Complainant is The Indian Hotels Company Limited of Mumbai, India, represented by Anand & Anand, India.
Respondent is Roger Price of Guildford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 23, 2018, and Complainant filed a second amended Complaint on October 24, 2018 to address an administrative formality.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. On October 26, 2018, Respondent requested an 11-day extension of the Response due date. On the same day, the Center sent an email to the Parties asking Complainant to comment on Respondent’s request for extension by October 30, 2018, and granting a four‑day extension to Respondent. On October 31, 2018, the Center, having received no comment from Complainant on Respondent’s request for extension, granted Respondent a further four-day extension of time, and confirmed the new Response deadline was November 23, 2018. The Response was filed with the Center on November 21, 2018.
The Center appointed Georges Nahitchevansky, Vinod K. Agarwal, and Nick J. Gardner as panelists in this matter on December 14, 2018. The Panel finds that it was properly constituted. Each member of 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, The Indian Hotels Company Limited, is a hospitality company and a subsidiary within The Tata Group of companies. Complainant owns and manages through its subsidiaries a number of hotels, palaces, and resorts in India and internationally that operate under such brand names as TAJ, SELEQTIONS, VIVANTA, GINGER, and THE GATEWAY. Complainant was incorporated in India in 1902 and opened its first hotel in Bombay, The Taj Mahal Palace. Complainant has for many years used and been commonly referred to by the names and marks the “TAJ Group of Hotels” and “TAJ Hotels Resorts and Palaces”.
Complainant registered the domain name on March 28, 1996 and has used that domain name since at least as early as 1999 in connection with a website promoting Complainant’s hotels and resorts under its various brands, and to provide information about Complainant. Additionally, Complainant registered the domain name on June 14, 2018 and has used that domain name in connection with a website promoting Complainant and its hotels. On that website Complainant refers to itself as both The Indian Hotels Company Limited and IHCL.
Respondent is an individual based in the United Kingdom. Respondent operates a number of travel-related websites such as , , and . Respondent also owns a number of hotel-related domain names that relate to the Indian hotel and travel industry.
The disputed domain name was originally registered on August 9, 1998. Respondent acquired the disputed domain name on September 16, 2016. At some point shortly thereafter, Respondent began using the disputed domain name with an India-specific travel website that offers the ability to search and book hotels in a number of cities or other locations throughout India. Respondent operates as an affiliate agent for the online travel company B, and the actual hotel booking services on Respondent’s website at the disputed domain name are provided by B. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns common law or unregistered trademark rights in the name and mark INDIAN HOTELS which Complainant claims it adopted in 1902. Complainant argues that the INDIAN HOTELS mark is inherently distinctive in the hospitality industry by virtue of Complainant’s unbroken, extensive and continuous use and promotion of the INDIAN HOTELS mark since 1902, and on account of the extensive public recognition that the INDIAN HOTELS mark has received in relation to Complainant and its well-known hotel brands and hotel services.
Complainant contends that the disputed domain name is identical or substantially identical to Complainant’s INDIAN HOTELS mark as it fully incorporates Complainant’s INDIAN HOTELS mark.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name on the basis that because Complainant has extensive goodwill and reputation in the INDIAN HOTELS mark, Respondent’s use of the disputed domain name will induce consumers into believing that the disputed domain name and associated website are connected to Complainant. Complainant further contends that Respondent’s use of the disputed domain name dilutes the exclusivity of Complainant’s rights in the INDIAN HOTELS mark, particularly as Respondent operates in the same industry as Complainant.
Finally, Complainant asserts that Respondent has acted in bad faith as Complainant’s INDIAN HOTELS mark is well-known in India and has been used by Complainant since 1902, a date well before Respondent registered the disputed domain name. Complainant also argues that Respondent has acted in bad faith as Respondent (a) is using the disputed domain name to mislead consumers and the trade into believing that Respondent’s goods or services are those of Complainant, (b) wrongly or fraudulently obtained the disputed domain name with false or misleading proprietary claims or facts, and (b) has fraudulently registered the disputed domain name that properly belongs to Complainant, as it is solely based on Complainant’s INDIAN HOTELS mark. B. Respondent
Respondent rejects Complainant’s contentions.
