Complainant is Viceroy Cayman Ltd., George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland represented by Neal, Gerber & Eisenberg, United States of America.
Respondent is Next Reservation Ltd, Auckland, New Zealand / Privacy Protection Service, Inc. d/b/a PrivacyP, Nobby Beach, Queensland Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2014. On June 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2014, the Registrar 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 Complainant on June 6, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 6, 2014. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 6, 2014.
The Center verified that 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 June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2014.
The Center appointed Ross Carson as the sole panelist in this matter on July 18, 2014. 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 corporation organized under the laws of the Cayman Islands with a registered office in the Cayman Islands. Complainant has widely used, advertised and registered the trademark VICEROY for many years in dozens of international jurisdictions in connection with, among other services, the provision of hotel and resort services including restaurant and bar services, the provision of general purpose facilities for meetings, conferences and exhibitions, and reservation services for hotel accommodations.
Complainant operates Viceroy properties located in Santa Monica (Los Angeles), Palm Springs (Southern California), New York, Snowmass (Colorado), and Miami in the United States, as well as in Mexico, St. Lucia, the Maldives and Anguilla. In particular, Complainant operates the Yas Viceroy Abu Dhabi resort on Yas Island in Abu Dhabi. Complainant is also developing numerous other luxury Viceroy properties around the world, including in Bodrum and Istanbul, Turkey and Dubai, Abu Dhabi.
Complainant has obtained over 100 trademark registrations for the VICEROY trademark in jurisdictions around the world including without limitation the United States, Argentina, Brazil, China, India, Israel, Japan, Jordan, Mexico, New Zealand, Oman, Singapore, Thailand, Turkey, the Russian Federation, the European Community, the United Arab Emirates, and the United Kingdom of Great Britain and Northern Ireland (“Great Britain”). Representative copies of Viceroy Hotel Group’s VICEROY registrations are collectively attached as an Annex to the Complaint.
Complainant further promotes its VICEROY trademark and services through numerous websites maintained by Complainant, including its website maintained at the domain name . In addition, Complainant maintains a website for each of its individual hotel properties that contain proprietary content promoting and describing that particular property. For example, Complainant maintains a website at “www./en/abudhabi” for its Yas Viceroy Abu Dhabi resort at Yas Island, Abu Dhabi. The content of the website includes pictures of Yas Island, Complainant’s Viceroy hotel with its outstanding architecture as well as a description of all the services available at Complainant’s Viceroy Yas Island Abu Dhabi hotel.
The disputed domain name appears to have originally registered on November 26, 2013 by TravelScape, LLC d/b/a Travel Now, many years after the adoption and first use of the VICEROY trademark. Complainant forwarded a cease and desist letter to TravelScape, LLC on December 24, 2013 demanding that it cease any use of the disputed domain name. On January 29, 2014 Complainant’s counsel forwarded a copy of the cease and desist letter of December 24, 2013 to Expedia, Inc. who had apparently acquired the disputed domain name. On February 24, 2014, Complainant wrote to Privacy Protection Services Inc. d/b/a Privacy P, the proxy service, requesting it to provide Complainant with the identity of Registrant of the disputed domain name. Privacy P responded by email advising Complainant that it must initiate proceedings under the UDRP before the identity of Registrant of the disputed domain name can be disclosed.
On May 31, 2014 Complainant filed the original Complaint naming Privacy Protection Services Inc. d/b/a Privacy P as Respondent. On June 2, 2014 the Center forwarded a “Request for Registrar Verification” to the Registrar Public Domain R requesting among other matters the name of the Registrant. On June 3, 2014 in the Response to the Request for Registrar Verification the Registrar advised the Center that the Registrant of the disputed domain name is Next Reservation Ltd, “[…]@”, having a postal address in Auckland, New Zeeland. The WhoIs for the disputed domain name was updated on June 3, 2014 to show the registrant as Next Reservation Ltd. Complainant filed an amended Complaint with the Center on June 6, 2014, naming the Registrant shown in the WhoIs of June 3, 2014.
