ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Schloss HMA Private Limited v. Amar Lal, A to B IT Solutions Fze Case No. DAE2024-0001 1. The Parties The Complainant is Schloss HMA Private Limited, India, represented by United Trademark & Patent Services, United Arab Emirates. The Respondent is Amar Lal, A to B IT Solutions Fze, United Arab Emirates. 2. The Domain Name and Registrar The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2024. On January 8, 2024, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrant verification in connection with the disputed domain name. On January 10, 2024, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by.aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2024. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 6, 2024. The Center appointed Edoardo Fano as the sole panelist in this matter on February 13, 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 The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. 4. Factual Background The Complainant is Schloss HMA Private Limited, the Indian owner of “The Leela Palaces, Hotels and Resorts”, commonly known as “The Leela”, an Indian luxury hotel chain founded in 1986 and currently owning twelve luxury palaces and hotels. The Complainant owns several trademark registrations worldwide consisting of or comprising THE LEELA, among which the following ones: - Indian Trademark Registration No. 1330327 for THE LEELA, registered on January 6, 2005; - Indian Trademark Registration No. 1700618 for THE LEELA PALACES HOTELS RESORTS and design, registered on June 19, 2008; - United Arab Emirates Trademark Registration No. 354444 for THE LEELA, registered on October 14, 2021; - United Arab Emirates Trademark Registration No. 354448 for L THE LEELA PALACES HOTELS RESORTS and design, registered on October 14, 2021. The Complainant also operates on the Internet, its official website being at “www.theleela.com”. The Complainant provided evidence in support of the above. According to the information received from the Registry, the disputed domain name was registered by the Respondent on November 7, 2023, and it resolves to the website of a self-declared The Leela Hotel in Deira, Dubai. On November 20, 2019, the manager of The Leela Hotel in Deira, Dubai, filed the application No. 320943 for the registration in the United Arab Emirates of the trademark THE LEELA HOTEL, which was refused by the United Arab Emirates Ministry of Economy on June 22, 2021, following the opposition filed by the Complainant and based on its trademark’s rights in the United Arab Emirates. On February 10, 2022, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent, without obtaining any result. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to its trademark THE LEELA, being the latter incorporated in its entirety in the disputed domain name. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
page 3 The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark THE LEELA is well known in the luxury palaces and hotels field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, qualifies as bad faith registration and use. B. Respondent The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.0F1 6. Discussion and Findings Paragraph 6(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 or is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark THE LEELA both by registration and acquired reputation. The entirety of the mark is reproduced 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. Although the addition of other terms, here “hotel”, 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. It is also well accepted that a country code Top-Level Domain suffix, in this case “.ae”, is typically ignored when assessing the confusing similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 6(a)(i). 1 In light of the substantive and procedural similarities between the uaeDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited decisions under the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
page 4 B. Rights or Legitimate Interests Paragraph 6(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 6(c) of the Policy any of the following circumstances, in particular but without limitation: “(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.” According to paragraph 6(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 6(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 6(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 6(a)(ii) of the Policy. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 6(a)(ii) of the Policy has been satisfied. C. Registered or Used in Bad Faith While paragraph 6(a)(iii) of the Policy requires a demonstration that a domain name has either been registered or is being used in bad faith, the Complainant has argued that the Respondent has both registered and used the disputed domain name in bad faith. Paragraph 6(b) of the Policy provides that “for the purposes of paragraph 6(a)(iii), 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:
page 5 (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 trademark 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) that [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; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of the complainant; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark THE LEELA in the luxury palaces and hotels field is clearly established and the Panel finds that the Respondent must have known of the Complainant, and deliberately registered the disputed domain name in bad faith, especially because the disputed domain name is used in relation to an hotel, the same business field as the Complainant. The Panel notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract, for commercial gain, Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the Complainant’s business. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant’s business, and to attract Internet users to its website in accordance with paragraph 6(b)(iv) of the Policy. Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which includes the Complainant’s trademark in its entirety with the mere addition of the term “hotel”, namely a reference to the Complainant’s field of activity, further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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. /Edoardo Fano/ Edoardo Fano Panelist Date: February 27, 2024
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