WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fairmont Hotel Management L.P. and Fairmont Hotels & Resorts (U.S.) Inc. v. Franky Tong
Case No. D2002-0751
1. The Parties
The Complainants are Fairmont Hotel Management, L.P. and its parent company, Fairmont Hotels & Resorts (U.S.) Inc. carrying on business at 100 Wellington Street West, Suite 1600, T.D. Centre, P.O. Box 40, Toronto, Ontario, Canada.
The Respondent is Franky Tong, located at 26H Block 7, Beverly Garden, Tseung Kwan ), Hong Kong, S.A.R. of China.
2. The Domain Name and Registrar
The disputed domain name is <fairmonthotel.com>.
The Registrar is Enom, Inc.
3. Procedural History
The electronic version of the Complaint was filed on August 9, 2002. The hardcopy of the Complaint was received on August 12, 2002.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ( the"Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the WIPO Arbitration and Mediation Center (the "Center") verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.
Payment in the required amount was received by the Center.
On August 16, 2002, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.
The Respondent failed to file a Response. On September 6, 2002, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.
The Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On September 12, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 26, 2002.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules; no Response was filed by the Respondent; the administrative panel was properly constituted.
4. Factual Background
The Complaint provides extensive detail about the Complainantsí business and use of trademarks which appears to be almost identical to the detail provided to a previous Panel in Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 about the domain names <fairmonthotels.com> and <fairmont-resorts.com>. The Panel in that case summarised the Complainantsí business and an extract from that decision is replicated below:
"The Complainant began providing service in the hospitality industry in 1907, and is now the largest luxury hotel management company in North America, with a collection of 36 hotels and 18,150 rooms throughout the United States, Canada, Bermuda, Barbados and Mexico operated under the trade name FAIRMONT HOTELS & RESORTS. Some of the most famous hotels in the world are part of the FAIRMONT HOTELS & RESORTS Group, including the world-renowned Fairmont San Francisco, the Plaza Hotel in New York, and The Copley Plaza in Boston.
The Complainant has used and owned the trademark FAIRMONT and variations thereof (the "FAIRMONT marks") for over 90 years. The Complainant has numerous registered, valid and subsisting registrations for the FAIRMONT marks in the United States Patent and Trademark Office, and in Canada. The Complainant has also obtained several Community Trademark (CTM) registrations for its FAIRMONT marks, giving it rights throughout Europe...
The Complainant has spent hundreds of millions of dollars in advertising and marketing the Fairmont Hotels & Resorts under the FAIRMONT marks. The Complainant constantly runs ads in such widely circulated magazines as Forbes, Vanity Fair, The New Yorker, Vogue and almost every travel magazine available in North AmericaÖ
The Complainant already has a strong presence on the Internet. In June of 1999, Fairmont Hotels & Resorts launched its website, <fairmont.com>. On the Complainantsí authorized website, guests can link directly to information about each of the Fairmont Hotels & Resorts, as well as to information about the city in which the hotel is located. The details of each hotel's amenities, services and facilities, as well as more than 200 photos of Fairmont properties including exterior shots, guestrooms, dining facilities and meeting rooms, are also provided."
The Complainants have registered trademarks in the United States, Canada and community trademarks in Europe for "Fairmont", "Fairmont Hotels", as well as a number of other trademarks incorporating the words "Fairmont" or "Fairmont Hotels". Collectively, these are referred to as the "FAIRMONT marks".
Three previous Panels have held that the FAIRMONT marks are world famous and have ordered the transfer to the Complainants of domain names incorporating the FAIRMONT marks. See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. 2001-0431, Fairmont Hotel Management L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd, WIPO Case No. D2001-1050, Fairmont Hotel Management L.P. v. Solutions Express Inc., WIPO Case No. D2001-0636.
As at the date the Panelist wrote this decision, when typing in the disputed domain name, the Panelist was automatically redirected to a web site which appears to be an official web site of the Complainants titled "Fairmont Hotels & Resorts Inc." located at "www.fairmonthotels.com/fairmont/".