Respondent contends that “indianhotels” consists of two generic words that are not exclusive to Complainant. Respondent further contends that the use of “indianhotels” (which is the way “Indian Hotels” would normally appear in a domain name) describes the field of operation of both Complainant and Respondent, and thus also could be used by any other Indian hotel organization with more than one hotel under its control.
Respondent argues that “indianhotels” is not a term that is exclusively associated with Complainant. In that regard, Respondent contends that “indianhotels” is not a trademark or brand name that has been used by Complainant at any time since its foundation in 1902. Respondent maintains that Complainant has used and been referred to by the names and marks “Taj Hotels Resorts and Palaces” and “Taj Group” for its hotel services and not by the brand name “indianhotels.” Respondent also maintains that Complainant has used various brand names in connection with its hotels, such as TAJ, VIVANTA, GINGER, THE GATEWAY, and SELEQTIONS, but not “indianhotels”.
Respondent asserts that the disputed domain name does infringe on any of the brands owned and operated by the Taj Group of Hotels, given that “indianhotels” is not a brand owned or used by Complainant. Respondent contends that Complainant has only recently started to use the name “indianhotels,” and in that regard notes that Complainant only registered and started using the domain names and in mid-2018. Respondent argues that such recent actions by Complainant underscores the fact that Complainant made no real effort before mid-2018 to use or establish “indianhotels” as a brand owned by Complainant.
Respondent contends that he has a legitimate interest in the disputed domain name as Respondent has (i) an absolute right to own the disputed domain name that consists of a combination of two generic words, and (ii) used the disputed domain name not for purposes of harming Complainant or to take away business from Complainant, but for purposes of promoting hotel bookings and travel related services in India as an affiliate agent for B.
Lastly, Respondent rejects any allegations that he has registered or used the disputed domain name in bad faith. Respondent argues that he legitimately and in good faith acquired the disputed domain name in an open auction through NameJet in September 16, 2016 for the sum of USD 1,260. Respondent also notes that the disputed domain name was originally registered on August 9, 1998 and was not in active use from 2002 up until after Respondent acquired the disputed domain name in September 2016. Finally, Respondent maintains that he operates a number of legitimate travel related websites and purchased the disputed domain name, which is not based on any trademark owned by Complainant, for the express purpose of developing a travel website focused on India. Respondent further maintains that he has never tried to sell the disputed domain name to Complainant or otherwise derive a financial benefit from Complainant or any other party, has never tried to take advantage of Complainant’s names or brands for profit, and has not sought to divert consumers looking for Complainant or to negatively impact Complainant’s business. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. The touchstone, however, is that an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. A. Complainant’s Alleged Common Law Trademark Rights
Complainant does not own an existing or pending trademark registration or application for the mark INDIAN HOTELS. Consequently, the issue before the Panel is whether, and to what extent, Complainant owns common law or unregistered rights in INDIAN HOTELS, and when and to what extent such rights arose. See section 1.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In that regard, Complainant must establish that its claimed INDIAN HOTELS mark has become a distinctive identifier which consumers associate with Complainant’s goods and/or services. Proof of such rights cannot be based on conclusory allegations, particularly where, as here, a claimed trademark consists of a combination of two generic words. Id. For this reason, Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. and cases cited therein.
Complainant claims common law or unregistered rights in the mark INDIAN HOTELS on the basis that Complainant was incorporated in India under the name The Indian Hotels Company Limited in 1902 and that Complainant has used the mark and name “INDIAN HOTELS” in connection with its services since that time. Complainant maintains that such continuous and longstanding use of INDIAN HOTELS has made the INDIAN HOTELS mark inherently distinctive and known to consumers as referring to Complainant and its hotels and related services. In support of those contentions, Complainant has provided (i) a copy of its Certificate of Incorporation for The Indian Hotels Limited Company, (ii) printouts from October 2018 from various websites and social media pages operated by Complainant for its hotels, (iii) reviews and awards of Complainant’s hotels under their various brand names, (iv) October 2018 booking and information pages for some of Complainant’s hotels (under their various brand names) from various third party online travel websites, (v) several 2018 articles from a variety of Indian or online publications regarding Complainant and/or its hotel and resort brands, and (vi) Twitter and Instagram pages showing some postings from November 2016 through 2018 for the hashtag “#IndianHotels.” In total, these submissions show some use by Complainant of the trade name “The Indian Hotels Company Limited” in 2017 and 2018, some 2018 references by parties in India to Complainant’s company as The Indian Hotels Company Limited, and to some extent some post-November 2016 references to Complainant under the name “#IndianHotels”.
