The Complainant is VUR Village Trading No. 1 Limited t/a Village Hotels, United Kingdom, represented by DWF LLP, United Kingdom.
The Respondent is Puneet Malhotra, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with Global Domains International, Inc. DBA DomainCostC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing full registrant and contact information for the disputed domain name which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2019, providing the full 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 April 30, 2019.
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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Response was filed with the Center on May 21, 2019.
On May 22, 2019, the Center received the Respondent’s communication offering to negotiate. Accordingly, the Center sent an email communication on May 23, 2019, to the Parties asking if they wish to settle their dispute. In response, the Complainant made an offer for settlement on May 28, 2019. On the same day, the latter offer was rejected by the Respondent and the Center proceeded to panel appointment.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 7, 2019. 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
According to the Complaint, the Complainant was established in the United Kingdom in 1995. Its business now comprises of some 30 hotels in the United Kingdom. Its revenue for the 12 months ending on December 21, 2017 was GBP 195,051,000.
According to the Report and Financial Statements annexed to the Complaint, the Complainant’s hotels are located on the outskirts of cities and major towns in the United Kingdom in places such as Aberdeen, Bournemouth, Coventry, Newcastle, Swindon, and the like. The average number of hotel rooms in the Complainant’s hotels is 120.
The Complainant is the owner of two registered trademarks, both registered for a range of services in International Classes 41, 43, and 44 including hotel services:
(a) United Kingdom Registered Trademark No. UK00003133461, VILLAGE HOTELS; and
(b) European Union Registered Trademark No. 014764781, VILLAGE HOTELS.
The United Kingdom registered trademark was filed on October 27, 2015, and entered in the register on March 18, 2016. The European Union registered trademark was filed on November 5, 2015, and entered in the register on March 9, 2016.
If one undertakes a search of “village hotels” on the Google search engine in the United Kingdom, it appears that all the results listed on the first page of the search results reference the Complainant’s operations.
According to the Registrar, the Respondent registered the disputed domain name on July 17, 2018.
According to the Complainant, the Respondent has not made any use of the disputed domain name. At the time this decision is being prepared, the disputed domain name resolves to a website which is a “Coming Soon” landing page which bears the legend “Villages and Hotels in India …”. No information is available about the date on which this page was uploaded.
On March 22, 2019, the Complainant’s lawyers sent a cease and desist letter to the Respondent. No response was received. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at the least the two registered trademarks for VILLAGE HOTELS referred to in section 4 above. The Complainant also claims a valuable goodwill and reputation at common law in the expression. The Panel notes the substantial revenues generated by the Complainant’s business in the United Kingdom. Bearing in mind the considerable descriptive element of the claimed trademark, however, it would require very careful consideration of the precise form in which the claimed trademark has been used to reach a conclusion on this issue. The evidence advanced by the Complainant shows the expression “Village Hotels” presented on the Complainant’s home page in a banner in a very stylised or fancy form in which the word “village” is presented in a fancy font where each letter is outlined by two lines and the word “hotels” is underneath in a plain sans serif font. There are also numerous uses of “village” on the Complainant’s website either alone or in combination with other words such as “Village Hotels Club” and “Village Gym”. Notwithstanding the substantial revenues accruing to the Complainant’s business, therefore, the Panel is unable to find that the Complainant has acquired a reputation in the bare expression “Village Hotels” having regard to the limited evidence of how the Complainant has used the claimed trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, sections 1.7 and 1.11.
The disputed domain name differs from the Complainant’s trademark by omission of the space between the words “village” and “hotel” and the addition of the Top Level Domain (“gTLD”), “.app”. These differences are insignificant and may be disregarded.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
It is clear from the Complaint that the Complainant has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with the Complainant in any way. Nor does the Respondent claim any such right or association. Further, the disputed domain name is plainly not derived from the Respondent’s name. The Complainant also states that the Respondent has not used the disputed domain name in connection with a good faith offering of any goods or services nor made demonstrable preparations to do so. It contends that any website or email address using the disputed domain name has the potential for fraud as it would be likely to cause confusion in the minds of the public that the disputed domain name was connected with the Complainant in some way.
These factors are typically sufficient to raise the required prima facie case.