On June 11, 2014, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceedings to Next Reservation Ltd and Privacy Protection Service, Inc. d/b/a PrivacyP by email and registered mail. The Notification of Complaint and Commencement of Administrative Proceeding was found to be undeliverable at the email address listed in the WhoIs for Next Reservation Ltd and the registered mail sent to Next Reservations Ltd at the address provided was returned as the address was stated to be invalid. 5. Parties’ Contentions A. Complainant A.1.Identical or Confusingly Similar
Complainant has widely used, advertised and registered the trademark VICEROY for many years in dozens of international jurisdictions in connection with, among other services, the provision of hotel and resort services including restaurant and bar services, the provision of general purpose facilities for meetings, conferences and exhibitions, and reservation services for hotel accommodations.
Complainant operates Viceroy properties located in Santa Monica (Los Angeles), Palm Springs (Southern California), New York, Snowmass (Colorado), and Miami in the United States, as well as in Mexico, St. Lucia, the Maldives and Anguilla. In particular, Complainant operates the Yas Viceroy Abu Dhabi resort on Yas Island in Abu Dhabi.
Complainant has obtained over 100 trademark registrations for the VICEROY trademark in jurisdictions around the world including without limitation the United States, Argentina, Brazil, China, India, Israel, Japan, Jordan, Mexico, New Zealand, Oman, Singapore, Thailand, Turkey, the Russian Federation, the European Community, the United Arab Emirates, and the United Kingdom. Representative copies of Viceroy Hotel Group's VICEROY registrations are collectively attached as an Annex to the Complaint.
Complainant states that except for the irrelevant addition of “.com” the disputed domain name prominently features the Viceroy name in connection with the name of Complainant’s hotel and resort property on Yas Island, Abu Dhabi. The disputed domain name is therefore identical and confusingly similar to Complainant’s VICEROY trademark and Viceroy Hotel Group’s well-known property’s name; See, PG&E Corp. v. Samuel Anderson and PGE in the year 2000, WIPOCase No. D2000-1264 (“the addition of the gTLDs “.com” and “.net” are without legal significance from the standpoint of comparing the disputed domain names” to Complainant's claimed marks); see also M Wile & Company Inc. d/b/a Exclusively Misook v. Standard Tactics LLC ,WIPOCase No. D2007-1469 (domain names at issue confusingly similar to complainant's trademark because most distinctive part of the mark resides in the domain name). A.2.Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant submits that Respondent cannot establish a right to, or legitimate interest in, the disputed domain name. Respondent has no legal relationship with Complainant through which Respondent can claim any rights to the disputed domain name, nor has Complainant consented to Respondent's registration of the disputed domain name. Complainant through cease and desist letters to Respondent and its predecessors has objected to the registration and use of the disputed domain name, to which Respondent and its predecessors failed to adequately respond.
Complainant further submits that Respondent also has no rights or legitimate interests in the disputed domain name because it is not referred to or commonly known as “”. See, Gallup, Inc. v. Amish Country Store, NAF Claim No.96209 (registrant has no rights in a domain name when registrant is not known by the mark). It is well-established that the mere registration of a domain name does not confer trademark rights upon the registrant and that such rights can arise only through the bona fide offering of goods or services. See, Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. Respondent has not made, nor is it making, a legitimate noncommercial or fair use of the disputed domain name. Respondent (or its client) had been using the disputed domain name to host a website captioned “Yas Viceroy Abu Dhabi” that is a knock-off of Complainant's website for its “Yas Viceroy Abu Dhabi” property. Respondent provided no original content on the Website whatsoever. The links provided on the website directed the user to third party websites unrelated to Complainant. Use of advertisements or links to steer consumers away from the rightful owner of the mark incorporated within the domain name in question is not fair or legitimate use. See, United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449.
Complainant further submits that given the renown of the Viceroy name in connection with hotel resort and restaurant services; Complainant believes that Respondent would not have chosen the disputed domain name unless Respondent was seeking to intentionally trade on Complainant’s VICEROY trademark. Accordingly, Respondent cannot establish a bona fide interest in the disputed domain name. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067 (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”). A.3.Registration in Bad Faith
Complainant submits that in registering the disputed domain name , Respondent knew or should have known that Complainant held rights in the trademark VICEROY. Here, there is clear evidence of slavish copying on the website associated with the disputed domain name , as nearly the entire content was scraped verbatim from Complainant’s website for its Yas Abu Dhabi hotel on Complainant’s Viceroy Hotel Group website. This intentional infringement of the Complainant’s rights in itself amounts to registration and use in bad faith. Id. It is axiomatic that the content of a website associated with a disputed domain name may also be relevant to deciding issues relating to the bad faith registration and use of the domain name. See, World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499. Unauthorized use of copyrighted material in a website may also be relevant to a respondent’s intent. See, TPI Holdings Inc. v .JB Designs, WIPO Case No. D2000-0216 (finding that “Respondent has used the [disputed domain name] in bad faith by using it as the address to a [website] which contains content slavishly copied without license or authority” from Complainant’s site). A.4. Use in Bad Faith
Complainant relies on its submission in Section A. 3 immediately above as evidence of use in bad faith.
