Complainant is Lanitis Development Limited of Paphos, Cyprus, represented by Economides Kranos & Co. LLC, Cyprus.
Respondent is Richard Vaughton, Discovery Travel Network of Torquay, Devon, United Kingdom of Great Britain and Northern Ireland (“UK”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2014. The Response was filed with the Center on November 5, 2014.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 10, 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 company with legal domicile on Cyprus being active in the property development and property management business.
Complainant has provided (partial) evidence that it is the registered owner of a Community Trademark APHRODITE RENTALS, No. 011903747, applied for on June 17, 2013, and registered on February 4, 2014, for goods and services in classes 35, 36, and 43.
Complainant, furthermore, has submitted copies of certificates from the Cyprus Register of Companies, according to which the designation “Aphrodite Hills” has been registered as Complainant’s Cypriot business name on June 16, 2000, furthermore, that the designations “Aphrodite Hills Rentals” as well as “Aphrodite Rentals” have been registered as Cypriot business names of Lanitis Development Public Ltd. on September 23, 2005.
In connection with the verification of the documents submitted by Complainant to prove its rights in the Community Trademark APHRODITE RENTALS (which were lacking, inter alia, the trademark owner’s name), the Panel became aware of the fact that Complainant obviously owns a number of national Cypriot word-/device marks APHRODITE HILLS for various goods and services e.g. in classes 16, 25, 35, 37, 41, 43, and 44, registered in the years 2001/2002.
Respondent is domiciled in the UK and is active in the travel industry.
The disputed domain name has been created on July 9, 2009, and redirects to Respondent’s website at “www.” where luxury villas situated on the so-called “Aphrodite Hills” in Cyprus are offered for holiday rentals. The website’s homepage includes a disclaimer which runs as follows: “Aphrodite Hills Villas is a web brand of Discovery Holiday Homes, a leading holiday rental company, representing private owners. We do not represent the local Cypriot ‘Resort’ management company.”
Complainant requests that the disputed domain name be transferred to it. 5. Parties’ Contentions A. Complainant
Complainant asserts that it initiated in or about the year 2000 a property development project under the name of “Aphrodite Hills” in Paphos/Cyprus including hotels, villas and other leisure properties and facilities. Complainant claims that since the year 2000, it traded, promoted and advertised its properties and business in relation to the Aphrodite Hills development project by using the business names “Aphrodite Hills” etc. registered with the Cyprus Company Register. Complainant points to the fact that until the year 2000, its development area was unexploited and when the Aphrodite Hills project took place, the area became a well-known destination not only for Cypriots, but also for people from around the world.
Complainant suggests that Respondent infringes upon Complainant’s property rights and commits civil wrong and passing off since the names “Aphrodite Hills”, “Aphrodite Rentals” and “Aphrodite Hills Rentals” are used in the disputed domain name and/or on Respondent’s website, hereby confusing the public and disrupting the business activity of Complainant and its subsidiary controlled companies. Complainant contends to have invested millions of Euros in marketing and/or building a goodwill, reputation and publicity in Cyprus and worldwide in relation to the Aphrodite Hills project, which is why the general public relates the Aphrodite Hills project to Complainant being the official development company and not to any other third party.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since Complainant has neither licensed nor authorized the use of its trademark to Respondent and that there is no indication that Respondent is commonly known by the disputed domain name.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since (1) Respondent has registered the disputed domain name in order to prevent Complainant, which is the owner of the trademarks APHRODITE HILLS, APHRODITE RENTALS, and APHRODITE HILLS RENTALS from reflecting its trademarks in a corresponding domain name; (2) Respondent has registered the disputed domain name primarily for the purpose of disrupting Complainant’s business and (3) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service thereon. B. Respondent
Respondent contends that he controls the company “Discovery Travel Network Ltd.” which is the registered organization for the disputed domain name, but that the latter in fact is owned by the company “Discovery Holiday Homes Ltd.” which is also under Respondent’s shareholder control and to which Discovery Travel Network Ltd. renders supporting marketing services. Respondent asserts that Discovery Holiday Homes Ltd. has been representing for several years individuals and managing agents of holiday properties, villas and apartments in Cyprus, including private properties on the Aphrodite Hills complex.
Respondent argues that the term “Aphrodite Hills” has been used over the last 14 years more and more as a destination to refer to the geographical area with its collection of privately owned properties, hotels, restaurants, shops, golf courses and other services, rather than referring to Complainant’s local business. Respondent asserts that the term “Aphrodite Hills” is meanwhile firmly embedded within the travel sector and as such the name cannot be held to have any restriction on its use as a place name.
Moreover, Respondent points to the fact that he is representing over 200 owners who have bought properties on the Aphrodite Hills complex and managers who run businesses on this site who have no contractual restrictions to use the designation “Aphrodite Hills” which simply refers to where those properties are located. Respondent takes the view that, against this background, Respondent’s company has legitimate rights in using this term “Aphrodite Hills” in order to promote its rental services referring to properties on the very same “Aphrodite Hills”.
Respondent, furthermore, stresses that its actual website “www.” is clearly branded and has UK contact details.
Finally, Respondent states that Complainant has not shown to have any registered trademark rights in the term “Aphrodite Hills” as such, presumably because such trademark applications would have been refused. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has provided (partial) evidence of its ownership in the community trademark APHRODITE RENTALS (No. 011903747). For the Panel, it is at least disputable whether this trademark is indeed confusingly similar with the disputed domain name if one undertakes a straight forward visual and/or oral comparison of the conflicting signs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2). The disputed domain name does not incorporate Complainant’s trademark in its entirety. Also, both signs merely have the term “Aphrodite” (the name of the Greek goddess of love and beauty) in common, but differ in the further terms “rentals” in Complainant’s trademark and “hills” as well as “villas” in the disputed domain name.