5. Partiesí Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy have been satisfied as follows:
(a) the disputed domain name incorporates the "FAIRMONT" mark and this mark, combined with the word "hotel" which is descriptive of the Complainantsí business makes the disputed domain name confusingly similar to the Complainantsí FAIRMONT marks;
(b) the Respondent has no rights or legitimate interest in the disputed domain name as:
(i) the Complainants have not authorised the Respondent to use the "FAIRMONT" marks;
(ii) the Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is the Respondent making legitimate commercial, non-commercial or fair use of the domain name. Rather, at the time of filing the Complaint, the Respondent was using the disputed domain name to operate a website which contained links for travel and hotel sites (as well as links to other information such as online gambling, shopping, wedding, entertainment and many others). Such links to travel and hotel related sites could divert customers away from the Complainantsí authorised website;
(c) the Respondent registered and is using the disputed domain name in bad faith evidenced by:
(i) registering the disputed domain name which contains the Complainantsí distinctive "FAIRMONT" mark for no apparent legitimate reason, but to make a personal gain from the goodwill and reputation of the Complainants;
(ii) an intention to cause confusion in the minds of consumers, especially by using the FAIRMONT trademark and coupling it with words describing the Complainantsí business; and
(iii) the Respondentís full knowledge of the Complainantsí business and famous "FAIRMONT" marks, suggesting "opportunistic bad faith";
(iv) previous conduct of the Respondent in registering domain names based upon third-party trademarks. The Respondent had registered the domain name <nuetella.com> and linked it to the same webpage as the disputed domain name was linked to at the time the Complaint was filed. The domain name <nuetella.com> is a phonetic misspelling of FERRERO S.P.A.ís famous <nutella.com> domain name and an infringement on their well-known NUTELLA trademark for Hazelnut Spread;
(v) the Respondent offering numerous domain names for sale at a profit. A printout from the website "www.domainjunkies.com" shows that the Respondent is offering for sale hundreds of domain names, suggesting that the Respondent registers domain names to sell at a profit; and
(vi) the fact that the Respondent appears to be quite knowledgeable about the Rules. The email address provided for the Respondent has been found in the online chat archives of the website "www.opensrs.org"which is the web site for the registrar Tucows. That email address has been used to give advice to consumers about the Rules. If the Respondent is able to answer a consumerís online inquiry about registration or selling of domain names, it is fair to assume that the Respondent knew about the illegality of registering and/or selling third partiesí marks as domain names. Proceeding with registration of the domain name despite knowledge that registration of the domain name would be in breach of the Rules is evidence of bad faith.
The Respondent failed to file a Response within the time limit set by the Center.
In accordance with Para 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.
6. Discussion and Findings
In order to qualify for a remedy, the Complainants must prove each of the three elements set out in Paragraph 4(a) of the Policy, as approved by ICANN on October 24, 1999, namely:
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainants.
6.1 Identical or confusingly similar to a trade mark or service mark
The disputed domain name incorporates the Complainantsí trademark FAIRMONT. The added word "hotel" does not make the inclusion of the Complainantsí trademark in the domain names non-confusing. Rather, given that the added word describes the business services for which the Complainantsí trademarks are registered and used by the Complainants, the addition of "hotel" merely compound the confusion created by the incorporation of the Complainantsí trademark: Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.
In any event, it is likely that the Complainants own common law trademark rights in "FAIRMONT HOTELS" due to the extensive use of these words when describing the Complainantsí business in marketing material and advertisements. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The onus is on the Complainants to prove the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantsí rights. The Respondent chose not to do so. The Complainants are not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales, eResolution Case No. AF-0147, May 1, 2000.
The Panel finds that the Respondent has no legitimate rights or interest in the disputed domain name because:
(a) the Complainants have never authorized the Respondent to use the Complainantsí FAIRMONT mark;
(b) the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services and appears to have registered the disputed domain name to obtain the benefit of the Complainantsí reputation in the FAIRMONT marks to attract users to its own web site;
(c) the Respondent is no longer using the disputed domain name to promote his own interests, but is now using the disputed domain name to transfer users to an official web site of the Complainants. This indicates that the Respondent knew he had no rights or legitimate interests in the disputed domain name.
6.3 Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith by using the disputed domain name to intentionally attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainantsí FAIRMONT mark as to the source, affiliation or endorsement of the Respondentís web site.
The Complainantsí "FAIRMONT" marks are long-established and widely known. The Respondent has taken a widely known trademark for a hotel group and coupled it with the word "hotels". The Panel would find it extremely difficult to believe that the Respondent registered the disputed domain name without knowledge of the Complainantís business. Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.
The undisputed evidence shows that when the Complainant visited a website at the disputed domain name in August 2002, it contained a directory and search engine site, which included advertisements or entries for travel products.
The ultimate effect of using the disputed domain name which is identical or confusingly similar to the Complainantsí famous "FAIRMONT" marks is to cause confusion with the Complainants: See Embratel v McCarty, WIPO Case No. D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO Case No. D2000-0283 and Fairmont Hotel Management L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd, WIPO Case No. D2001-1050.
The disputed domain name is now being used by the Respondent to divert users to an official web site of the Complainants, which suggests that the Respondent is aware of the Complainants' trademark rights and by implication agrees with the allegations made by the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied Paragraph 4(b)(iv) of the Policy.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to Fairmont Hotels & Resorts (U.S.) Inc.
Dated: September 25, 2002