domain names was registered in 2006. Following an exchange of correspondence in 2011, the Respondent claimed that since 2006, the Complainant’s parent company had been fully aware of his website which is devoted entirely to selling booking with The Royal Livingstone Hotel over the six years that the Respondent operated the website in the United Kingdom of Great Britain and Northern Ireland, the United States of America and Europe, he generated considerable revenue for the Complainant’s parent company. The Complainant conducted internal investigations and was unable to find any agreement between it and the Respondent.
The Complainant states that the web pages at the disputed domain names show the Complainant’s logo, provide information on the Complainant’s hotel and offer a booking service. Customers may believe that they are dealing directly with the Complainant, but this is not the case. Nor is it the case that the Respondent is a legitimate booking agent who is authorised to handle bookings for the Complainant.
According to the Complainant, the Respondent’s use of the disputed domain names is for commercial purposes and is designed to create an impression of association with the Complainant and to divert consumers from the Complainant to the Respondent’s websites by creating confusion. Actual confusion has occurred and customers have complained to the Complainant regarding the websites at the disputed domain names. Thus the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent was undoubtedly aware of the Complainant’s rights in the mark ROYAL LIVINGSTONE and marks including it when the disputed domain names were registered. This is evident from the fact that the Respondent’s domain name includes the Complainant’s trademark and he has admitted to registering and using the disputed domain names commercially so as to provide a booking service for the Complainant’s hotel.
The Complainant submits that the Respondent is using the disputed domain names to lead customers to the offending websites and has intentionally attempted to attract Internet users to the websites or other on-line locations for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or location of a service on the Respondent’s websites or location. This constitutes bad faith registration and use under the Policy. B. Respondent
The Response refers exclusively to the first disputed domain name. It does not respond to the Complaint against the second disputed domain name as the Respondent states that he has at no time either registered, owned or operated this disputed domain name.
The Respondent objects to the consolidation of the two cases, on the grounds that this could undermine his Response.
According to the Respondent, the first disputed domain name has been operated for six years with the full knowledge and acquiescence of the Complainant’s parent company, providing the Respondent with legitimate interests in respect of the disputed domain name. A website was created in May 2006 by the Respondent, an Internet based tour operator which specifically marketed The Royal Livingstone Hotel. The Respondent had a contract with the Complainant’s parent company to sell booking with The Royal Livingstone Hotel as part of their tours since June 10, 2002. The website was developed to exclusively sell The Royal Livingstone Hotel on an international basis – primarily in the Americas, Europe, Middle and Far East, and Australasia. To encourage the Respondent to actively promote The Royal Livingstone Hotel, the Complainant’s parent company provided the Respondent with special “preferential rates” that were considerably lower that rates offered to other tour operators.
Further, says the Respondent, the first disputed domain name is not confusingly similar to the Complainant’s trademark, because there is no website corresponding to the mark and because the mark is registered in Zambia, whereas the Respondent does not do business in that country. 6. Discussion and Findings
As a preliminary matter, the Panel must decide whether to consolidate the cases concerning the two disputed domain names. As the Complainant correctly points out, the facts of the two cases are essentially identical. The Respondent objects to consolidation on the grounds that consolidation might undermine his Response.
In accordance with 4(f) of the Policy, the Panel may consolidate disputes in its sole discretion. The facts of the present case as discussed above justify consolidation. See Dell Computer Corporation v. Got Domain Names For Sale, a/k/a/ gotnames@, a/k/a wes2@, WIPO Case No. D2000-0659; see also AT&T Corp v. May Halabi and All Time Talk Cellular,WIPO Case No. D2002-0569. In this case, the Panel finds that sufficient evidence has been presented to indicate that the disputed domain names are under common control (including evidence that bookins made through have been serviced by agents associated with ), and accordingly that the consolidation would be faire and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
In any event, since there was a Response only concerning the first disputed domain name, the Panel is of the view that consolidation of the cases would not in any way prejudice the Respondent. The Panel will consider the Response with respect to the first disputed domain name, and make a decision regarding the second disputed domain name independently of that Response upon the evidence available to the Panel. A. Identical or Confusingly Similar
The disputed domain names incorporate the Complainant’s trademark, with the addition of the common word “hotel(s)”. Therefore, the Panel finds they are confusingly similar to the mark in the sense of the Policy. See MasterCard International Incorporated v. Juan Curtis,WIPO Case No. D2008-1295 (finding that the word “free” was descriptive and did not eliminate the similarity to the complainant’s mark) and Microgaming Software Systems Limited v. DomainsByP and BB1Webs,WIPO Case No. D2008-0870 (finding that the inclusion of the generic word “slots” did not add distinctive matter so as to distinguish the disputed domain name from the complainant’s mark). The fact that the Complainant’s mark is registered in Zambia whereas the Respondent primarily targets Internet users in other countries is of no relevance under the Policy given the facts of the present case.
Accordingly, the Panel finds the Complainant has made out the first element under the Policy. B. Rights or Legitimate Interests
The Respondent argues, and provides evidence to show, that he was authorized by the Complainant’s parent company to offer booking services for the Royal Livingstone Hotel. However, he does not argue, or provide any evidence to show, that he was authorized to use the Complainant’s mark in a domain name, or that he was authorized to create a website that gives the impression that it is operated directly by the Complainant. As the Complainant points out, the Respondent has created actual confusion amongst Internet users, and thus cannot be held to have used the first disputed domain name for a bona fide purpose. See Motorola, Inc. vs NewGate Internet, Inc.,WIPO Case No. D2000-0079 (“[…] use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be “bona fide”.); see also Movado LLC v. Gator Web,WIPO Case No. D2006-0903.
Under the circumstances, the Panel does not find any other basis for determining that the Respondent has any rights or legitimate interests in the first disputed domain name.
There was no formal Response regarding the second disputed domain name. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. In this case, under the circumstance, the Panel draws the inference that the defaulting Respondent does not have any rights or legitimate interests in the second disputed domain name, and finds that the Complainant has made out this element of its case in relation to the second disputed domain name.
Accordingly, the Panel finds the Complainant has made out the second element under the Policy. C. Registered and Used in Bad Faith
As the Complainant correctly states, the evidence shows that the Respondent is using the first disputed domain name to intentionally attempt to attract Internet users to his websites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This constitutes bad faith registration and use under the Policy.
See the cases cited above; see also See American University v. Richard Cook, NAF Claim No. FA208629 (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Systems Corporation v. P, NAF Claim No. FA95312 (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
There was no formal Response regarding the second disputed domain name. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. In this case, under the circumstance, the Panel draws the inference that the defaulting Respondent registered and is using the second disputed domain name in bad faith, and finds that the Complainant has made out this element of its case in relation to the second disputed domain name.
Accordingly, the Panel finds the Complainant has made out the third element under the Policy. 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 names, and , be transferred to the Complainant.
Richard Hill
Sole Panelist
Date: January 3, 2012
Full & Egal Universal Law Academy