WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Amanresorts Limited v. Melissa Perlman

Case No. D2003-0383

 

1. The Parties

The Complainant is Amanresorts Limited of Singapore, represented by Wiggin & Dana LLP of United States of America.

The Respondent is Melissa Perlman of Phoenix, Arizona, United States of America, represented by Davis & Gilbert LLP, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <amansala.com> ("the domain name"). The domain name was registered with Dotster.com ("the Registrar") on February 22, 2000.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2003. On May 21, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On May 21, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (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 May 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June  15,  2003. The Response was filed with the Center on June 13, 2003.

The Center appointed Warwick Smith as the sole panelist in this matter on June 20, 2003. 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.

On July 3, 2003, the Panel issued a procedural order, requesting a further statement from the Complainant responding to the allegations of reverse domain name hijacking which were contained in the Respondentís Response. The Respondent was given the opportunity to file a counter-statement, and the time for giving this decision was extended to July 17, 2003.

Further statements were received from both parties pursuant to that procedural order, and those further statements have been duly considered by the Panel.

 

4. Factual Background

The Complainant

The Complainant owns, operates, and markets a chain of small, luxury hotels and resorts in a number of countries, including Thailand, Indonesia, the Philippines, France, Mexico, the United States, French Polynesia, and (from December 2002) Cambodia. The Complainantís resorts appear to be targeted at the high end of the market, and tend to be focused on unique "lifestyles,", usually associated with the location of the particular resort. The Ccomplainant has produced evidence of a number of travel awards its resorts have won, and it appears to operate a prestigious, top of the range, holiday option. However, its advertising has not been limited to high-end, luxury magazines Ė promotional or editorial pieces have been published in a number of mass-circulation publications over the years, including the New York Times, Time Magazine, The Wall Street Journal, and Forbes magazine. The Complainant describes its resorts as "environmentally friendly and aesthetically pleasing,", and it offers a number of resort activities, including yoga, spa services, local cuisine and excursions, and non-traditional accommodation. It opened its first resort in 1988, and now operates a total of 12 hotel resorts. All but two of these have incorporated, as part of the resortís name, the expression "Aman,", which is a word taken from the ancient Sanskrit language meaning "peace.".

The Complainantís "Aman" Resorts include the Amandari, Amanpuri, Amankila, Amanusa, Amanwana, Amanpulo, Amanjena, Amanjiwo, and Amangani. Since 1988, the Complainant has widely used the word "Aman" in advertising and promoting its resorts around the world. Some of this promotional material uses the word "Aman" as an adjective to describe the Complainantís services, e.g., "Aman Experiences,", "Aman Cruises,", and "Aman Advisors.". In addition, the Complainant publishes a quarterly newsletter "Amanews,", which is distributed to more than 75,000 "Amanjunkies" situated in a number of countries around the world, including the United States and Mexico.

The Complainant does not operate any "Amansala" resort, but it has used the word "sala" in publications relating to its Amanpuri resort in Thailand. In an article published in 1989 "Travel & Leisure" brochure, the author said: "Each of the 40 identical pavilions, like the rest of Amanpuriís buildings, is in the form of a Thai temple, and it has its own sala, a cozy sheltered terrace containing cushions, pillows and a table.". The word "sala" is also used (to describe the same features of the Amanpuri resort) in the Complainantís 2000 Amanpuri Brochure.

The Complainant operates a web site at "www.amanresorts.com",, on which it promotes its "Aman" Resorts. The Complainant has also registered the names of each of its individual resorts as domain names Ė e.g., <amansara.com>, <amandari.com>, <amanpuri.com>, and all of these web sites are directly or indirectly linked to the main web site at "www.amanresorts.com"..

The Complainant acquired a resort property in Mexico, in October 2000. This resort is not (and apparently never has been) known by any name which incorporates the word "Aman.". It is known as the "Mahakua-Hacienda de San Antonio.". (The Complainant says that the word "Mahakua" is derived from a combination of the Sanskrit word "Maha,", meaning "great,", and "Kua" an "Amerindian" word meaning "to exist").