Notably, while Complainant claims that the INDIAN HOTELS name and mark is inherently distinctive and well known to consumers as referring to Complainant and its hotels, much of the evidence submitted by Complainant (which is mostly from October 2018) actually refers to Complainant’s TAJ hotels and shows use of the “TAJ Group of Hotels” and the “TAJ Hotels Palaces and Resorts” names as a reference to Complainant. For example, while Complainant submits a list of awards it claims it has received, the awards and related articles mostly refer to “The Taj Mahal Palace hotel” or the “TAJ Group of Hotels.” There is no mention of INDIAN HOTELS in these awards and articles. In fact, much of the evidence submitted by Respondent similarly shows that Complainant has often referred to itself under the names “TAJ Group of Hotels” and “TAJ Hotels Palaces and Resorts” (a fact that Complainant itself admits in its Complaint), and that it has only been fairly recently in 2018 that Complainant has made increased use of the trade name “The Indian Hotels Company Limited” and perhaps some arguable trademark use of “Indian Hotels.” What is missing in Complainant’s submissions is any evidence that Complainant was using INDIAN HOTELS as a trademark prior to mid-2018. The mere incorporation of the corporate name “The Indian Hotels Company Limited” in 1902 does not in and of itself confer or establish trademark rights in INDIAN HOTELS as a trademark that dates back to 1902, let alone establish that INDIAN HOTELS is inherently distinctive. What is needed but has not been submitted by Complainant on its claim of longstanding and well-known rights in INDIAN HOTELS is evidence of continuous and systematic use of INDIAN HOTELS by Complainant as a trademark, or any evidence showing that consumers have perceived INDIAN HOTELS as a trademark of Complainant prior to Respondent’s acquisition of the disputed domain name in September 2016.
It is worth noting that while Complainant claims to have used INDIAN HOTELS on letterhead, sales promotional materials, brochures and many other items, Complainant did not submit examples of such use either currently or historically. In addition, while Complainant claims widespread use of INDIAN HOTELS on the Internet, what was submitted is mostly from 2018 and does not show use of the mark INDIAN HOTELS standing alone. Given that Complainant made reference to its website at to claim use of INDIAN HOTELS, and included printouts from that website, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival website pages for Complainant’s website at the domain name which are available through the Internet Archive at “”. See WIPO Overview 3.0 at section 4.8. Interestingly, the archival pages for the website at “www.” show that from 1999 up through mid-2018 Complainant referred to itself on the home page of the website as “Taj Hotels Palaces and Resorts,” and that at some point thereafter Complainant revised the home page and started using the name “The Indian Hotels Company Limited”. Further, the Panel notes that Complainant only registered and started using the domain name in mid-2018. However, the website at that domain name does not show use of the mark INDIAN HOTELS standing alone, but includes numerous references to “IHCL” and some references to the trade name “The Indian Hotels Company Limited.”
