The Complainant is Capella Hotel Group Pte. Ltd., Singapore, represented by Rouse Legal Vietnam Ltd., Viet Nam.
The Respondent is Vu Ngoc An, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2021, the Registrar transmitted by email to the Center its verification response confirming the registrant and contact information for the disputed domain name.
The Center sent an email communication, both in English and Vietnamese, to both the Respondent and the Complainant, on November 26, 2021, indicating that although the Complaint was filed in English, the Language of the Registration Agreement was Vietnamese. On November 29, 2021 the Complainant requested the Language of the Proceeding to be English. The Respondent did not comment.
The Center verified that 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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Response was filed with the Center on December 27, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 17, 2022. 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 BackgroundThe Complainant, Capella Hotel Group Pte. Ltd., is a Singaporean corporation founded in 2002. The Complainant owns a chain of hotels and resorts located in Singapore, China (People’s Republic of), Indonesia, Maldives, Thailand, Vietnam, Australia, and South Korea.
The Complainant is the owner of numerous trademark registrations of the CAPELLA trademark in many jurisdictions throughout the world, including, but not limited to, in Viet Nam, where the Respondent resides, with Vietnamese Registration No. 115285.
The Complainant also registered the domain name
The Disputed Domain Name was registered by the Respondent on December 25, 2015. As the date of this Decision, the Disputed Domain Name does not resolve to an active website. However, the Disputed Domain Name used to resolve to a website promoting the hotel services under the name “Hanoi Capella Hotel”.
The Complainant sent a cease and desist letter to the Respondent on May 25, 2021, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the cease and desist letter.
5. Parties’ Contentions A. ComplainantThe Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.
Firstly, the Complainant contends that the Complainant’s CAPELLA trademark enjoys a wide use and recognition around the world, as well as registered in numerous jurisdictions, including in Viet Nam. The CAPELLA trademark has earned immense goodwill and reputation among worldwide consumers for temporary accommodation services. In 2015, the Complainant’s worldwide revenue was approximately
USD 125,520,660 and the advertising expenditure was approximately USD 184,483.
Secondly, the Complainant contends that the Disputed Domain Name is confusingly similar to the trademark owned by the Complainant since the Disputed Domain Name features entirely the Complainant’s CAPELLA trademark as its most dominant element. The addition of the geographical term “hanoi” and the generic term “hotel” even increases the likelihood of confusion.
Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in the Policy, paragraph 4(c) are not fulfilled.
First, the Respondent registered the Disputed Domain Name long after the Complainant established its rights in and to the CAPELLA trademark.
Second, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s CAPELLA trademark.
Third, the Complainant asserts that “capella” is not a descriptive or generic term. In addition, the Respondent is not commonly known by the Disputed Domain Name or the name “capella”; the name of the Respondent’s business was in fact changed to Ma Coeur Hotel.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
Registration in bad faith:
The Complainant asserts that the CAPELLA trademark is widely used and recognized, with trademark registrations across numerous countries, with the earliest registration dates back to the year 2005 in the United States. The Complainant also registered the domain name
Use in bad faith:
Firstly, the Complainant contends that due to the confusing similarity between the Disputed Domain Name and the CAPELLA trademark, Internet users attempting to visit the Complainant’s website may end up on the website set up by the Respondent.
Secondly, the Respondent’s website contains no disclaimer of an affiliation or association between the Complainant and the Respondent. It is evident that by using the Disputed Domain Name and creating the impression that the underlying website associates with the Complainant and its widely known CAPELLA trademark, the Respondent has intentionally attempted to attract Internet users to his website for commercial gain.
Lastly, the Complainant contends that in the absence of any license or permission from the Complainant to use the widely known CAPELLA trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.
In addition, the Respondent’s failure to respond to a cease-and-desist letter from the Complainant while offering for the transfer, which incurs fee, may properly be considered a factor in finding bad faith registration and use of the Disputed Domain Name.
Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under Policy 4(b)(iii).
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
B. RespondentOn December 27, 2021, the Respondent filed a Response to the Center. In the Response as filed, the Respondent requests the Panel to deny the Complainant’s requests with the following contentions:
First, the Respondent has obtained the Disputed Domain Name for using in hotel services for over six years. The Respondent states that the Respondent has strictly complied with laws and regulations of Vietnam.
Second, the Respondent contends that no image of any Capella hotels in the world as well as neither logo or brand of the Complainant has been used.
Third, the Respondent has contacted with the representative of the Complainant on the transfer of the Disputed Domain Name. However, the Complainant did not reply.
Lastly, since the Disputed Domain Name belongs to the Respondent based on the first come, first serve rule and the Respondent has no longer traded in accommodation and hotel services, the Respondent is currently the legitimate owner of the Disputed Domain Name. The Respondent is also willing to discuss more with the Complainant in order to transfer the Disputed Domain Name.
6. Discussion and Findings A. Procedural Issues(i) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its communication dated November 26, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.