The Complainantís Trademarks

The Complainant has multiple registrations around the world, for the AMAN mark, covering a wide variety of goods and services. It is not necessary to refer to them all, but the Complainant has produced evidence that it is the registered proprietor of the word mark AMAN in Australia, Morocco, and the Turks & Caicos Islands. The AMAN mark was registered in Australia on April 23, 2001, in a number of classes, including for "travel agency services, travel ticket reservation services, arranging tours and transportation Ö" in Class 39, and for "hotels, motels, guest house and accommodation services, reservation of hotel accommodation and restaurant services Ö information, advisory and consultancy services related to the aforesaid services Ö" in Class 42.

The AMAN marks registered in Morocco and the Turks & Caicos Islands, were registered on June 7, 2002, and August 5, 2002, respectively. There are pending applications to register the AMAN mark in a number of other countries, including Brazil, France, Japan, Malaysia and the Philippines.

In the United States of America, the Complainant has registered the mark AMANGANI (registered July 9, 2002), for a variety of goods and services in international classes 3, 25, 35, and 42. The specification for the international class 42 registration of AMANGANI includes "hotels, motels, providing temporary guest house and accommodation services, reservation of hotel accommodation ÖÖ aand consulting services relating to all the aforesaid services. The application for the AMANGANI mark was filed on January 15, 1999.

The Complainant says that it is also the proprietor of the registered mark AMAN in the United States (notice of allowance is said to have been issued on January 28, 2003), but no supporting evidence of that claim was produced.

Finally, the Complainant is the registered proprietor of the mark AMANSARA in Cambodia, in a number of classes, including international classes 35, 39, 41, 43, and 44. The AMANSARA marks were registered in Cambodia on January 27, 2003, and again cover a wide range of goods and services. These include "hotels, motels, guest house and accommodation services, reservation of hotel accommodation and restaurant services Ö".Ö".

The Respondent and the Domain Name

The Respondent is a resident of the United States of America. She says that her primary residence has remained at the Arizona address which is the address provided for the domain name in the relevant WHOIS database extract. However, she also has an address in New York City to which a number of communications appear to have been addressed.

The Respondent says that in 1999, she created a business named "Amansala.". She says that, initially, the business was primarily an importing business, importing and selling beautiful items from around the world for the home, body, and spirit (e.g., Buddha statues, tranquility curtains, prayer flags). She says that these items were eventually offered for sale on the Iinternet, and she has produced a page from the web site at the domain name which appears to confirm that the site has, at least recently, been used for retail selling. (That page contains a copyright claim dated "1999/2000,", asserted by a corporation called Amansala.com, Inc.)

The Respondent says that the name "Amansala" was derived from the Sanskrit words "aman" (meaning "peace" and "sala" meaning "resting place"). She says that the name was chosen with particular regard to her interests in yoga and the nurturing of mind, body and soul, generally.

The Respondent says that she began to offer travel services around about February 2000 (e.g., spiritual journeys to India). At that stage, the domain name was registered.

The Respondent has produced a number of exhibits designed to show that during the year 2000, she was conducting a bona fide business associated with the domain name,. These include a Cardservice International document dated November 21, 2000, which refers to the Respondentís store name as "Amansala,", with an address in West End Avenue, New York City. The Respondent also produced a United Parcel Service delivery service invoice dated January 13, 2001, addressed to "Amansala,", at the same New York City address.

It is not necessary to refer to all of these documents in detail Ė it is sufficient to say that they do appear to show you that the Respondent was operating a miscellaneous specialty retail stores business under the name "Amansala", from at least as early as November 2000.

The Respondent says that at some time in the year 2001, she and her business partner, Erica Gragg, began to develop a concept for a retreat center in Mexico. This would be a resort where people would come to learn yoga and meditation, eat healthy foods, and generally focus on physical and mental well-being. The Respondent and her partner developed the idea further in the latter part of 2001, and in February 2002, opened their "Amansala" Resort at Tulum in Mexico. The Respondent says that, because the retreat center evolved from the same philosophy as the Respondentís import and travel services company, and because "sala" also means "water" in Sanskrit, the resort was named "Amansala,", being a place of tranquility by the water. The fact that the Spanish translation of "Amansala" means "room of love,", also fitted the Respondentís vision for the resort. The Respondent has produced a number of official documents from various Mexican Government authorities, which, although in the Spanish language, show clearly enough that there is indeed a hotel resort operated at Tulum under the name "Amansala.".

