The Complainants are Accor SA of Issy-Les-Moulineaux, France and Swissôtel Management GmbH of Kloten, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Hilmi Kurklu, Kurklu Bilisim Insaat Taahhut Ve Ticaret of Adana, Turkey, and Data Protected Data Protected / Data Protected of Toronto, Canada. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2018, 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 June 5, 2018.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2018.
The Center appointed Halvor Manshaus as the sole panelist in this matter on July 4, 2018. 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
The Complainant owns and operates hotels under the trade name “Swissôtel” in several countries worldwide. The Complainant owns the word mark SWISSÔTEL, registered inter alia in the European Union (app. no. 002285567), having priority from July 4, 2001 and registered on November 8, 2002, inter alia in class 35 including “Business management of hotels; business and hotel management consultancy relating to franchising; retail, wholesale and sales services; compiling mailing lists; mail order and telephone ordering services and ordering services via other telecommunications media; direct mail advertising”. The Complainant owns similar trademarks in several other jurisdictions worldwide, including trademarks based on the Complainant’s international trademark SWISSÔTEL (app. no. 652800), registered on September 19, 1995, inter alia in class 42 including “Catering and accommodation services, in particular in hotels with fitness and business centres, and services in connection with bookings in the hotels and restaurants sector.” The Complainant has also registered other trademarks comprising the term “Swissôtel”, inter alia international trademark SWISSÔTEL HOTELS & RESORTS LIVE IT WELL (app. no. 1305702), registered on March 17, 2016, inter alia in class 43 including “Services for providing food and drink; temporary accommodation; hotel services”.
The Complainant owns domain names comprising its trademarks, inter alia registered on December 16, 1996, through which the Complainant promotes the Complainant’s brand and business.
The Respondent is a private individual. The Respondent is identified as the owner of the disputed domain names , first registered on February 6, 2018, , first registered on February 6, 2018, , first registered on February 6, 2018 and , first registered on February 6, 2018. As of the date of this decision, the disputed domain names resolve to websites displaying the text “UNDER CONSTRUCTION”, but which are otherwise without content. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Complainant owns rights in the trademark SWISSÔTEL, and that this trademark is well-known and protected worldwide particularly in relation to hotels and restaurant services. The Complainant has used the trademark SWISSÔTEL in connection with a wide variety of services around the world. The public has thereby learnt to perceive the services offered under the SWISSÔTEL trademark as being those of the Complainant.
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s trademarks as they reproduce the trademark SWISSÔTEL in its entirety. Since the disputed domain names consist of the Complainant’s trademark SWISSÔTEL with the addition of the generic term “casino” and the geographical terms “Cyprus”, “Girne” and “Kibris”, Internet users are likely to believe that the disputed domain names are operated by the Complainant in relation to the Complainant’s casino services or hotels at the stated geographical locations. The addition of the extension “.com” shall not be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain names.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is neither affiliated with the Complainant in any way nor has the Respondent been authorized or licensed by the Complainant to use and register the Complainant’s trademark SWISSÔTEL, or to seek registration of any domain names incorporating the SWISSÔTEL trademark. The Respondent is not known by the name of SWISSÔTEL. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names. Consequently, the Respondent has failed to show any intention of noncommercial or fair use of the disputed domain names.
Email servers have been configured on the disputed domain names and thus, there may be a risk that the Respondent is engaged in a phishing scheme. Based on the Respondent’s lack of response to the Complainant’s contentions, it can be assumed that the Respondent has no rights or legitimate interest in the disputed domain names.
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. Given the existence of the Complainant’s registered trademarks and that the Complainant’s trademark SWISSÔTEL is well-known throughout the world, it is implausible that the Respondent was unaware of the Complainant’s trademark rights. The Respondent’s more or less passive holding of the disputed domain names constitute bad faith use in light of existing UDRP case law. The Respondent has registered the domain names to reproduce the Complainant’s famous trademarks in a domain name in order to attract Internet users to inactive websites and to prevent the Complainant from using its trademarks in the disputed domain names. The configuration of email servers on the disputed domain names entails that there is a risk that the Respondent is engaged in a phishing scheme, which would constitute bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain names be transferred to the Complainant.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied for each of the disputed domain names:
(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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Based on the evidence submitted by the Complainant, describing the Complainant’s extensive trademark registrations and associated business, the Panel finds that the Complainant owns rights to the trademark SWISSÔTEL in several jurisdictions, against which the disputed domain names may potentially constitute a violation of the Policy as concerns the Complainant’s trademark rights.