On November 29, 2021, the Complainant responded the Center, requesting that English be the language of the proceeding as indicated in page 6 of the Complaint.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,
WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Singaporean business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name used to contain English contents. Further, the Respondent works in the hospitality industry in Viet Nam, in which English is commonly used; these suggest that the Respondent has ample knowledge of the English language and will be able to communicate in English;
(iii) the Respondent did not object for English to be the language of the proceeding.
Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(ii) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name was registered on December 25, 2015, but the Complaint was filed with the Center November 24, 2021. The Panel is of the same view as those in the previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which held that “[p]anels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to previous UDRP decisions, the Panel has taken this into account when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut,
WIPO Case No. D2014-0109).
The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CAPELLA (well before the Disputed Domain Name was registered). In addition, it is evidenced that the Complainant has earned worldwide recognition and reputation for its services bearing the CAPELLA trademark. Of note, the Complainant owns a registration for CAPELLA trademark and is providing temporary accommodation services in Hanoi, Viet Nam, where the Respondent resides.
Second, the Disputed Domain Name comprises the Complainant’s CAPELLA mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “hanoi” (which can be written with tone marks as “Hà Nội” in Vietnamese to indicate the capital of Viet Nam, where the Respondent resides), and the suffix “hotel” (which is a dictionary term).
The Panel finds that “CAPELLA” remains the dominant element in the Disputed Domain Name. It is well established that the addition of geographic term “hanoi” and the dictionary term “hotel” to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said addition does nothing to prevent the trademark from being recognizable in the Disputed Domain Name, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., International Business Machines Corporation v. Le Van Hai,
WIPO Case No. D2019-3000; Philip Morris Products S.A. v. Nguyen Van Thanh,
WIPO Case No. D2019-1867; Royal Canid SAS v. Ong Pham Duc Thang,
WIPO Case No. D2017-2567).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,
WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,
WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,
WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CAPELLA trademark, and the first element of the Policy is established.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(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 Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Names (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,
WIPO Case No. D2001-0121).
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “capella”. Thus, the Panel finds that the Respondent has no rights in the CAPELLA trademark or therefore in the Disputed Domain Name.
In addition, as of the date of this Decision, the Panel finds that the Disputed Domain Name is resolving to an inactive website. Nevertheless, the Respondent already confirmed that the Disputed Domain Name was used for trade in hotel services for more than six years. The Panel also conducted an independent search on “www.web.archive.org” and found that the Disputed Domain Name from 2016 to 2021, resolved to the website in English, featuring the Complainant’s mark, and offering temporary accommodation services, hotel services, which directly competes with the Complainant’s services. The Panel, therefore, rejects the Respondent’s assertion that no trademark of the Complainant was used. On such website, the Panel also finds that the Respondent did not place any statement or disclaimer accurately and prominently disclosing its relationship with the Complainant.
These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. See section 2.5.1 of the WIPO Overview 3.0. As such, the Panel finds the Respondent’s use of the Disputed Domain Name, cannot be considered a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The fact that the Respondent allegedly earned some revenues on hotel services and paid taxes for those revenues is not sufficient for making the use of the Disputed Domain Name bona fide, especially where, as said, such use involves an unauthorized use of the Complainant’s trademark.
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the CAPELLA trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
First, the Panel opines that registration and use of the Disputed Domain Name, while having no legitimate rights and interests in it, as analyzed in Section 6.C., is an indication of bad faith in registration and use thereof.
Further, the Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Names. In this regard, the Panel finds that the Complainant’s CAPELLA trademark has been registered in a variety of jurisdictions around the world. In addition, the Complainant’s CAPELLA trademark has been registered and put in use in, among other countries, Viet Nam where the Respondent resides. The CAPELLA registration well predates the registration of the Disputed Domain Name.
As analyzed in the Section 6.C. above, given the CAPELLA trademark has been registered and widely used by the Complainant for temporary accommodation services before the registration of the Disputed Domain Name, the Panel is of the opinion that the choice is not made in a fortuity, but the Respondent already knew about the Complainant and the CAPELLA trademark when the Respondent chose and registered the Disputed Domain Name, then operated the Respondent’s business in the same industry. With such a view, the Panel finds that the Respondent had full knowledge of the CAPELLA trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.
The Panel finds that it is evident that the Disputed Domain Name used to resolve to a website offering the hotel services branded with the Complainant’s CAPELLA trademark. In addition to the adoption of the Complainant’s CAPELLA trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent has used the Complainant’s CAPELLA trademark on the website under the Disputed Domain Name, without any disclaimer of an affiliation or association between the Complainant and the Respondent. With such a view, the Panel agrees with the Complainant’s argument that many Internet users attempting to visit the Complainant’s website through a search for “capella” may end up on the webpage set up by the Respondent. The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The diversion of Internet traffic from the Complainant’s site to the Respondent’s site supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and are being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
7. DecisionFor 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,
Pham Nghiem Xuan Bac
Sole Panelist
Date: January 31, 2022