The Complainant is Mandarin Oriental Services B.V. of the Netherlands, represented by The GigaLawFirm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America ("United States").
The Respondent is Domain Administrator, Matama of Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 29, 2017, 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 amendment to the Complaint on March 30, 2017.
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").
In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was April 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 24, 2017.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 28, 2017. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is an award-winning owner and operator of some of the world's most luxurious hotels, resorts and residences, all under the brand "Mandarin Oriental", which was established in 1974. The Complainant operates 29 hotels and eight residences in 19 countries and territories worldwide. The Complainant's parent company, Mandarin Oriental International Limited, is incorporated in Bermuda and has a standard listing on the London Stock Exchange, with secondary listings in Bermuda and Singapore.
The Complainant is the owner of numerous trademark registrations worldwide for marks that consist of or contain "Mandarin Oriental", covering, inter alia, hotel services, including United States trademark registration number 1,764,807 MANDARIN ORIENTAL, registered on April 13, 1993, and further similar registrations in the United States, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), with the European Union Intellectual Property Office and with the World Intellectual Property Organization (jointly the "MANDARIN ORIENTAL Mark").
The Complainant, via its entity Mandarin Oriental Hotel Group Limited, is the registrant of the domain name , created on August 23, 1996, which the Complainant uses in connection with the goods and services associated with the MANDARIN ORIENTAL Mark.
The Respondent registered the disputed domain name on March 2, 2017 and was using it originally to redirect Internet visitors to the Complainant's own website. At least since March 30, 2017, the disputed domain name is being used in connection with a monetized parking page that contains links related to the Complainant and the Complainant's hotel services offered under the MANDARIN ORIENTAL Mark including links to competing websites. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the MANDARIN ORIENTAL Mark as the Respondent fully incorporated the MANDARIN ORIENTAL Mark into the disputed domain name and simply added the definitive article "the", which cannot be considered distinctive.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant's MANDARIN ORIENTAL Mark in any manner. To the best of the Complainant's knowledge, (1) the Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services (in particular, redirecting Internet visitors to the Complainant's own website is not a bona fide offering of goods or services), (2) the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights therein, and (3) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MANDARIN ORIENTAL Mark.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith as the Respondent is redirecting the disputed domain name to the Complainant's own website, and (later) using it in connection with a monetized parking page, as the Complainant's registration of the MANDARIN ORIENTAL Mark in the United States pre-dates the registration of the disputed domain name by the Respondent by more than 20 years, and as the disputed domain name is "so obviously connected with" the Complainant that the Respondent's actions suggest "opportunistic bad faith" in violation of the Policy. The Complainant further contends that the transfer of the disputed domain name after the Complaint was filed constitutes a so-called "cyberflight" and as such occurred in violation of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; 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
The disputed domain name fully incorporates the Complainant's MANDARIN ORIENTAL Mark, adding only the definite article "the", and is therefore confusingly similar to such mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case under of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent. If the respondent fails to rebut the complainant's prima facie showing, the complainant may be deemed to have fulfilled the requirements under the second element.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Based on the evidence before the Panel, the Panel cannot otherwise find any rights or legitimate interests of the Respondent either. In particular, the fact that the Respondent was redirecting the disputed domain name to the Complainant's own website, and that it was (later) using it in connection with a monetized parking page does not constitute rights or legitimate interests of the Respondent in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name in bad faith: Within a few weeks of registering the disputed domain name, the Respondent was using it to redirect traffic to the Complainant's website. The Complainant's parent company, Mandarin Oriental International Limited, has a secondary listing on the stock exchange in Singapore, where the Respondent has its seat. "Mandarin" may refer to a title or a language and "oriental" to a region or origin, and the combination of these two notions is highly imaginative. With a view to these facts and in the absence of a reply to the Complaint, on balance, it seems more likely than not that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the MANDARIN ORIENTAL Mark.
Redirecting the disputed domain name to the Complainant's own website implies also bad faith: Such behavior includes the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant (see MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231), and may increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant (see PayPal Inc. v. Jon Shanks,WIPO Case No. D2014-0888).
Moreover, the Respondent's use of the disputed domain name in connection with a monetized parking page including links for services competitive with those offered by Complainant also constitutes bad faith as set forth in paragraph 4(b)(iv) of the Policy (see Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 the Complainant.
Brigitte Joppich
Sole Panelist
Date: May 10, 2017
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