To overcome this lack of evidence, Complainant has attempted to establish rights in the INDIAN HOTELS mark based on the fame of the TAJ brand of hotels, resorts and related services. In essence, Complainant is arguing that because the TAJ brand of hotels and the “TAJ Group of Hotels” have enjoyed notoriety in the hospitality industry, consumers somehow perceive INDIAN HOTELS, which is part of the official corporate name of Complainant, as being a trademark owned by Complainant. Such argument is misplaced. The fundamental flaw in Complainant’s contention is that the evidence submitted by Complainant and Respondent shows that Complainant has until fairly recently primarily referred to itself to consumers and the trade as either the “TAJ Group of Hotels” or “TAJ Hotels Palaces and Resorts” and not under the name and mark INDIAN HOTELS. At best, Complainant has made some limited incidental use of The Indian Hotels Company Limited trade name (such as in small print at the bottom of its website at “www.”). Indeed, even the post November 1, 2016 Twitter and Instagram “#IndianHotels” hashtag use submitted by Complainant does not show use of INDIAN HOTELS by Complainant. At most what these pages show is that a limited number of third parties have put up some postings on these pages that refer to Complainant and/or the Indian hotel industry (which would be a descriptive use). This is not proof of continuous or purposeful use of INDIAN HOTELS by Complainant. Simply put, Complainant’s evidence regarding the notoriety of the TAJ brand of hotels or “TAJ Group of Hotels” is largely irrelevant in proving alleged common law or unregistered rights in INDIAN HOTELS, where, as here, there is no evidence showing a systematic and continuous use of INDIAN HOTELS. At best, Complainant has established that it has rights in the name and mark TAJ in relation to hotels, but not rights in INDIAN HOTELS.
So far as the Policy is concerned it does not matter for the purposes of this requirement that a complainant’s trademark rights may post-date a respondent’s date of registration of a domain name — see WIPO Overview 3.0 at section 1.1.3: “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.” In the present case, the evidence before the Panel does not establish that prior to mid-2018 Complainant was making any systematic use of INDIAN HOTELS as a brand, that INDIAN HOTELS was or became a well-known mark or that consumers ever perceived INDIAN HOTELS as a brand associated exclusively with Complainant.
The threshold for satisfying this first element is sometimes expressed as a “low” one and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. The Panel is willing to find on the basis of the filed evidence that Complainant was, with effect from 2018, making some limited usage as a trade mark of the words INDIAN HOTELS, in at least India. Whether that limited usage over only a short period of time prior to the Complaint being filed, suffices to establish that the term INDIAN HOTELS had become a distinctive identifier which consumers associate with the complainant’s goods and/or services is not something the Panel needs to reach a conclusion on, given its findings under B and C below. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name (Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393). Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In assessing whether a respondent has rights or legitimate interests is a disputed domain name, the relevant time for the assessment is the date of the filing of the complaint (SeeWIPO Overview 3.0 at section 2.11). In this matter, Respondent has used the disputed domain name with a website that offers the ability to search for and book hotels in various cities and locales in India. The website lists various cities in India and when clicked on redirect the user to a web page generated by B that lists out available hotels in that location. As Respondent admits that it is an affiliate agent for B it is clear that Respondent obtains revenue from B for hotel bookings that flow through Respondent’s website at the disputed domain name.
Complainant argues that such use of the disputed domain name by Respondent for profit is not legitimate as Respondent is using the disputed domain name to take advantage of Complainant’s extensive goodwill and reputation in the INDIAN HOTELS mark to promote competing hotels services and/or to confuse consumers that Respondent’s website is somehow connected with Complainant. Such argument fails for two reasons.
First, Complainant, as noted above, has not established that it owned common law or unregistered rights in INDIAN HOTELS as of September 2016 when Respondent registered the disputed domain name and started using it with its hotel booking website focused on hotels in India. Consequently, Respondent’s use of the disputed domain name for a website to facilitate the booking of hotels in India could not be for the purpose of taking advantage of Complainant’s claimed but unproven trademark rights in INDIAN HOTELS. Second, the disputed domain name is a combination of two terms that together on their face can be seen as describing hotels that are based in India and/or hotels owned or operated by an Indian business (or possibly a native-American business). Given that Complainant has failed to prove trademark rights in INDIAN HOTELS, or that consumers associate INDIAN HOTELS as exclusively referring to Complainant, it appears to the Panel that because the disputed domain name is descriptive in nature and has been used by Respondent in its descriptive sense to refer to hotels based in India that could be booked through Respondent’s website, Respondent is using the domain name for a bona fide purpose, and not to play upon any alleged trademark rights of Complainant or to somehow mislead consumers into assuming a connection between Respondent and Complainant.
Based on the foregoing and on the evidence submitted, the Panel finds that Complainant has failed to successfully establish the second element of the Policy. C. Registered and Used in Bad Faith
Although Complainant’s Complaint fails for failing to prove the second element of the Policy, Complainant’s Complaint likewise fails under the third element of bad registration and use. Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. However, unlike the assessment of a respondent’s legitimate rights or interests in a disputed domain name, which have to be assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name by the respondent. See WIPO Overview 3.0 at section 3.8.1.