The Respondentís Tulum Resort appears to offer a rather more "down market" holiday experience than that offered by the Complainantís resorts. The Respondent describes a visit to its Tulum Resort as a "shabby chic" experience, with no electricity available after 10:.30 pm, and a limited menu focusing on natural foods. The Respondentís resort at Tulum also offers a health and fitness program described as the "Bikini Boot Camp.". The room rates at the Respondentís Tulum Resort appear to be significantly lower than those generally charged by the Complainant at its "Aman" Resorts.

The Respondent says that she has applied for registration of the mark "AMANSALA" in Mexico, for hotels, but the document produced as an exhibit to her Response is in the Spanish language, and it is not at all clear to the Panel that it is in fact a copy of an application for registration of a trademark.

The Respondent promotes her Tulum "Amansala" Resort through a web site at the domain name. She uses meta tags in association with the web site at the domain name, (including the meta tag "yoga vacations") but says that they are not targeted to attract Iinternet traffic looking for the Complainant or its resorts. For example, "Aman" is not used as a meta tag, and nor is "Aman Resorts.".

It appears from documents produced by the Complainant in its statement in reply, that the Respondentís business partner Erica Gragg, had been a guest at the Complainantís Amandari and Amanjiwo resorts in January 1998. The Respondent does not deny that she was aware of the Complainant and its resorts when she registered the domain name in February 2000.

Communications between Complainant and Respondent Before Commencement of Administrative Proceeding

The Complainant says that it first learned of the Respondentís existence in June 2002.

On July 8, 2002, the Complainantís legal director wrote a "cease and desist" letter to "Amansala" at the New York City address. A "holding" response was received on August 16, 2002, from an attorney instructed by the Respondent, and a substantive response was sent to the Complainant by that attorney, on September 25, 2002. That response referred to the Respondentís substantial investment of effort and financial resources in building the brand and goodwill associated with the AMANSALA trademark, and referred to the Respondentís reluctance to entertain the thought of selling the mark. The Respondent, through her attorney, denied that the mark is confusingly similar to the AMAN names/marks, and suggested that the Respondent would agree to the Complainantís AMAN marks co-existing with the Respondentís AMANSALA mark, despite her view that she enjoyed superior rights in Mexico. In an effort to resolve the matter, the Respondent indicated that she was amenable to changing the name and trademark, provided that the change would leave her in as reasonably good a position as she had been in prior to the change. An estimate of amounts expended to that date in creating the AMANSALA mark was provided, showing that the Respondent had spent at least US$65,600 to create, develop and promote the AMANSALA name and mark. Allowing for various adjustments, the Respondent indicated that she would assign to the Complainant all rights in and to the AMANSALA name and mark in the United States of America and in Mexico, on upon the Complainant paying the Respondent US$51,600.

On September 30, 2002, the Complainantís legal director replied, offering US$15,000 for the complete transfer of the Aman name and an agreement not to use any other similar name. The letter referred to the Complainantís "policy of aggressively enforcing our intellectual property rights.".

That US$15,000 offer was rejected by the Respondent on October 16, 2002. The Respondent claimed to have been using the mark AMANSALA in the United States from at least as early as 1998-99, and asserted that "there is uncertainty of whatever respective trademark rights exist here and in Mexico.".

There do not appear to have been any further communications between the partiesí legal advisers until March 11, 2003, when the Complainantís present counsel wrote to the Respondent specifically with regard to the Respondentís registration and use of the domain name. In this letter, the Complainantís counsel demanded that the Respondent cease using the domain name, and take all steps necessary to change her business name and the domain name so that they do not contain the term "aman,", or otherwise infringe the AMAN marks.

