The Complainant is ESTEVA OOMMM, S.L., C. of Barcelona, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is Pham Dinh Nhut / Vietnam Domain Privacy Services, both of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with April Sea Information Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2014. On November 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 the Complainant on December 9, 2014, 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 December 10, 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 December 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2015.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 13, 2015. 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. Language of the Proceeding
The Registrar confirmed that the language of the registration agreement was Vietnamese. The Complainant requests that the Language of the proceeding should be English, on the basis that it assumes that the Respondent has knowledge of English due to the fact that the website operated under the disputed domain name is in English, and the Privacy Policy and the Domain Inquiry, both accessible at the bottom of the website are in English, and that the time and cost involved in translating the Complaint and its annexes would be substantial. The Complainant points out that, as a Spanish company, its natural language would be Spanish, and its request that the language of the proceeding be English is an attempt to provide as the language of the proceeding a language understandable to both parties, rather than obtain an advantage to itself. The Center communicated with the Respondent, in both Vietnamese and English, as to the existence of the Complaint and the options available to the Respondent. The Respondent did not reply. The Panel takes the view that the Center’s providing the Respondent with options available to the Respondent in this proceeding in Vietnamese, and receiving no reply, is symptomatic of the Respondent’s disinterest in taking part in these proceedings, and that the Respondent, consequently, would not be damaged if the language of the proceeding should be English. The Panel also notes that the Respondent has used English in the website operated under the disputed domain name, and is of the opinion that it is reasonable to assume that the Respondent is not unfamiliar with the English language. In these circumstances, the Panel decides to exercise his discretion under paragraph 11a of the UDRP Rules, to the effect that the language of the proceeding should be English. 4. Factual Background
The Complainant is particularly involved in the operation of a five-star hotel called “HOTEL OMM”, which is located in the centre of Barcelona, Spain. The Complainant has provided the Panel with details of, inter alia, Spanish trademark registration No. 2446022, dating from 2001 (i.e., before the date of registration of the disputed domain name) of its trademark HOTEL OMM, and has also supplied the Panel with details of prizes won by the hotel, and of publicity concerning the hotel.
The disputed domain name was registered on September 5, 2004.
The disputed domain name resolves to a website containing pay-per-click links with information about five-star hotels in Barcelona, but also cheap hotels and third parties offering or advertising the “HOTEL OMM”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its HOTEL OMM trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, in particular that there is no evidence that the Respondent has been commonly known by the name “HOTEL OMM”, there is no evidence or a legitimate explanation for the Respondent’s acquisition for use of the disputed domain name, and that the Respondent has not been at any time authorized by the Complainant to register a trademark or domain name consisting out of the words “hotel omm”.
The Complainant alleges that the disputed domain name has been registered in bad faith, and that it is being used, as evidenced in the Complaint, in bad faith in connection with a website with pay-per-click links to hotels in Barcelona generally. The Complainant further alleges that the Respondent has engaged in a pattern of abusive domain name registrations, and has provided the Panel with evidence in this respect. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the complainant must prove to merit a finding that the disputed domain name be transferred to the complainant:
(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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case. What remains in the disputed domain name is merely the Complainant’s HOTEL OMM trademark, and the disputed domain name is, therefore, self-evidently, confusingly similar to the Complainant’s HOTEL OMM trademark.
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s trademark was incorporated in its entirety, with no additions beyond the legally irrelevant “.com” gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
It is well-established in prior UDRP decisions that use of a website having the capacity to divert consumers to competing services is use in bad faith. The Panel considers the circumstances of the present case, in which the website operated under the disputed domain name clearly has this capacity, as justifying a finding of use in bad faith, and the Panel so finds. In the light of this finding, the Panel has not felt it necessary to consider whether the Respondent has engaged in a pattern of abusive domain name registrations.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii). 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.
George R. F. Souter
Sole Panelist
Date: January 27, 2015
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