WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mandarin Oriental Services B.V. v Control Alt Delete

Case No. D 2000-1671

 

1. The Parties

The Complainant is Mandarin Oriental Services B.V., Amsterdam, the Netherlands.

The Respondent is Control Alt Delete, Radmansgatan 7, Stockholm, Sweden.

 

2. The Domain Name and Registrar

The domain name at issue is <orientalhotel.com>, which is registered at Network Solutions Inc.

 

3. Procedural History

The Complaint was received by WIPO by email on November 30, 2000 and in hardcopy form on December 4, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that orientalhotel.com ("the Domain Name") was registered through Network Solutions Inc. and that Control Alt Delete ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On December 12, 2000 WIPO notified the Respondent of the Complaint in the usual manner. The Response was received by WIPO by email on December 29, 2000 and in hard copy form on January 3, 2000. On January 11, 2001 WIPO issued to the Respondent a Notification of Response deficiencies.

The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision, is February 21, 2001.

 

4. Factual Background

The Complainant is a member of the Mandarin Oriental Hotel Group, an international hotel investment and management group operating twenty luxury hotels worldwide. Complainant claims to have continuously used the service mark THE ORIENTAL and the trade names THE ORIENTAL and ORIENTAL (collectively, the "ORIENTAL Mark and Name") in connection with its hotels and hotel management services since at least as early as 1974. The Respondent does not dispute this claim and the Panel accepts it as fact.

The Complainant is the owner of U.S. Registration No. 1,280,987 dated June 5, 1984 for the mark THE ORIENTAL covering "hotel services." In addition, the Complainant is the owner of over 100 non-U.S. registrations for ORIENTAL dating variously from 1982 to 1999.

The Respondent registered the Domain Name on June 27, 1996. In addition the Respondent is the proprietor of inter alia the domain names <royalviking.com> and <allnipponairways.com>.

In or about June 1999 the Complainant learnt of the existence of the Domain Name. On July 26, 1999 the Complainant wrote to the Respondent protesting at the Respondentís registration of the Domain Name and seeking transfer of the Domain Name to the Complainant. However, DHL Courier Service could not deliver the letter, informing the Complainant that the Respondent's address on the Registrar's database was non-existent.

On or about December 7, 1999 the Complainantís Swedish agent was able to locate the Respondent and met with the Respondent. At that meeting the Respondent offered to sell the Domain Name to the Complainant for $200,000. The Complainantís agent refused the offer. The Respondent is alleged by the Complainant to have sought to persuade the Complainant to accept the offer by pointing out to the Complainantís agent the value to the Complainant of the Domain Name. The Respondent does not deny that allegation.

 

5. Partiesí Contentions

A. Complainant

The ORIENTAL Mark and Name have achieved worldwide fame and are now recognized and relied upon by the trade and purchasing public as a symbol of quality hotels and hotel management services. Thus, the goodwill associated with such mark and name is of enormous value and among the most important assets of Complainant.

Complainant is entitled to relief under Section 4(a) of the Policy because: (i) the Domain Name is confusingly similar to Complainant's ORIENTAL Mark and Name; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

Complainant's ORIENTAL Mark and Name and the Domain Name are confusingly similar. The deletion of "THE" from Complainant's THE ORIENTAL mark and the addition of the word "hotel," as well as a format common to Internet domain names, i.e., no capitalization and inclusion of a suffix, e.g., .com, .net, or .org, do not render the Domain Name and Complainant's mark and name dissimilar.

The inclusion of the word "hotel" renders the Domain Name and Complainant's ORIENTAL Mark and Name confusingly similar because such mark and name is associated exclusively with hotels and is a well-known mark and name in the area of hotels.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated in any way with the Complainant. The Respondent does not own any United States trademark or service mark registrations or applications for ORIENTAL, ORIENTAL HOTEL or, for that matter, any ORIENTAL-formative mark. In addition, the Complainant has not licensed or otherwise authorized the Respondent to use its ORIENTAL Mark and Name or to apply for any domain name incorporating such mark and name.

The Respondent does not use, and has never used, the Domain Name in connection with the offering of any goods or services.

The Respondent attempted to sell the Domain Name to the Complainant for $200,000, an amount that can only far exceed any of the Respondent's out-of-pocket expenses related to the Domain Name. The Respondent has never provided to the Complainant evidence of any out-of-pocket expenses, much less expenses totaling $200,000.