In answer, the Respondent points out that he registered the disputed domain name after the expiry of the Sunrise and Early Access periods for domain names in the “.app” gTLD. That is, when it was available for registration on a first come, first served basis. The Respondent points to the “Coming Soon” webpage indicating that the Respondent intends to set up a website about villages and hotels in India. The Respondent also claims that he “has plans” for an “app” related to this.
The Panel notes, first, that domain names registered in the “.app” gTLD are registered subject to the Policy even after the expiry of the Sunrise and Early Access periods. So the fact that the Respondent registered the disputed domain name after those periods had expired does not automatically confer on him rights or legitimate interests under the Policy.
WIPO Overview 3.0, section 2.2, outlines that a finding of demonstrable preparations to use a disputed domain name in connection with a good faith offering of goods or services needs to be assessed pragmatically in light of all the circumstances but almost always requires clear contemporaneous evidence of preparations undertaken before the dispute between the parties arose.
Examples of suitable evidence given include (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. Similar considerations apply where it is claimed that the disputed domain name was registered for legitimate fair use or other noncommercial purposes.
The nature of the Respondent’s “Coming Soon” webpage has been described above. As also noted above, it is not clear when this page was uploaded. No details about the planned content of the website have been provided. Nor of any steps which have been taken to develop that content or the content for the claimed “app”. Bearing in mind that the Respondent registered the disputed domain name almost one year ago, the mere uploading on Wordpress of a “Coming Soon” page as described is far too sketchy a basis to support a claim to demonstrable preparations for use in good faith.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant points to the length and extent of its use of its trademark and, at least in the United Kingdom, its dominating presence in results using the Google search engine. The Complainant contends that the disputed domain name has been registered and is used in bad faith because it blocks the Complainant from registering its trademark in the “.app” gTLD. The Complainant also contends that the Respondent has a history of registering domain names “infringing the intellectual property rights of others”, citing the Respondent’s registration of the domain name .
The Respondent points out that the Complainant’s business is in the United Kingdom. He says that he has no business or intention to deal in the United Kingdom market. As the Panel has been unable to accept the Respondent’s claim to rights or legitimate interests in the disputed domain name for the reasons outlined in section 5B above, it is not appropriate to take the claimed business plan into account. The issue here, however, is whether or not the Respondent registered the disputed domain name in bad faith. Even in the case of the example given by paragraph 4(b)(ii) relied on by the Complainant:
“the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct”,
there must be both a “pattern” and an intention: “in order to prevent” the trademark owner from registering its trademark in a domain name. In assessing that intention, it may be permissible to have regard to the objective circumstances. Nonetheless, it must still be possible to infer from the objective circumstances that the Respondent did have the stipulated intention.
The Complainant has not identified the intellectual property rights of others which the registration of is said to infringe. The Panel’s own search reveals three registrations for the word “Dumpster” alone. One is in the European Union, registered in International Classes 7 and 12 in respect of earth moving and excavation equipment. Another is in the Republic of Korea in respect of International Class 25, and the third is in Germany in International Classes 22, 35, 37, and 39. Each is registered in a different person’s name. The Shorter Oxford English Dictionary defines “Dumpster” as a proprietary name in the United States for a large bin or skip. A search of the United States Trademarks Register discloses numerous registered trademarks in the name of many different people which include the word “dumpster”. Those registrations generally include a disclaimer of exclusive rights in the word itself.
There is no evidence that the Respondent has visited the United Kingdom or used the Complainant’s services. Given the Complainant’s presence on the Internet, it is plainly possible that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark even if he has not visited the United Kingdom. The expression “village hotels”, however, is a combination of ordinary English words in a not unnatural way and which is not devoid of descriptive significance in relation to hotel services. In this setting, it is not at all implausible that the Respondent registered the disputed domain name without knowledge or awareness of the Complainant. This appears to the Panel to be as likely as that the disputed domain name was registered with knowledge of the Complainant’s trademark and to take advantage of it.
In these circumstances, as the Complainant has the onus of proof on this point, the Complainant has failed to show that the disputed domain name has been registered in bad faith. Accordingly, the Complaint must fail. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: June 21, 2019
Full & Egal Universal Law Academy