The disputed domain names, , , and , comprise the Complainant’s trademark SWISSÔTEL practically in its entirety. The addition of the descriptive suffix “casino”, the geographic suffixes “Cyprus”, “Girne” and “Kibris”, and the Top‑Level Domain (“TLD”) extensions “.com” or “.net” do not prevent a finding of confusing similarity with the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel has not been presented with, or otherwise discovered, any evidence showing: (i) that the Respondent has received a license or other permission to use the Complainant’s trademarks or any domain name incorporating or simulating these marks; (ii) that the Respondent is commonly known by the disputed domain name; (iii) that the Respondent has acquired trademark or service mark rights to use the disputed domain name; or (iv) that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The combination of the fanciful term “swissotel” and the descriptive suffix “casino” and the geographic suffixes “Cyprus”, “Girne” and “Kibris” in the disputed domain names is naturally understood as referring to the Complainant’s business and SWISSÔTEL trademark. These suffixes also refer to the Complainant’s casino services and the Complainant’s hotels at the stated geographic locations, which reinforces the connection with the Complainant’s business and trademarks.
The presented evidence referred to by the Complainant is, in the Panel’s view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. As held by the panel in Ticketmaster Corporation v. Global Access,WIPO Case No. D2007-1921, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name when such prima facie case is made.
The Respondent has not replied to the Complainant’s contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has not submitted sufficient proof with regards to paragraph 4(b)(i) through 4(b)(iv) of the Policy, which provides for specific circumstances that shall be considered as evidence of the registration and use of a domain name in bad faith, nor has the Panel uncovered any such proof. The question then is whether there is any other evidence for the Respondent’s registration and use of the disputed domain name in bad faith.
The Panel considers it likely that the Respondent was aware of the Complainant’s trademark SWISSÔTEL at the time of registration of the disputed domain name. In any case the Respondent had or should have had such knowledge as per the Complainant’s registration of the trademark worldwide.
Further, as described above concerning rights or legitimate interests, the Panel has found that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This Panel therefore concludes that the Respondent sought to register the disputed domain name because of its association with the Complainant, the Complainant’s reputation and the Complainant’s business. Taken together with the fact that the Respondent has not filed any Response in these proceedings and that the Respondent has registered a number of domain names comprising the Complainant’s trademark SWISSÔTEL practically in its entirety in combination with descriptive and geographical suffixes relating to the Complainant’s business under the trademarks, the Complainant has, in the Panel’s view, established on balance that the Respondent registered and used the disputed domain name in bad faith.
The Panel further notes that the disputed domain names do not resolve to any active website – so-called passive holding of the domain name. As held in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and confirmed in later UDRP cases, the passive holding of a domain name can, in certain circumstances, constitute a domain name being used in bad faith.
As noted in Telstra, supra and adhered to in later decisions, cf. Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131 and Sanofi-aventis v. Gerard Scarretta,WIPO Case No. D2009-0229, the question as to which circumstances may constitute a domain name being used in bad faith cannot be answered in the abstract, and must instead be answered in respect of the particular facts of a specific case. In the present case, the Panel bases its decision in this regard on the following circumstances:
(i) the Complainant’s trademark SWISSÔTEL is distinctive and widely known, and is registered worldwide;
(ii) the Respondent has not substantiated any actual or contemplated good faith use of the disputed domain names, and it is difficult to conceive of any such good faith use;
(iii) the Respondent has registered four domain names comprising the Complainant’s trademark SWISSÔTEL practically in its entirety in combination with descriptive and geographical suffixes relating to the Complainant’s business under the trademarks;
(iv) the Respondent has failed to respond to the Complainant’s correspondence regarding the registration and use of the disputed domain names, and has similarly failed to respond to the Complainant’s contentions in this dispute; and
(v) taking the above into account, it is difficult to conceive of a plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant’s rights under trademark law.
The Panel thus concludes that the Respondent has registered and used the disputed domain names 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 names, , , , and be transferred to the Complainant.
Halvor Manshaus
Sole Panelist
Date: July 20, 2018
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