In addition, the Respondent has never offered goods or services at the web site. Considering the Respondent's attempt to sell the Domain Name to the Complainant, Respondent could not have acquired the Domain Name for any purpose other than to sell it to the Complainant.

The Respondent's offer to sell the Domain Name to the Complainant demonstrates "use" of the Domain Name under ß 43(c) of the Lanham Trademark Act.

Not only has the Respondent offered to sell the Domain Name to the Complainant for an exorbitant sum, but the Respondent has also registered the Domain Name in order to prevent the Complainant from reflecting its ORIENTAL Mark and Name in a corresponding Domain Name, and, on information and belief, the Respondent has engaged in a past pattern of selling domain names for profit. Respondent's registration of the Domain Name obviously prevents Complainantís use of the Domain Name.

The Complainant's Swedish agent has purchased other domain names from the Respondent on behalf of various clients and the Respondent has received a great deal of publicity in the past in Sweden and is known in Sweden for selling domain names for profit. Furthermore, the Respondent currently owns the registrations for several domain names that include registered trademarks, such as <royalviking.com> and <allnipponairways.com>.

The Respondent's use of the Domain Name confuses potential customers as to the Respondent's affiliation with the Complainant. The Complainant's ORIENTAL Mark and Name have achieved exceptional fame throughout the world and are associated exclusively with hotels and hotel management services. As such, potential customers will likely believe that the Respondentís Domain Name is affiliated with Complainant. Indeed, given the fame and widespread use of the Complainant's ORIENTAL Mark and Name and the Respondent's lack of association with Complainant, Respondent's registration and use of the Domain Name indicates opportunistic bad faith.

Moreover, as a result of the Respondent's opportunistic bad faith in registering the Domain Name, the Complainant's ORIENTAL Mark and Name, and corresponding reputation and goodwill, are placed at Respondent's mercy. The Respondent's Domain Name also discourages Internet users from locating Complainant's true web sites, <mandarin-oriental.com> and <mandarinoriental.com>, thereby diluting the value of Complainant's ORIENTAL Mark and Name.

Furthermore, the Respondent has made no use of the Domain Name, although the Respondent has persisted in its ownership of the Domain Name registration, thereby suggesting bad faith.

Finally, on information and belief, the Respondent provided NSI with false address information, which is a violation of section 2(a) of the Policy, as well as a factor relevant to bad faith under section 1125(d)(1)(B)(i) of the U.S. Anticybersquatting Consumer Protection Act. The Complainant addressed its demand letter to the Respondent to the address listed in NSI's database; however, DHL Courier Service was unable to deliver the letter and informed Complainant that there was no such address. Therefore, the Respondent has registered and is using the Domain Name in bad faith and the Complainant is entitled to relief under the Policy.

A. Respondent

The Respondent does not contest any of the factual claims made by the Complainant, but simply contends as follows:

The registration of the Domain Name was made according to the NSI Domain Dispute Policy.

No harm has been caused the Complainant by the registration of the Domain Name nor was it ever the intention of the Respondent to cause harm to the Complainant by effecting the Domain Name registration.

The Complainant is not the proprietor of the trademark "ORIENTALHOTEL",

but the trademark "THE ORIENTAL". The domain name the Complainant should be interested in is <theoriental.com>.

 

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity

The Domain Name comprises three elements, namely Ďorientalí, which is the Complainantís trade mark, Ďhotelí, which indicates the Complainantís area of activity and Ď.comí, which is generic.

The test under paragraph 4(a)(i) of the Policy is not an onerous test. Its purpose is to establish that the Complainant has a bona fide purpose for making the Complaint.

The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

To prove that the Respondent has no rights or legitimate interests in respect of the Domain Names requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the Respondent.

The name Ďorientalhotelí is a name with strongly generic connotations, but it is a name capable of association with the Complainant. As the Complainant has pointed out in the Complaint, and without any contradiction from the Respondent, the Respondent has not been licensed to use the name by the Complainant, the Respondent has produced no evidence to establish that it is known by that name or has in any way traded under or by reference to the name or indeed that it has any interest (direct or indirect) in oriental hotels.

Indeed, the Respondent has not sought to claim that it has any rights or legitimate interests in respect of the Domain Name and the Panel has no evidence before it to suggest any reason why the Respondent might have any rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith

In the absence of any contradiction from the Respondent, the Panel accepts as fact the evidence of the Complainant to the effect that the Respondent is a trader in domain names. Trading in domain names is not in itself unlawful.

