Complainant is Mövenpick Holding AG of Baar, Switzerland, represented by SILKA Law AB, Sweden.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Abd El aal Mahmoud, Saua Societa Coop.A.R.L of Milan, Italy. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2016, 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 January 18, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 20, 2016.
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”).
Respondent filed a Response with the Center on January 22, 2016, prior to the commencement of the proceedings. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. Respondent confirmed on January 23, 2016 that its submission of January 22, 2016 was its complete response.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 19, 2016. 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, Mövenpick Holding AG, is the holding company of a Swiss group of companies that is active in the hospitality sector. Complainant’s Group of companies employs approximately 14,000 people world-wide and has over 100 hotels existing or under construction in the EMEA area and Asia. Complainant also offers cruises on the Nile, allowing customers to choose between several cruise ships.
Complainant is the holder of, inter alia, the following registered trademarks:
- MÖVENPICK, word mark, registered as an International Trademark under No. 865120 on November 15, 2004 in classes 29, 30, 31, 32, 33, 35, 39, 41, 42 and 43;
- MÖVENPICK, word mark, registered with the United States Patent and Trademark Office under No. 3093468 on May 16, 2006 in class 43;
- MÖVENPICK, combined mark, registered with the United States Patent and Trademark Office under No. 1197461 on June 8, 1982 in class 42, first used on July 3, 1948 and first used in commerce on December 15, 1979.
Complainant has used the MÖVENPICK trademark since 1979 in connection with hospitality services.
On March 6, 2007, the Disputed Domain Name was registered. Respondent registered the Disputed Domain Name, using a provider of privacy services. The Disputed Domain Name has been used to refer to websites on which reservation services for cruises on the Nile river were offered and incorporating variations of the MÖVENPICK trademark. After Complainant had contacted Respondent to remove all references to Complainant on the website, Respondent added images from Complainant to the website, as well as a disclaimer. The website was subsequently changed into an “under construction” webpage. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. B. Respondent
Respondent claims that, while he registered the Disputed Domain Name almost 10 years ago, he never used the Disputed Domain Name with an attempt to harm Complainant’s reputation or to use it in connection with any of the services for which Complainant has trademark rights. Respondent suggested that the Panel order the cancellation of the Disputed Domain Name rather than the transfer to Complainant. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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 applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name 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 Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a MÖVENPICK trademark in which it has rights. The trademark has been registered and used in various countries.
The Disputed Domain Name reproduces Complainant’s trademark MÖVENPICK, but with the dieresis on the letter ‘o’ removed and adding a hyphen and the generic terms “Nile” and “cruises”. The Panel is of the opinion that the removal of a dieresis and the mere addition of non-distinctive text and a hyphen to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy. (See Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software.) The addition of the words “Nile” and “cruises” may even add to the confusing similarity, as Complainant offers cruises on the Nile river under its MÖVENPICK trademark.
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy, paragraph 4(c)(iii). It appears that Respondent has been trying to impersonate Complainant to attract reservations for cruises on the river Nile. Either Respondent did offer cruises on the Nile, in which case Respondent has been trying to profit commercially from the likelihood of confusion with Complainant’s trademark, or Respondent did not offer cruises on the Nile, in which case Respondent likely used the likelihood for confusion for fraudulent purposes. The Panel further considers the addition of a disclaimer only after being put on notice by the Complainant does not otherwise provide the Respondent with a right or legitimate interest in the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities that the Disputed Domain Name was both registered in bad faith and is being used in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of a domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the respondent’s website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763.
In the present case, Respondent is using the Disputed Domain Name to advertise and obtain reservations for cruises on the river Nile. These services are in direct competition with the services offered by Complainant. Apart from the confusion that may have been created by the Disputed Domain Name itself, Respondent actively tried to increase the likelihood of confusion by publishing pictures of Complainant on its website. The introduction of a disclaimer does not cure this bad faith intent, nor is it likely that a disclaimer in small print at the bottom of the page removes any likelihood of confusion. Furthermore, given the notoriety of Complainant’s trademark, it is inconceivable to this Panel that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name.
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 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.
Flip Jan Claude Petillion
Sole Panelist
Date: March 14, 2016
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