On March 30, 2003, the Respondent replied to the Complainantís counsel. The Respondent asserted that she had been using the domain name <"aAmansala.com"> in commerce since 1999, and had in no way represented herself to be affiliated with or representative of the Complainant. The Respondentís letter referred to the Respondent having extended the Complainant the courtesy of a statement on [the Respondentís] home page at the domain name, reconfirming that "we are in no way affiliated or related to The Aman Resorts.". Ms. Perlman went on to say:

"Never the less, a monetary offer would be considered would you like to own the name Aman sala, if it is commensurate with the investment in marketing and developing goodwill with our name."

She went on to refer to the Respondent having invested over 12 months of active marketing and public relations, with editorial coverage in various publications distributed in Germany, Canada, Mexico and France. She said also that the Respondent had marketed its resort extensively as a location for yoga retreats and other special events. Ms. Perlman reiterated the Respondentís willingness to change its "Amansala" name, but referred to the costs of building up a new brand. Ms. Perlman said:

"If we were to transfer ownership of Amansala to the Aman Resorts, we would not be seeking to profit from such a transaction, but only to cover our investment and allow to rebuild a new brand name."

Ms. Perlman invited further discussion, but there appears to have been none: this administrative proceeding was commenced on May 19, 2003.

 

5. Partiesí Contentions

A. The Complainant

1. The domain name is confusingly similar to the Complainantís AMAN family of marks Ė AMAN, AMANSARA, AMANDARI, AMANPURI, AMANKILA, AMANUSA, AMANWANA, AMANPULO, AMANJENA, AMANJIWO, and AMANGANI.

2. The Complainant operates one resort in Mexico, and a consumer might reasonably conclude that the Respondentís web site at the domain name advertises a new resort owned and operated in Mexico by the Complainant.

3. The disclaimer which the Respondent has inserted on the web site at the domain name, comes too late to affect the confusion issue.

4. When a domain name incorporates, in its entirety, a distinctive trademark, that creates sufficient similarity between the mark and the domain name to render the domain name confusingly similar to the mark (citing WIPO Case No. D2000-0996, Diageo plc v John Zuccarini, Individually and t/a Cupcake Patrol).

5. Confusion is also created by the "relatedness" of the respective services offered by the Complainant and the Respondent. Both offer luxury hotel and resort accommodation in exotic locations. Both offer yoga, spa services, native cuisine, local excursions, and non-traditional accommodation, and both emphasize the provision of a unique "lifestyle.".

6. Many features of the partiesí respective web sites are identical. For example, the Respondentís web site at the domain name displays the name "Amansala" in the same font as that used by the Complainant for its "Aman" Resorts. Also, both partiesí web sites refer to the meaning and origins of the resort name (e.g., the Complainantís recently opened Cambodian resort "Amansara" refers to the derivation of that name from the two Sanskrit words "aman" and "apsara.".

7. The Respondent has no rights or legitimate interests in the domain name. Specifically:

(i) The Respondent is not a licensee or otherwise authorized by the Complainant to register and use the domain name;.

(ii) The Respondent has made no use of the domain name in connection with any bona fide offering of goods or services. That is so because the Respondentís services have been offered in a manner designed and calculated to trade off the Complainantís goodwill. The fact that the Respondent has infringed the Complainantís trademarks precludes any finding that the Respondent has been making a bona fide use of the domain name;.

(iii) The Respondent has acquired no trademark or service mark rights in the word "Amansala";.

(iv) The Respondent has not made any legitimate non-commercial or fair use of the domain name. The Respondentís use of the domain name has been (purposefully) designed to misleadingly divert consumers to the Respondentís web site at the domain name.

8. The Respondent has registered, and is using, the domain name in bad faith, for the following reasons:

(i) The Respondent is not known by the domain name;.

(ii) The Respondent has no legitimate business justification for the choice of the domain name, which was chosen with a view to trading off the Complainantís goodwill in its AMAN family of marks;.

(iii) The Respondent is a direct competitor of the Complainant, and has had full knowledge of the Complainantís rights. The Respondent acted in bad faith at the time of registration of the domain name by selecting and registering a domain name that fully incorporated the famous AMAN mark with intent to trade off the goodwill developed by and associated with the Complainant;.

(iv) The Respondent registered the domain name for the purpose of renting or selling it to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name. (The Respondent, through her then-attorney, offered to transfer the domain name to the Complainant for US$50,000, and continues to make such offers in response to the Complainantís demands);.