As Respondent registered the disputed domain name in September 2016, in order for Complainant to prevail it needs to establish that it had rights in INDIAN HOTELS as a trademark prior to September 2016. Given that Complainant has not on the present record established that it had any arguable common law or unregistered rights in INDIAN HOTELS prior to September 2016, the date when Respondent acquired the disputed domain name, Complainant has failed to meet is burden of showing that Respondent registered the disputed domain name in bad faith. Respondent could not have acted in bad faith to take advantage of an alleged INDIAN HOTELS mark that has not been shown by evidence to have been in existence as of September 2016.
Most of Complainant’s arguments regarding Respondent’s bad faith registration and use are based on unsubstantiated allegations and conjecture. Complainant, for example, simply states that (i) Respondent obtained the disputed domain name with “false proprietary claims,” (ii) the disputed domain name was registered in error, and (iii) Respondent obtained the disputed domain name by fraudulently misleading the facts. In support of these claims, Complainant does not provide any evidence. Complainant bases its entire claim on the notion that Respondent is a bad actor because Complainant owns alleged trademark rights in the mark INDIAN HOTELS. However, as Complainant failed to provide evidence that it owned trademark rights in the INDIAN HOTELS mark prior to September 2016, most of what Complainant claims (but without evidence) about Respondent’s actions is entitled to no weight. See WIPO Overview 3.0 at sections 3.1 and 4.2.
The Panel notes that there is no evidence in the record that establishes or shows that Respondent, who is based in the United Kingdom, might have acted fraudulently and/or that Respondent specifically targeted Complainant and its hotels in order to harm Complainant or to take advantage of Complainant’s business. The evidence before the Panel is that Respondent more likely than not registered a disputed domain name that has a descriptive meaning and then used such in its descriptive sense to legitimately promote the booking of hotels in India.
Accordingly, Complainant has failed to establish the third element under the Policy and the Complaint must be dismissed. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Moreover, under Paragraph 1 of the Rules Reverse Domain Name Hijacking (“RDNH”) is defined as “using the Policy in bad faith to attempt to deprive the registered domain name holder of a domain name.”
To be sure, when a complaint has failed, such does not automatic result in a finding of RDNH. The touchstone under Rule 15(e) is for a panel to determine whether the complaint constitutes an abuse of the administrative proceeding.
Here, Complainant made numerous allegations concerning its rights in INDIAN HOTELS, and how distinctive and well-known INDIAN HOTELS has become as referring to Complainant, that Complainant failed to support with any evidence. Instead, Complainant attempted to boot strap rights in INDIAN HOTELS by virtue of the claimed notoriety of Complainant’s TAJ and other brands of hotels and through numerous documents that simply concerned Complainant’s “TAJ Group of Hotels.” Complainant was undoubtedly well aware that Respondent acquired the disputed domain name in September 2016. However, Complainant made no attempt to prove any trademark rights in INDIAN HOTELS prior to September 2016 and only provided evidence of its alleged use of and rights in INDIAN HOTELS with mostly documents from October 2018. Complainant was aware of the applicable standard of bad faith registration and use in a UDRP proceeding and should have had some idea of what evidence would be needed in regards of its claimed INDIAN HOTELS mark in order to prevail.
Given the fact that Complainant glossed over its rights in INDIAN HOTELS with conclusory allegations, and similarly made conclusory claims about Respondent and Respondent’s actions, it is more likely than not that Complainant was, or should have been aware, that it did not have sufficient rights in INDIAN HOTELS to succeed in a UDRP proceeding. Complainant ought to have known it could not succeed under any fair interpretation of the facts reasonably available prior to the filing of the complaint and that basing its complaint on allegations without supporting evidence –was doomed to fail (see WIPO Overview 3.0, section 4.16).
Accordingly the Panel finds that Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Presiding Panelist
Vinod K. Agarwal
Panelist
Nick J. Gardner
Panelist
Date: December 28, 2018
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