ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION MHG IP Holding (Singapore) PTE. LTD. v. Anantara Resort and Spa Case No. D2024-4111 1. The Parties The Complainant is MHG IP Holding (Singapore) PTE. LTD., Singapore, represented by Luthra & Luthra Law Offices, India. The Respondent is Anantara Resort and Spa, India. 2. The Domain Name and Registrar The disputed domain name
is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2024. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 8, 2024. 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.
page 2 4. Factual Background The Complainant is a company incorporated under the laws of Singapore. It owns and operates luxury resorts and spas, and is a subsidiary of Minor International PCL, which currently operates over 530 hotels, resorts and serviced suites, and over 2,000 restaurants, in 56 countries across the Asia Pacific, Middle East, Europe, South America, Africa and Indian ocean regions, having built this portfolio over 50 years of operation. The Complainant is highly active in spa tourism, and operates a multi-award-winning chain of hotels and spas under the ANANTARA trademark. The Complainant is the owner of multiple registered trademarks in respect of said trademark, including, for example, Indian Registered Trademark Number 5175785 for the word mark ANANTARA, registered on October 16, 2021, in Class 44 (covering various services, including among others, health spa services). The Complainant provides independent evidence, in the form of press releases and coverage, showing that as early as April 12, 2023, the Complainant announced that it would open the “Anantara Jaipur Hotel”, its first Indian property, to be based in Jaipur, Rajasthan, India, capable of accommodating destination weddings for up to 2,500 guests. The Complainant’s advance publicity indicates that said property is expected to open in 2024. The Complainant provides extensive evidence and statistics indicating the scale of its business, which is substantial. For example, the worldwide revenues earned by the Complainant through its various ANANTARA resorts and spas from 2022 to August 2024 are reported as exceeding USD 1.8 billion, while the total number of Indian residents who have visited the Complainant’s said resorts and spas from 2022 to August 2024 is 92,203. In addition to demonstrating its substantial reputation via awards and press coverage, the Complainant also provides details of the extent of its presence on social media, including having 19,500 followers on X (formerly Twitter), 176,000 followers on Instagram, 21,700 subscribers on YouTube, 234,704 followers on LinkedIn, and 199,000 followers, together with 193,000 “likes”, on Facebook. The disputed domain name was registered on July 3, 2024. Little is known regarding the Respondent, which has not participated in the administrative proceeding. According to screenshots taken by the Complainant, the website associated with the disputed domain name bears to be that of a hotel business named the “Anantra Resort Jaisalmer”, which has an address in Jaisalmer, Rajasthan, India. Said website provides very limited information regarding the business concerned, and notably does not indicate when it was founded. There is no suggestion before the Panel that the word “Anantra” signifies a geographic location. In the absence of evidence to the contrary, the Panel assumes that the Respondent’s alleged business does not pre-date the date of registration of the disputed domain name. It should also be noted that there is a difference in spelling between the first element of the Respondent’s name as verified by the Registrar, “Anantara”, and that used on the website associated with the disputed domain name as the name of the alleged business, namely “Anantra”. 5. Parties’ Contentions A. Complainant The Complaint in this case is extremely detailed and is accompanied by annexed documentation on a remarkable scale, amounting to just under 500 pages of submissions and evidence. The submissions themselves come very close to (or may in fact slightly exceed) the 5,000 word limit provided for in paragraph 11(a) of the Supplemental Rules (5,108 based upon the Panel’s software-driven word count). The Panel notes that the Complaint includes some tables with information about the marketing expenditure, revenues, and the Complainant’s trademark registrations (including information like the classes and the jurisdiction for a list of trademarks), without which the Complaint would fall within the abovementioned limit. Furthermore, the Panel notes that part of this information was provided within the annexes (for example in the form of copies of the registration certificates for the ANANTARA trademarks). The Panel considers this information part of the facts that could have been easily provided within the annexes to the Complaint but noting that the
page 3 Complaint only exceeds slightly the abovementioned limit, the Panel has considered it fair to proceed with this Complaint, and allows the Complainant to provide the extra background, which seems reasonable in the circumstances of this case. See, Société des Produits Nestlé S.A. v. Ranjan Agrawal and Domain Admin / Neil P / Indus Domains LLC, WIPO Case No. D2016-2371. For reasons of economy, the Panel will not recite all of the Complainant’s contentions beyond the fact that it contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name, that it has provided sufficient evidence to establish that its ANANTARA trademark is well-known (predominantly in association with its hotels and spas) and that such mark’s fame predates the Respondent’s registration of the disputed domain name. The Complainant concludes that the disputed domain name was registered without rights or legitimate interests and in bad faith because the Respondent has set out to generate Internet traffic on the basis of the Complainant’s reputation, and to deceive consumers, for commercial gain, into believing that the Respondent’s business is associated with that of the Complainant when it is not. