The Complainant is Belmond Limited, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Diane Holetz, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2020 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 February 6, 2020.
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 February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 11, 2020. 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.
On March 23, 202020, the Panel issued Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1. The Complaint and Amended Complaint do not provide any evidence that the Complainant owns a registered trade mark, rather the Complainant asserts that a wholly owned subsidiary of the Complainant Belmond Interfin Ltd (or in the case of USPTO Registration Number 4832479, Orient-Express Hotels Interfin Ltd., the former name) is the registered owner of the BELMOND Mark.
2. Section 1.4. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides in response to the question: Does a trademark owner’s affiliate or licensee have standing to file a UDRP complaint? that
“A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint.
In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.”
3. The Complaint provides no proof that Belmond Interfin Ltd is a wholly owned subsidiary of the Complainant or that the Complainant is an exclusive licensee of the Belmond trade marks from Belmond Interfin Ltd.
Therefore the Panel makes the following orders:
1. The Complainant has until March 31, 2020 to either
a. file any supplemental statements or documents providing any additional information that would establish that:
i. Belmond Interfin Ltd is a wholly owned subsidiary of the Complainant; or
ii. The Complainant is the exclusive licensee of the Belmond Mark from Belmond Interfin Ltd; or
b. Provide the Center with:
i. Clear authorization from Belmond Interfin Ltd for the Complainant to commence these proceedings on its behalf, including confirmation that it is satisfied that, if successful, the Domain Name shall be transferred to the Complainant; or
ii. Notice that Belmond Interfin Ltd is to join the proceedings as a Second Complainant.
2. The Respondent shall thereafter have until April 8, 2020 to file any response to the Complainant’s supplemental statement(s).
3. Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to [e-mail address] for forwarding to the Panel.
The Panel will deliver its decision on or before April 16, 2020.”
On March 31, 2020 the Complainant filed a supplemental filing including documents confirming that Belmond Interfin Ltd is a wholly owned subsidiary of the Complainant. The Respondent did not file any response to the Complainant’s supplemental filing.
4. Factual BackgroundThe Complainant is a hotel company, based in Hamilton, Bermuda, that operates 45 hotel, river cruise, safari and luxury rail businesses in 24 countries including the Hotel Cipriani in Venice and the Venice Simplon-Orient-Express train. In the 2017 calendar year its total revenue was USD 560 million.
The Complainant, through its wholly-owned subsidiary Belmond Interfin Ltd, holds a number of registered trade marks consisting of the word “belmond” and a sun device (the “BELMOND Mark”) including European Union registration number 012293411 registered on November 8, 2014 for services in classes 35, 36, 39 and 43.
The Domain Name
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BELMOND Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BELMOND Mark having registered the BELMOND Mark in the United States and around the world. The Domain Name incorporates the BELMOND Mark in its entirety with the addition of the geographical term “uk”, being an abbreviation of the United Kingdom and hence is confusingly similar the BELMOND Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the BELMOND Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name does not redirect to any active website.
The Domain Name was registered and is being used in bad faith. Given the reputation of the BELMOND Mark, the registration of the Domain Name can only be taken as an attempt by the Respondent to falsely create an impression of an association with the Complainant. The Respondent failed to respond to a cease and desist letter sent by the Complainant. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BELMOND Mark, as its wholly owned subsidiary, Belmond Interfin Ltd, holds a registration for the BELMOND Mark as a trade mark in the European Union. As noted in Section 1.4. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary or parent company is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
Disregarding for the purposes of comparison the generic Top-Level Domain (“gTLD”) “.com” (being a technical requirement for the registration of a domain name) and the sun device in the Belmond Mark (being a device that is not reproducible in a domain name), the Domain Name consists of the BELMOND Mark and the geographical term “-uk”. The addition of the geographical term “-uk” does not prevent a finding of confusing similarity.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s BELMOND Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant (or its subsidiary) to register or use the Domain Name or to seek the registration of any domain name incorporating the BELMOND Mark or a mark similar to the BELMOND Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links related to the Complainant’s hospitality services does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the BELMOND Mark at the time the Respondent registered the Domain Name. The BELMOND Mark contains a coined word and the Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name containing word element in the BELMOND Mark and redirect it to a website containing links relating to hospitality jobs unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its BELMOND Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
According to the evidence provided by the Complainant, the Domain Name was not resolving to an active website at the time of the submission of the Complaint, and the Panel finds that the fact that the Domain Name was not resolving to an active website does not prevent a finding of bad faith.
In addition, the Panel notes that, currently, the Respondent’s Website offers what appear to be pay-per-click links that refer to the Complainant’s industry. In these circumstances where the Respondent has offered plausible no explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the BELMOND Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Nicholas Smith
Sole Panelist
Date: April 19, 2020