Complainant further submits that Respondent has also used the disputed domain name in bad faith by registering and maintaining a registration that is identical to Complainant’s VICEROY trademark and the name of the well-known Yas Viceroy Abu Dhabi property, Respondent has prevented Viceroy Hotel Group from registering the VICEROY mark specifying its Yas Viceroy Abu Dhabi resort as a “.com” domain name. See, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (even without a pattern of "preclusive registrations," registrant's deliberate registration of the domain names corresponding to the mark at issue constituted evidence of bad faith). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a formal Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a formal Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of trademark registrations for the trademark VICEROY in jurisdictions around the world including without limitation the United States, Argentina, Brazil, China, India, Israel, Japan, Jordan, Mexico, New Zealand, Oman, Singapore, Thailand, Turkey, Russian Federation, the European Community, the United Arab Emirates, and the United Kingdom as set out in Section 4 immediately above. Complainant’s VICEROY trademark was registered and widely used years before the disputed domain name was registered on November 26, 2013.
The disputed domain name , incorporate Complainant’s VICEROY trademark as the distinctive element of the disputed domain name.
As seen on Respondent’s webpage to which the disputed domain name resolved before it was taken down, the disputed domain name is comprised of Complainant’s trademark VICEROY and the geographic terms “Yas” and ”Abu Dhabi” which Complainant uses to describe the location of its Viceroy hotel, restaurants and convention center located on Yas Island in Abu Dhabi.
Respondent appropriated Complainant’s entire trademark, VICEROY, as the dominant element of the disputed domain name. Appropriating another’s entire mark and adding geographic matter to it (i.e. the words “Yas” and “Abu Dhabi” are not sufficient to give rise to distinctiveness in their own right), and does not avoid likely confusion. See, Microsoft Corporation v I. Holiday Co, WIPO Case No. D2000-1493.
It is well established by prior UDRP panels that where a domain name has been created by a respondent by adding a descriptive or generic word to a distinctive mark in which the complainant has rights, then such a domain is to be considered confusingly similar to complainant's mark for the purposes of paragraph 4(a)(i) of the Policy (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0); e.g. Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIN,WIPO Case No. D2005-0587).
The inclusion of the gTLD “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” may be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent’s use of the geographic terms “Yas” and “Abu Dhabi” in association with Complainant’s trademark VICEROY do not sufficiently distinguish the disputed domain name from Complainant’s VICEROY registered trademark, but in fact lead to a greater likelihood of confusion with Complainant’s Viceroy hotel and convention Center located on Yas Island, Abu Dhabi.
The Panel finds that Complainant has established rights in its trademark VICEROY and also proven that the disputed domain name is confusingly similar to Complainant’s registered trademark VICEROY. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s VICEROY trademark. Complainant has not permitted Respondent to register or use any domain name incorporating its VICEROY trademark. Complainant has no business or other relationship with Respondent.
Complainant has widely used, advertised and registered the trademark VICEROY for many years in dozens of international jurisdictions in connection with, among other services, the provision of hotel and resort services including restaurant and bar services, the provision of general purpose facilities for meetings, conferences and exhibitions, and reservation services for hotel accommodations.
Complainant operates Viceroy properties located in Santa Monica (Los Angeles), Palm Springs (Southern California), New York, Snowmass (Colorado), and Miami in the United States, as well as in Mexico, St. Lucia, the Maldives and Anguilla. In particular, Complainant operates the Yas Viceroy Abu Dhabi resort on Yas Island in Abu Dhabi.
There is no evidence that Respondent has ever been known by or used the trademark VICEROY in association with its own goods or services.
