WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sacher Hotels Betriebsgesellschaft mbH v. Henry Puts

Case No. D2001-0819

 

1. The Parties

The Complainant in this administrative proceeding is Sacher Hotels Betriebsgesellschaft mbH, a corporation organized and existing under the laws of Austria, with its principal place of business located at Philharmonikerstrasse 4, A-1010 Vienna, Austria ("Complainant").

The Respondent is Henry Puts, contactable at Postbus 93118, Amsterdam, Noord Holland 1090BC, the Netherlands ("Respondent").

 

2. The Domain Name and Registrar

The disputed domain names are

<sacherhotel.com>
<sacher-hotel.com>
<hotel-sacher.com>

The Registrar of the domain names is Tucows.com, Inc. 96 Mowat Avenue, Ontario M6K 3M1, Canada.

 

3. Procedural History

Issuance of Complaint

3.1 On June 21, 2001, Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and under the rules for the UDRP implemented by ICANN on the same date ("UDRP Rules"). The Complaint and Exhibits were received by the Center in hardcopy on June 22, 2001.

Confirmation of registration details

3.2 On June 22, 2001, a Request for Registrar Verification was transmitted to Tucows.com, Inc. In an e-mail to the Center dated June, 2001, Tucows.com, Inc. confirmed that it is the Registrar for the domain names <sacherhotel.com>, <sacher-hotel.com>, <hotel-sacher.com>.

Notification of Respondent

3.3 Having verified that the Complaint satisfied the formal requirements of the UDRP and the UDRP Rules, the Center sent on June 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding to the Complainantís authorized representative by facsimile and e-mail; to the Respondent by post, facsimile and e-mail. The Center advised the Respondent that the Response was due no later than July 16, 2001.

Filing of response

3.4 No Response was filed by the Respondent within the time specified in the Notification of Complaint. A Notification of Respondent Default was sent by the Center to the Respondent, and copied to the Complainant, by e-mail on July 17, 2001. As of the date of this decision, no response had been filed by the Respondent.

Constitution of Administrative Panel

3.5 Having received no Response from the Respondent within the specified time in the Notification of Complaint, the Center proceeded to appoint a single-member Panel and invited Dr. Torsten Bettinger to serve as a Panelist in this Administrative Proceeding.

Having received the Panelistís Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelistís deadline for issuing a decision of August 7, 2001.

The Center transmitted the case file to the Panelist on July 24, 2001. The case file was received by the Panelist on July 26, 2001.

 

4. Factual Background

Complainant`s Activities and Trademarks

The Complaint asserted and provided evidence in support of the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.

The Complainant began providing service in the hospitality industry in 1876 and is now one of the leading hotels in Austria. The Complainant operates another Hotel Sacher in Salzburg. Both hotel are listed in the publication "The leading Hotels of the World". The Complainant is the producer of the worldwide known "Original Sacher Cake".

The Complainant has provided documentary evidence of the following trademark registrations:

Hotel Sacher Wien International Trademark Reg. No. 458 131
Hotel Sacher Wien Community Trademark Reg. No. 708008

Copies of Complainant`s registrations certificates and/or printouts from the database providing full particulars of the Complainant`s registration are annexed as Exhibit E1-E4.

The Respondentís activities

The Respondent is the registrant of the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com>.

On August 6, 2001, this Adminstrative Panel visited the websites at <sacherhotel.com>, <sacher-hotel.com>, <hotel-sacher.com> and found at these sites essentially identical webpages stating:

"This domain name is for sale or rent: Please contact: >h.j.a.puts@chello.nl>.

The e-mail address <h.j.a.puts@chello.nl> is the e-mail adress of the Respondentís Contacts, as provided to the Center by the Registrar.

The Respondent also registered various other domains which are identical or confusingly similar to the trade names and trademarks of famous hotels such as <hotel-radisson.com>, <negrescohotel.com>, <sas-hotel.com> or <Richemondhotel.com>. Entering these domain names the above mentioned website appears: "This domain name is for sale or rent: Please contact: >h.j.a.puts@chello.nl>.