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The disputed domain name contains what appears to be an obvious and intentional misspelling of the Complainant’s ANANTARA trademark, absent the third letter “a”. Such a misspelling is typically considered by panels to be confusingly similar to the relevant mark for purposes of the first element, stemming from the fact that the domain name concerned contains sufficiently recognizable aspects of the relevant mark. WIPO Overview 3.0, section 1.9. Although the addition of other terms, here, the word “resort”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. As noted in the factual background section above, it appears that the Respondent may be operating a hotel or resort business in Jaisalmer, Rajasthan, India, which has a name corresponding to the disputed domain name. The question arises, therefore, as to whether such offering could be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. As the panel noted in MHG IP Holding (Singapore) PTE. Ltd. v. NYS Softech, WIPO Case No. D2024-2730, a case involving the present Complainant, “[…] paragraph 4(c)(i) [of the Policy] cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words bona fide must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the bona fide requirement is not met.” Considering the question of the Respondent’s likely knowledge and motivation in selecting the disputed domain name in the present case, the Panel finds that the Complainant has established by way of the provision of extensive evidence that its ANANTARA mark is distinctive and well-known in its particular field of activity, and that its use predates the registration of the disputed domain name. The Respondent’s alleged business is engaged in the same field of activity. The Complainant provides multiple examples of advance publicity of its forthcoming launch of the “Anantara Jaipur Hotel”, also pre-dating the registration of the disputed domain name, and it is to be noted that the proposed hotel is based in Rajasthan, being the same Indian state in which the Respondent’s alleged business is said to be based. Furthermore, the Respondent has adopted a name for its business and the disputed domain name that not only bears a striking resemblance to the Complainant’s distinctive name and trademark, but also as used in the disputed domain name is a close typographical variant of such trademark in which only a single vowel has been removed, the additional term “resort” in the disputed domain name being a non-distinctive dictionary word generally descriptive of a place where people go for relaxation or pleasure, and therefore commonly associated with hotel businesses such as that of the Complainant, and, allegedly, that of the Respondent. Given the Complainant’s prominence in the hotel and resort management industry, and the fact that its ANANTARA trademark is distinctive and well-known, including where the Respondent is based, the Respondent could not have credibly denied knowledge of the Complainant. In any event, it has not attempted to do so. In these circumstances, the Respondent’s selection of the typographical variant name in the disputed domain name suggests to the Panel that the Respondent’s motivation in registering and using the disputed domain name was to trade off, or take advantage of the Complainant’s name or reputation. This does not establish a bona fide offering of goods or services within the meaning of the Policy, and therefore does not confer rights or legitimate interests upon the Respondent. The Panel also considers that the circumstances described in paragraph 4(c)(ii) of the Policy are not found in the present case. There is some limited evidence from the website associated with the disputed domain name suggesting that the Respondent may be operating a business named “Anantra Resort Jaisalmer”,
page 5 although the Respondent itself is named in the WhoIs record as “Anantara Resort and Spa”, noting the difference in spelling between the two. There is no evidence as to whether such business is genuine, and if so, crucially, when it was established (see WIPO Overview 3.0, section 2.3, for typical examples of relevant evidence that might have been produced by the Respondent). In any event, the fact that the Respondent does not appear to have a consistently spelled name between the website and the WhoIs entry, and that the latter differs in spelling from the spelling of the disputed domain name, suggests in the absence of evidence to the contrary that the Respondent could not claim to be commonly known by the disputed domain name. Likewise, as it appears to be engaged in a commercial enterprise, the Respondent could not avail itself of paragraph 4(c)(iii) of the Policy. There are no other circumstances outlined in the present record that are indicative of rights or legitimate interests that the Respondent might have claimed in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. A finding that a domain name has been registered and is being used in bad faith typically requires an inference to be drawn that the respondent has registered and is using such domain name to take advantage of its significance as a trademark owned by (usually) the complainant (see: British Airways Plc v. Softline Studios, WIPO Case No. D2023-2188). It follows that the Complainant, on whom the burden of proof lies, must show on the balance of probabilities that the Respondent registered the disputed domain name in the knowledge of and with intent to target the Complainant and/or its rights in the trademark concerned. On this topic, the Panel adopts its reasoning set out in the preceding section, whereby the Panel has found that the Respondent was more probably than not aware of the Complainant and its rights when it registered the disputed domain name, and that the Respondent intentionally selected a typographical variant of the Complainant’s distinctive mark (coupled with the non-distinctive word “resort”) in order to trade off, or take advantage of the Complainant’s name or reputation. The Panel considers that such typographical variant was most probably selected because the Respondent wished to convey the impression to consumers of hotel, resort and spa services that it and the website associated with the disputed domain name were sponsored or endorsed by, or affiliated with, the Complainant. It also seems reasonably probable that the Respondent wished to benefit unfairly from Internet traffic that might be diverted to the website associated with the disputed domain name due to the typographical similarity to the Complainant’s ANANTARA mark. These considerations point in the direction of a finding of bad faith in accordance with paragraph 4(b)(iv) of the Policy (see also item (i) in the list of circumstances that panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith in the WIPO Overview 3.0, section 3.2.1). The Respondent has provided no alternative good faith explanation for its registration and use of the disputed domain name, and, on the basis of the present record, the Panel cannot conceive of any reasonable explanation that it might have put forward. Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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 name be transferred to the Complainant. /Andrew D. S. Lothian/ Andrew D. S. Lothian Sole Panelist Date: November 18, 2024
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