(v) "On information and belief,", the Respondent uses the domain name for the purpose of confusing and diverting potential customers who are already familiar with the Complainant and its AMAN family of resorts, to the Respondentís web site, where she markets goods and services in competition with the Complainant (citing The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474, in support of the contention that such circumstances amount to registration and use of a domain name for the purpose of disrupting Complainantís business and intentionally attempting to attract users to Respondentís web site by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondentís web site).

(vi) The Respondent has failed to provide current, complete, and accurate contact information for the domain name, in violation of paragraph 2(a) of the Policy and the registration agreement with the Registrar. Specifically, the phone number contained in the Registrarís WHOIS database has been disconnected, and the Respondent no longer resides in the Phoenix, Arizona address listed in the WHOIS database (she having moved from Phoenix to New York City some time between August 1998 and October 2000). The Respondent currently resides in New York City.

B. The Respondent

1. The domain name is not confusingly similar to any trademark or service mark in which the Complainant has rights. The Complainant has no AMAN mark registered in Mexico, and does not operate any resort in that country which includes in its name the word "Aman.". The simple fact of incorporation of the Complainantís AMAN mark in the domain name, is not enough to create confusing similarity within the meaning of paragraph 4(a) of the Policy. This is not a case where the domain name at issue consists of a combination of a strong trademark and a descriptive or generic expression (such as might have been the case if the Respondent had registered <amanhotels.com>).

2. The Complainant only began operating its "Amansara" resort in Cambodia 10 months after the Respondent had opened its "Amansala" Resort at Tulum. The Complainant has provided no evidence of any use of the name "Amansara" prior to opening its Cambodian Resort, and its July 2002 cease and desist letter did not refer to any alleged rights in any AMANSARA mark.

3. The partiesí web sites are not confusingly similar. In fact, the Complainant uses a different font in its descriptions of each of its various resorts. (Nevertheless, as a demonstration of its good faith, the Respondent has changed the font on the web site at the domain name, so that the Respondentís AMANSALA mark and the Complainantís various "Aman" names as used on the Complainantís web sites, look different.

4. While the web sites of both Complainant and Respondent explain the meanings of the names of their respective resorts, the Complainantís web site for its recently opened Amansara Resort is the first of all of its web sites to mention that the name is derived from the Sanskrit language, by the "twinning" of two separate Sanskrit words.

5. The resorts operated by the Complainant are not similar to the Respondentís Tulum Resort. While both parties offer yoga, massages, excursions, and non-traditional accommodation, the Complainantís resorts are aimed at elite travelers prepared to pay US$600 to US$2,400 per night. The Respondentís resort, on the other hand, is aimed at a health-conscious mass market which is prepared or willing to pay substantially less.

6. "Aman" is a generic word in the Sanskrit language meaning "peaceful"; it is not distinctive.

7. The Respondentís registration of the domain name in February 2000, pre-dates the first registration by the Complainant of any of its AMAN marks.

8. There are over 2000 registered domain names which begin with the letters "aman.". These include the domain name <aAmansari.com>, which promotes Amansari Villa, a holiday house at Kewarra Beach, North Queensland, Australia, which is unrelated to the Complainant.

9. The domain name will not attract Iinternet users who use the internet as a search tool. The Respondent does not use any meta tags targeted to attract those looking for the Complainant or its resorts.

10. The Respondent does enjoy a right or legitimate interest in the domain name, for the following reasons:

(i) Prior to receiving any notice of the present dispute, the Respondent was operating a good faith, bona fide business under or by reference to the name "Amansala.". The Respondent also uses the name "Amansala" as a corporate name for the entity which conducts her business;.

(ii) As the Complainant has known since mid-2002, the Respondent has spent much time, money, and effort promoting the name "Amansala" in connection with her beachfront retreat at Tulum and its yoga and bikini boot camp programs.

11. The domain name was not registered, and has not been used, in bad faith, for the following reasons:

(i) The Respondent did not need the Complainantís permission to use the AMANSALA mark, or to register the domain name;.