It is also established that that there was another case of cyberpiracy brought against the Respondent in WIPO Case No. D2001-0431 - Fairmont Hotel Management L.P. v. Puts. In that case the Administrative Panel found the domain names <fairmonthotels.com> and <Fairmont-resorts.com> were registered in bad faith by the Respondent and ordered the transfer of the domain names to the trademark holder.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that: (1) The domain names <sacherhotel.com>, <sacher-hotel.com>and <hotel-sacher.com> are identical or confusingly similar to the trademark "Hotel Sacher Wien" in which the Complainant has exclusive rights; (2) the Respondent has no rights or legitimate interests with respect to the domain name; and that (3) the domain name was registered and is being used in bad faith.

The Complainant requests that the Administrative Panel issue a decision that the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> be transferred to the Complainant.

B. Respondent

The Respondent did not file a Response to the Complaint.

 

6. Discussion and Findings

Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if it is to prevail:

(i) The Respondentís domain names are "identical or confusingly similar to a trademark or service mark in which the complainant has rights;" and

(ii) The Respondent has "no rights or legitimate interests with respect to the domain names;" and

(iii) The "domain names have been registered and are being used in bad faith."

a. Identical or confusingly similar (paragraph 4(a)(i))

In relation to the the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> the addition of the generic top-level-domain (gTLD) ".com" is without legal significance in determining similarity.

The word "Wien" that is part of the trademark does not make the domain names non-confusing as it only describes the place of business of the Complainant. Accordingly this Adminstrative Panel concludes that the domain names in issue is confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights.

b. Rights or legitimate interests (paragraph 4(a)(ii))

The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy or any other circumstances giving rise to a right or legitimate interest in the Domain Name. In the absence of evidence or even an assertion to the actual use of the domain name the fact that the Respondent is not using the domain names in connection with a bona fide offering of goods or services and the Respondent is not making a legitimate commercial, non commerical or fair use of the domain names the Panel concludes that Respondent has no rights or legitimate interests in the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> and that the requirement of the UDRP Paragraph 4 (a) (ii) is satisfied.

c. Bad faith (paragraph 4 (a) (iii))

The Complainant provided evidence of facts, which are clearly relevant to the issue of whether the Respondent registered and is using the domain name in bad faith.

The Complainantís trademark is widely known and so, in the absence of evidence or even an assertion by the Respondent to the contrary knowledge of the Complainantís rights can be imputed to the Respondent at the time of its registration of the domain names(see WIPO Case D2001-0431 Fairmont Hotel Management L.P. v. Puts). If this fact is combined with the fact that the Respondent has registered various other domain names that incorporate third partyís trademarks and the fact that the Respondentís only use of the domain names has been to offer them for sale there are sufficient grounds for the conclusion that that the Respondent registered the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> primarily for the purposes of selling it for a sum greater than out-of-pocket expenses. Such use of the domain name is use of the type contemplated by paragraph 4(b)(i) of the Uniform Policy, and accordingly is sufficient ground to persuade the Administrative Panel that the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> were registered and are being used by the Respondent in bad faith.

 

7. Decision

The Panel thus decides that:

1) the domain names <sacherhotel.com>, <sacher-hotel.com>and <hotel-sacher.com> are confusingly similar to the trademark "Hotel Sacher Wien";

2) The Respondent has no rights or legitimate interest with respect to the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com>;

3) the domain name <sacherhotel.com>; <sacher-hotel.com> and <hotel-sacher.com> have been registered and used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Tucows.com Inc., transfer the domain names <sacherhotel.com>, <sacher-hotel.com> and <hotel-sacher.com> to the Complainant.

 


 

Dr. Torsten Bettinger
Sole Panelist

Dated: August 7, 2001