WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotel Lotte Co., Ltd., v Morris Communications Company, LLC
Case No. DBIZ2002-00024
1. The Parties
The Complainant is Hotel Lotte Co., Ltd., 22 Fl., Lotte Building, 1, Sogong-Dong, Jung-gu, Seoul, Korea. Complainant is represented in this administrative proceeding by Kang Hyeon-Gu, Lotte Confectionery, Yangpyoung-dong 4-ga, Yongdungpo-gu, Seoul, Republic of South Korea.
Respondent is Morris Communications, of Augusta, GA, United States of America. Respondent is represented in this administrative proceeding by Timothy E. Moses, PO Box 1564, Augusta, GA 30903-1564, United States of America.
2. The Domain Name and Registrar
The Domain Name subject to complaint is <charlotte.biz>. The Registrar of the Domain Name is Netpia.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the WIPO Arbitration and Mediation Center ("the Center") on April 24, 2002. The Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP Policy"), the Rules for Start-up Trademark Opposition Policy ("STOP Rules"), both as adopted by NeuLevel, Inc., and approved by ICANN; and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy ("Supplemental Rules").
3.2. Complainant states that on April 25, 2002, a copy of the Complaint was sent to the Respondent by postal or courier service, and that on April 24, 2002, a copy of the Complaint was sent to the concerned Registrar by postal or courier service.
3.3. On May 14, 2002, Formal Notification of STOP Complaint and Commencement of Administrative Proceeding was sent by the Center by post/courier (with enclosures) to the Respondent. Email copies without enclosures were sent to Respondent, copied to Complainant, ICANN and the Registrar.
3.4. On May 14, 2002, the Center notified Complainant of a deficiency in Section VII (mutual jurisdiction) of the Complaint. Complainant remedied the deficiency in an email dated May 15, 2002.
3.5. Respondent filed a Response on June 4, 2002.
3.6. On July 3, 2002, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Panel. An electronic copy of the Case File was sent by email to the Panel on July 3, 2002, and the complete Case File was sent by courier.
4. Factual Background
4.1. According to Complainant, Hotel Lotte Co., Ltd., is a company based in the Republic of South Korea, engaged in hotel management with six hotels across Korea and one under construction in Moscow. Hotel Lotte is also involved in banquet hall management, real estate leasing and other activities. Complainant has been the legitimate owner of the Korean Intellectual Property Office service mark THE CHARLOTTE SUITE since July 21, 1979, having filed on August 19, 1978.
4.2. Complainant has used the word "Charlotte" in connection with other services including a prepaid debit card, restaurants, the Charlotte Room/Suite in its hotels, and the Charlotte Membership Club (e-Charlotte).
4.3. According to Respondent it is a media and advertising company engaged in, among other things, print publishing, radio, television, computer software, outdoor advertisement, equestrian and other events. Respondent publishes the printed Best Read Guides containing local information in about forty cities of the United States of America and elsewhere.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The dispute is properly within the scope of the STOP Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the STOP Policy by reference.
5.3. The disputed Domain Name <charlotte.biz> is identical to the mark in which Complainant has rights. The operative part of the mark THE CHARLOTTE SUITE is the word "Charlotte", the remainder being common words.
5.4. Respondent has no rights or legitimate interests in the disputed Domain Name. Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The Domain Name has not been used or demonstrably prepared for use in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the Domain Name.
5.5. Respondent has registered or used the disputed Domain Name in bad faith in the terms of the STOP Policy. Respondent is not using the Domain Name. Respondent by registering the Domain Name has prevented Complainant from doing so and thereby reflecting Complainant's mark and has disrupted the business of Complainant. Respondent, by using the Domain Name, could attract visitors to its website in their mistaken belief that it was endorsed by Complainant.
5.6. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.
B. Contentions of Respondent
5.7. The contentions of Respondent include (paragraphs 5.8-5.11 below) that:
5.8. Respondent denies the Complaint.
5.9. The disputed Domain Name <charlotte.biz> is not identical to Complainant's mark THE CHARLOTTE SUITE.
5.10. Respondent has made demonstrable preparations, verified by affidavit, to use the Domain Name in connection with a bona fide offering of goods or services. Respondent's selection of the name "Charlotte" is in connection with promotional activities in the USA city of the same name.
5.11. There has been no bad faith on the part of the Respondent, which was unaware of the existence of Complainant Hotel Lotte Co., Ltd., or its activities. Respondent had no intention of selling the Domain Name or of preventing Complainant from using it. Respondent had no intention of preventing Complainant from reflecting its mark, had no intention of disrupting the business of Complainant, is not in the same line of business, is not a competitor and has no business interests in Korea. Respondent has not attempted to attract users to its website and cannot have done so because the site is not operational.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of STOP Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to the applicable Provider, in compliance with the STOP Rules, that:
i. Your domain name is identical to a trademark or service mark in which the Complainant has rights; and
ii. You have no rights or legitimate interests in respect of the domain name; and
iii. Your domain name has been registered or is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the STOP Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical to a Trademark or Service Mark in which Complainant has Rights
6.3. The question of fact is whether Respondent's Domain Name <charlotte.biz> is identical to a mark in which the Complainant has rights. The gTLD suffix <.biz> is an inevitable part of the Domain Name and is of no consequence in the determination of identity. The remaining element of the Domain Name is "Charlotte". Complainant's trade or service mark registration, which it has held registered since 1979, is styled THE CHARLOTTE SUITE. Complainant may have at least common law rights in other devices incorporating the word "Charlotte" including "The Charlotte Room" and "Charlotte Membership Club" or variants thereof.