The registration of a domain name and/or the trade in it may be unlawful if the domain name in question infringes the intellectual property rights of a third party, but whether or not a domain name or the trade in it constitutes trade mark infringement or passing off cannot not of itself be determinative of a case under this administrative procedure.

Under the Policy the Panel is concerned to decide whether or not the registration complained of was made in bad faith and is being used in bad faith. It is to be noted that bad faith is not an essential ingredient in the torts of trade mark infringement and passing off. Accordingly, the fact that the activity complained of might constitute infringement of the Complainant's rights does not necessarily mean that the Complaint succeeds.

The essential question for the Panel is whether or not the Respondent registered the Domain Name with the Complainant specifically in mind. Did the Respondent register the Domain Name intending to sell it to the Complainant for a large sum of money? Did the Respondent register it with a view to blocking the Complainant from registering it itself. Did the Respondent register it to disrupt the Complainantís business and/or to cause confusion to Internet users?

The Panel has been unable to agree on these issues, the presiding panelistís view, the minority view, being that this is one of those very rare cases where the presence or absence of the definite article ("the") is all-important. "The Oriental Hotel" is without doubt a reference to the Complainant and/or one or more of its establishments, whereas Ďoriental hotelsí are, by definition, prevalent throughout the orient. There is no evidence before the Panel that the Complainant has ever used the name "Oriental Hotel" without the definite article. Given the Respondentís track record in relation to some of its domain name trading, it may be the case that the Respondent did in fact have the Complainant in mind when registering the Domain Name, but the presiding panelistís view is that there is sufficient room for doubt for the Complaint to be dismissed on the grounds that the Complainant has not proved its case in relation to this very generic domain name.

The majority view is that the Respondent is, from a great numbers of media references including articles in newspapers (Exhibit A of the Complaint), well known in Sweden as a so-called cybersquatter. In 1996, when the Respondent registered the disputed Domain Name as well as a number of other domain names including trademarks of others, the Respondent offered some of the trademark owners to buy the related domain names for an amount of USD 5 000. The activities of the Respondent led to several court actions as well as applications for "on Hold" according to the NSIís old Dispute Resolution Policy. According to a news article dated September 28, 1999 (Exhibit A of the Complaint, not translated from Swedish) Mr. Robert Boström of Control Alt Delete stated for the Reporter of the Swedish newspaper Göteborgsposten that "we carefully avoid taking contact with the companies. If we do so, it is trademark infringement and we can be sued. But if they contact us, it is a business negotiation regarding one of our assets." The Respondent has not denied or comment on this and therefore the Panel accept this information on the Respondents previous activities as facts.

The Panel also notes that the Respondentís domain names have been the subject of at least two other WIPO UDRP-proceedings, namely D2000-0609 and D2000-0381.

With reference to the documented pattern of the Respondent to register otherís trademarks as domain names and the information given by the cited newspaper articles, the majority view of the Panel is that the Respondent registered the Domain Name in bad faith in order to use it as an asset and sell it to the Complainant as soon as the latter made such approach.

As established in the Telstra case (No D2000-0003) the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive action. The circumstances of this case indicating that the Domain Name is registered and is being used in bad faith are:

(i) the Complainantís trademark is well known around the world

(ii) the Respondent has provided no evidence of any actual or planned good faith use of the Domain Name

(iii) the Respondent is a trader in domain names and is known in Sweden as owners of a great number of trademark related domain names

(iv) the Respondent has officially stated that it sees the domain names reflecting other companies protected trademarks as a passive asset of the Respondent

(v) when being approached by the Complainant, the Respondent demanded a very substantial sum of money for the transfer of the Domain Name to the Complainant.

The majority view of the Panel therefore is that the Respondent registered and is using the Domain Name in bad faith.

 

7. Decision

The Panel concludes, by a majority, (a) that the Domain Name "orientalhotel.com" is confusingly similar to the trade mark in which the Complainant has rights, (b) that the Respondent has no rights or legitimate interest in respect of the Domain Name, and (c) that the Respondent has registered and is using the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name "orientalhotel.com" be transferred to the Complainant Mandarin Oriental Services B.V.

 


 

Mr T Willoughby
Presiding Panelist

Mr P E H Rindforth
Panelist

Mr J W Dabney
Panelist

Dated: February 19, 2001