(ii) The Complainant is wrong in saying that the Respondent was not known by the name "Amansala" before registering her domain name. Since 1999, the Respondent had been in business using the name "Amansala,", and both that use and the registration of the domain name, itself, occurred years before the Complainant considered using the name "Amansara" (for its Cambodian Resort);.

(iii) The Respondent has established her own goodwill in the AMANSALA mark;.

(iv) The parties are not direct competitors. The Respondent operates one resort in Mexico, catering for those looking for affordable, active, "get-away" holidays. The Complainantís chain of resorts caters to a wealthy elite;.

(v) The disclaimer which the Respondent inserted on the web site at the domain name in 2002, demonstrates her good faith;.

(vi) The Respondent did not offer to transfer Ďjust the domain nameí for US$50,000. The Respondentís offers have always contemplated a transfer of the AMANSALA trademark and the goodwill inherent in it, in addition to the domain name;.

(vii) It is misleading for the Complainant to say that the Respondent knew of the Complainantís "prior rights" in the AMAN family of marks. The Complainantís first registration of the mark AMAN was in Australia in 2001, being approximately 2 years after the Respondent first used the name "Amansala.". When the Respondent named her beachfront center in Mexico, it was logical to name it "Amansala", meaning a place of tranquility by the water;.

(viii) There are other resorts in the world which use "Aman" as part of their name, including the Amansari Resort in Queensland, Australia;.

(ix) There is nothing in the Complainantís argument about incorrect contact information in the Registrarís WHOIS database for the domain name. The Respondentís primary residence has remained at the Arizona address listed, and the Complainant has erroneously listed the Respondentís telephone number;.

(x) At most, the Complainant has sought to infer bad faith from its allegations of similarity between the marks, and the Respondentís alleged lack of rights in the domain name. That is not enough;.

(xi) The Respondent did not acquire the domain name for the purpose of selling or renting it to the ComplainantRespondent;.

(xii) There is no evidence of any pattern of conduct on the Respondentís part which might evidence bad faith;.

(xiii) The lack of use of any meta tags which might be suggestive of bad faith, the voluntary change of the font used in the text on the Respondentís web site, the disclaimer inserted on that web site Ė all these demonstrate that the Respondent has not been motivated by any desire to create confusion.

12. The Complainant has been guilty of reverse domain name hijacking, for the following reasons:

(i) The Complainant was well aware of the Respondentís legitimate interest in the domain name, before it commenced this administrative proceeding;.

(ii) The Complainantís purpose in commencing the administrative proceeding was to harass or strong-arm the Respondent out of her valid rights;.

(iii) Why is the Complainantís new resort in Cambodia not called "Amanaspara" (which is the exact combination of the two Sanskrit words from which the name is said to have been derived)? Why introduce (in the web site relating to the Complainantís new resort in Cambodia) the references to the Sanskrit language and the "twinning" of the two Sanskrit words? The appropriate inference is that the Complainant was attempting to illegitimately bolster its case in this proceeding by selecting a name (and an explanation of the derivation of that name) which is very similar to the domain name;.

(iv) Amongst some Asian people, the letter "l" is often pronounced as an "r" Ė the Complainant has deliberately chosen the name "Amansara" for its new Cambodian Resort with a view to artificially bolstering an argument that some (Asian) consumers will confuse the Respondentís resort in Tulum and/or the domain name with the Complainantís new resort in Cambodia;.

(v) The Complainant has represented in its Complaint that it uses the name "Aman Spa"; however, the Complainant abandoned that name as a trademark in the course of 2002;.

(vi) The Complainant has been aware of the Respondentís history and the fact that she has been conducting a bona fide business in connection with the domain name, from, at latest, its receipt of the September 2002 and March 2003 correspondence from the Respondentís attorneys.

Complainantís Contentions in Reply to Respondentís allegations of "Reverse Domain Name Hijacking

1. In an October 2002 email, the Respondentís then-counsel admitted "uncertainty" over the partiesí respective trademark rights.