6.4. The element "Charlotte" alone is not inherently a strong mark, having connotations of a personal given name or family name in different languages and cultures, of more than one place name, of more than one culinary recipe name, and other applications. Complainant's own search (Exhibit J) lists 129 records in the Trademark Electronic Search System of the US Patent and Trademark Office. Complainant does not produce any evidence to the effect that it has rights in the word "Charlotte" standing alone. In accordance with the STOP it is not sufficient for the disputed Domain Name merely to evoke or be similar to Complainant's mark, it must be identical. The Panel is not persuaded that the word "Charlotte" standing alone is sufficient to infringe Complainant's various forms of usage of the word in combination with others in a descriptive or governing sense. The isolated word "Charlotte", and the Complainant's trade or service marks whether registered or otherwise, are not identical and the Complainant has failed to prove its case under Paragraph 4(a)(i) of the STOP Policy.
6.5. Accordingly Complainant cannot succeed in meeting all three requirements under the STOP Policy to obtain a transfer of the disputed Domain Name. The remaining elements of the STOP Policy will be considered for completeness and in order to determine whether the Domain Name can be subject to further challenges under the STOP.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.6. The STOP Policy under Paragraphs 4(c)(i), (ii) and (iii) recognizes certain circumstances whereby a Respondent can establish rights or legitimate interests in a Domain Name. Respondent relies particularly on Paragraph 4(c)(ii) of the STOP Policy:
"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..."
6.7. Respondent has provided in evidence (Exhibit 4) an affidavit by Michael F. Romaner, President of Morris Digital Works, duly sworn before a Notary Public in Richmond County, Georgia, USA. The affidavit certifies in effect that the Domain Name <charlotte.biz> was, before any notice of the dispute, being developed and was posted to the Internet for the bona fide purpose of providing business and entertainment information related to the city of Charlotte, North Carolina, USA. The Internet website was being developed in connection with booklet publications known as the Best Read Guide, which consist essentially of guides to certain cities, including Orlando and London, of which editions running to 104 pages and 76 pages respectively were provided in evidence (Respondent Exhibits 1 and 2). Apparently the present STOP Proceeding led the Registrar to suspend and not to broadcast the Internet website. A print of the intended initial page was referred to in the affidavit and was attached.
6.8. The Panel has not received any evidence of a geographical theme in Respondent's registrations, and the limited scope of this Proceeding does not contemplate a process of cross-examination. At face value Respondent's affidavit certifies that preparations to use the Domain Name had been made before the dispute and these preparations were demonstrable in so far as the website was sent for installation and a proof copy has been produced in evidence. In the terms of Paragraph 4(c)(ii) of the STOP Policy, Respondent has satisfied the Panel that it has a legitimate interest in the disputed Domain Name. Accordingly the Panel finds for Respondent under Paragraph 4(a)(ii) of the STOP Policy.
6.9. Respondent is not the owner or beneficiary of a trade or service mark that is identical to the Domain Name in terms Paragraph 4(c)(i) of the STOP Policy. Respondent (as an individual, business, or other organization) has not commonly been known by the Domain Name in the terms Paragraph 4(c)(iii) of the STOP Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.10. There is no evidence that Respondent has ever had any intention of selling the disputed Domain Name to Complainant or to any other entity in the terms of Paragraph 4(b)(i) of the STOP Policy. Respondent in its sworn affidavit refutes any such notion.
6.11. No evidence suggests that Complainant has been prevented from reflecting its mark in a corresponding Domain Name in the terms of Paragraph 4(b)(ii) of the STOP Policy; on the contrary, numerous variants that would reflect the Complainant's mark THE CHARLOTTE SUITE (or similar) are available for registration.
6.12. Nothing in the evidence indicates Respondent, a publishing and associated services company, has done anything to disrupt the business of Complainant, a hotel and associated services company, in the terms of Paragraph 4(b)(iii) of the STOP Policy.
6.13. Paragraph 4(b)(iv) of the STOP Policy recognizes bad faith where Respondent, by using the Domain Name, has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website, or of a product or service on the website. Evidently the website has not been used at all. It is not realistically plausible on the facts that Respondent, a publisher located in the United States of America, had any purpose in diverting clients of a Korean hotel company to its website.
6.14. The circumstances illustrated in Paragraphs 4(b)(i)-(iv) of the STOP Policy are without limitation, nevertheless the Panel does not find any other reason to find bad faith on the part of Respondent and accordingly finds for Respondent under Paragraph 4(a)(iii).
Reverse Domain Name Hijacking
6.15. The Panel does not find sufficient evidence that the Complainant has attempted to deprive the registered holder of the Domain Name in bad faith. The paucity of Complainant's case itself argues against there being any determined attempt at Reverse Domain Name Hijacking.
6.16. Under Paragraph 4(l)(ii)(2) of the STOP Policy and Paragraph 15(e)(ii) of the STOP Rules, in the event that Respondent demonstrates legitimate rights to the Domain Name, which in this case it has done, the Panel is required to decide that no subsequent challenges under this STOP Policy shall be permitted. Accordingly the Panel so decides.
6.21. As found in 6.4 above, the disputed Domain Name is not identical to Complainant's registered or unregistered trade or service marks. As summarized in 6.8 above, Respondent does have rights or legitimate interests in the Domain Name. As summarized in 6.14 above, there is no evidence that the disputed Domain Name was registered in bad faith. The Panel gives its decision for Respondent and against Complainant.
The Decision of the Administrative Panel is that the disputed Domain Name <charlotte.biz> is not identical to Complainant's marks, that Respondent has a legitimate interest in the Domain Name, and that the Domain Name has not been registered in bad faith. The disputed Domain Name <charlotte.biz> shall not be transferred to Complainant. Respondent has a legitimate interest in the Domain Name and therefore no subsequent challenges against <charlotte.biz> shall be permitted under the STOP.
Dr. Clive N. A. Trotman
Dated: July 17, 2002