Respondent registered or acquired the disputed domain name on or after November 26, 2013 many years after the adoption and first use by Complainant of its VICEROY trademark. The disputed domain name is comprised entirely of the name of Complainant's Yas Viceroy Abu Dhabi property
Complainant asserts that Respondent used the disputed domain name to resolves to a website operated by Respondent, before it was taken down after a cease and desist letter. Screen shots of Respondent’s website dated December 17, 2013 include the top line “Yas Viceroy Abu Dhabi Home”. A link immediately below states: “Book Now”. Immediately below the link are photographs and extensive descriptions of the services offered by Complainant at its Yas Island Viceroy Abu Dhabi property, which Complainant alleges embody original works of authorship that are protected by copyright. Respondent’s website associated with the disputed domain name gives the impression to be an official legitimate Complainant’s website.
Complainant asserts that the links provided on Respondent’s website directs Internet users to third party websites unrelated to Complainant’s hotel and associated services. Use of advertisements or links to steer consumers away from the rightful owner of the mark incorporated within the domain name in question is not fair or legitimate use: United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449.
Complainant asserts that Respondent by creating and using webpages in association with the disputed domain name which have the look and feel of Complainant’s home page and are falsely stated to be Complainant’s home page and lead Internet users to third party websites is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Such use is not legitimate noncommercial or fair use (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Complainant’s VICEROY trademark has been extensively used and advertised for many years in association with upscale hotels and associated services and is well known in relation to such services. Respondent has registered or acquired the disputed domain name comprised of Complainant’s well-known trademark and the geographical terms “Yas” and “Abu Dhabi” which describe the geographical location of Complainant’s hotel in the United Arab Emirates. Complainant asserts that based on the geographical terms associated with Complainant’s VICEROY trademark in the disputed domain name and the contents of the web page associated with the disputed domain name Complainant has made out a prima facie case that Respondent would not have chosen the disputed domain name unless Respondent was seeking to intentionally trade on the goodwill associated with Complainant’s VICEROY trademark. Accordingly, Respondent cannot establish a bona fide interest in the disputed domain name. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067 ("rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant").
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name .
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous panel decisions under the UDRP have found it sufficient for a complainant to make a prima facie case showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated“A number of WIPO UDRP cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” See also section 2.1 of the WIPO Overview, 2.0 and Croatia Airlines d d v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455. In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Based on the evidence before the Panel, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
Complainant’s VICEROY trademark has been extensively used and advertised for many years in association with upscale hotels and associated services and is well known in relation to such services. Respondent has on or after November 23, 2013 registered or acquired the disputed domain name comprised of Complainant’s well-known VICEROY trademark and the words “Yas” and “Abu Dhabi” which describe the geographical location of Complainant’s hotel in the United Arab Emirates. Respondent by creating and using webpages in association with the disputed domain name which have the look and feel of Complainant’s home page and are falsely stated to be Complainant’s home page and divert Internet users to third party websites was making use of the disputed domain name for commercial gain to misleadingly divert Internet consumers. Based on the geographical elements of the disputed domain name associated with Complainant’s VICEROY trademark and the contents of the web page associated with the disputed domain name the Panel infers that Respondent would not have chosen the disputed domain name at the date of registration or acquisition unless Respondent was seeking to intentionally trade on the goodwill associated with Complainant’s VICEROY trademark and more particularly on the reputation of Complainants VICEROY hotel known as Yas Island Viceroy Abu Dhabi hotel.
In view of the above findings, the Panel concludes that Respondent registered or acquired the disputed domain name in bad faith. C.2. Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel relies on the findings in Section 6 C.1. immediately above as evidence of Respondent’s use of the disputed domain name in bad faith under Paragraph 4(b)(iv) of the Policy.
Respondent has also used the disputed domain name in bad faith by registering or maintaining a registration that is identical to Complainant’s VICEROY trademark and the name of Complainant’s well-known Yas Viceroy Abu Dhabi property. Respondent has prevented Complainant from registering the VICEROY trademark specifying its Yas Viceroy Abu Dhabi resort as a “.com” domain name. See, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (even without a pattern of “preclusive registrations”, registrant’s deliberate registration of the domain names corresponding to the mark at issue constituted evidence of bad faith).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent used the disputed domain name in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy and that Complainant satisfies the requirements under paragraph 4(a)(iii) of 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 name be transferred to Complainant.
Ross Carson
Sole Panelist
Date: July 28, 2014
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