The Panel, however, has taken notice in connection with the rendering of this decision of a number of national Cypriot trademarks (word-/device marks) including the word elements “Aphrodite Hills”, registered in the name of Complainant in the years 2001/2002. Also, Complainant has evidenced that the term “Aphrodite Hills” has been registered as Complainant’s Cypriot business name already in the year 2000. It is a consensus view among WIPO panels that the first element under the UDRP serves as a standing requirement and that the threshold test for the finding of a confusing similarity is usually satisfied if the relevant trademark is recognizable as such within the disputed domain name (see again WIPO Overview 2.0, paragraph 1.2). The Panel accepts that the word elements “Aphrodite Hills” as they form part of Complainant’s Cypriot trademarks are well reflected in their entirety in the disputed domain name, thus there is a confusing similarity to be found between the conflicting signs as required under the UDRP.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
Now the question arises whether or not Respondent has rights or legitimate interests with respect to the disputed domain name as set forth by paragraph 4(c) of the Policy. The case scenario of paragraph 4(c)(i) is the one that addresses directly to the facts at hand as it provides that Respondent may demonstrate rights or legitimate interests in the disputed domain name if he can demonstrate that before any notice to Respondent of the dispute, Respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
It is undisputed between the parties that Respondent has been promoting for quite some time and well before this Complaint was filed, the possibility to rent luxury villas situated on the Aphrodite Hills Resort in Cyprus for holiday purposes. Apparently, all of the rental objects displayed on Respondent’s website under the disputed domain name at “www.” fall under this category without any exceptions. Moreover, Respondent’s website at “www.” does not display at all Complainant’s word-/device trademark APHRODITE HILLS or any other of Complainant’s trademarks, but rather bears Respondent’s own company logo “Discovery Holiday Homes” with contact information clearly pointing to Respondent’s legal domicile in the UK. Also, the homepage of Respondent’s website includes a disclaimer pointing to the fact that Respondent is representing private owners and not the local Cypriot “resort” management company, thus not representing Complainant. Finally, Respondent apparently has only registered one domain name similar to Complainant’s trademarks, namely the disputed domain name, and has not tried to “corner the market” in domain names.
It is consensus view among UDRP panels that a reseller or distributor (whether authorized or unauthorized) can be making a bona fide offering of goods and services and thus have a legitimate interest in the disputed domain name if such use meets certain requirements, e.g.: (1) the actual offering of goods and services at issue, (2) the use of the website under the disputed domain name to sell only the trademarked goods, (3) the website’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and, finally, (4) Respondent must not try to “corner the market” in domain names that reflect the trademark (so-called “Oki Data” principles; see WIPO Overview 2.0, paragraph 2.3). The Panel shares the view that not only authorized but also unauthorized resellers and distributors may fall within the Oki Data principles.
It carries particular weight in the eyes of the Panel that Respondent here is not selling or distributing Complainant’s goods or services under the trademark APHRODITE HILLS in a typical trademark sense, but rather is using the term “Aphrodite Hills” as it is reflected in Complainant’s national Cypriot APHRODITE HILLS trademarks to refer to the destination where the private properties rented out through Respondent’s website are in fact located. The Panel takes the view that this particular situation is not at all in contrast to the finding of a bona fide acting of Respondent under the Oki Data principles, but that it is rather supportive thereof. Respondent has set out in detail that since the start of the Aphrodite Hills development project in 2002, this area has meanwhile become a well-known destination under the name of “Aphrodite Hills” not only for Cypriots, but also for people from around the world. Also, Respondent points to the fact that he is representing over 200 owners of properties on the Aphrodite Hills complex which obviously have no contractual restrictions whatsoever to use the designation “Aphrodite Hills” to refer to the place where their properties are located. Under the assumption that those private owners in fact have instructed Respondent to putting their luxury villas on Respondent’s website for rental purposes, it is also reasonable to argue that those owners’ right to refer to the “Aphrodite Hills” destination has been assigned to Respondent who is acting in the properties’ owners’ interests.
The Panel finds that the Oki Data principles are fulfilled in the case at hand and that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Complainant has not presented itself sufficient evidence that would undermine such finding of Respondent’s bona fide use. Complainant himself has expressly confirmed that “Aphrodite Hills” has meanwhile become a well-known destination on Cyprus, even for people from around the world. Complainant’s national Cypriot APHRODITE HILLS trademarks (which had not been officially introduced into this proceeding by Complainant, but were discovered by the Panel itself and helped to overcome the threshold test of paragraph 4(a)(i) of the Policy) are word-/device marks with a distinctive device element showing a picture of the Greek goddess Aphrodite.. Furthermore, Complainant’s APHRODITE RENTALS trademark has only been applied for in June 2013 and, therefore, well after the disputed domain name was created.
Accordingly, the Panel finds that Respondent has successfully established rights or legitimate interests in the disputed domain name for purposes of the Policy. In light of the above finding, it is unnecessary for the Panel to consider the further question as to whether or not the disputed domain name has been registered and used by Respondent in bad faith.
As a final remark, the Panel has also taken into account that the UDRP was designed to deal with clear cut cases commonly known as cybersquatting and not to decide whether the holder of a trademark should be entitled to establish a bar to the entry of online competitors or other legitimate online resellers (see DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481). For such finding, Complainant may need to address the case at hand to other forums. 7. Decision
For the foregoing reasons, the Complaint is denied.
Stephanie G. Hartung, LL.M.
Sole Panelist
Date: November 24, 2014
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