2. The Complainant has never acknowledged that the Respondent has a legitimate interest in the domain name.

3. It cannot be said that the Complainantís position in filing its complaint was wholly without merit. The Respondent had notice of the Complainant and its AMAN mark before she registered the domain name Ė in addition to the fact that the Respondentís business partner, Erica Gragg, had stayed at two of the Complainantís resorts in January 1998, the Complainantís resorts were widely known throughout the travel industry by February 2000, and it would have been impossible for the Respondent to have been unaware of the Complainant if she had been involved in the travel industry at about that time.

4. The Sanskrit origins of the names of the Complainantís various "Aman" resorts have been consistently publicized in a number of articles, and the fact that the Sanskrit origins of the names may not currently appear on the Complainantís web sites is irrelevant.

5. The name "Amansara" for the Complainantís Cambodian resort, was first revealed in the July-September 2002 issue of "Amanews,", which was printed no later than June 2002. At that time, the Respondentís Tulum resort had been open for only four months, and it is implausible to suggest that the Complainant, in choosing the "Amansara" name for its Cambodian resort, was trying to capitalize on any success the Respondent might then have achieved with her Tulum venture.

6. The Respondentís reference to pronunciation difficulties as between the suffixes "sara" and "sala" among some Asians, is pure conjecture.

7. The Complainant abbreviated the Sanskrit expression "Aspara" to "Sara" in the name of its new Cambodian resort, solely for the purpose of reducing the "suffix" of that particular "Aman" resort to a two-syllable suffix (which would be consistent with all the Complainantís other "Aman" resorts).

8. The Complainant has never claimed to possess any registration for the mark "AMAN SPA,", although it has used and continues to use that name as one of its family of AMAN marks.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 that complainant, for valuable consideration in excess of [the respondentís] documented out-of-pocket costs directly related to the domain name; or

(ii) [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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondentís] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the respondentís] web site or location or of a product or service on [the respondentís] web site or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] 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.

Paragraph 15(a) of the Rules requires the Panel to:

"Ö decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable".

Paragraph 4(a)(i) of the Policy Ė domain name identical or confusingly similar to trademark or service mark in which Complainant has rights

The Panel is satisfied that the Complainant has trademark or service mark rights in the mark AMAN, including registered marks in Australia, Morocco and the Turks & Caicos Islands. Having regard to the extensive promotion of its "Aman" resorts over the period since the late 1980s, the Panel is also satisfied that it is probable that the expression "Aman" has become distinctive of the Complainant and its resort hotels, at least in some countries where those resorts are located.

The Panel is also satisfied that the Complainant is the owner of the registered mark AMANGANI in the United States, and is also the registered proprietor of the mark AMANSARA in Cambodia.

None of these marks (registered or unregistered) is identical to the domain name. The issue is whether the domain name is confusingly similar to any of them.

The Panel finds that the domain name is not confusingly similar to the mark AMANGANI, nor to any of the full names of any of the other "Aman" resorts operated by the Complainant, with the exception of the Amansara Resort recently opened by the Complainant in Cambodia. The difference between the mark AMANSARA and the domain name is only the difference between "r" and "l", and that difference is sufficiently small that, in the Panelís view, the domain name is confusingly similar to the Complainantís AMANSARA mark.

Having regard to that finding, it is not strictly necessary for the Panel to consider under this head whether the domain name is confusingly similar to the Complainantís AMAN mark. However, it is appropriate to make some observations on that matter, because the existence (if any) of any such confusing similarity affects other matters which the Panel is obliged to decide under the Policy, including, in particular, the question of whether the Respondent has acted in bad faith in registering and using the domain name.

The Panelís first observation is that, while the domain name contains the mark AMAN in full, this is not one of those cases where the Complainantís mark has been coupled with some generic or descriptive term which could have little impact on the overall impression created by the domain name. The word "Aman" is not an English word, but nor is the word "Sala.". Both appear to be words in the Sanskrit and Spanish languages and, at least to English readers, neither appears to be stronger than the other. As this Panel has noted in WIPO Case No. D2002-0744 (Gorstew Limitedtd v. Wworldwidewebsales.com), the comparison between the domain names and the Complainantís mark must be based on the overall impression given by the mark and the domain name, bearing in mind any particular distinctive or dominant components, and having regard to visual, phonetic, conceptual similarities.

Clearly, there is some similarity between the domain name and the AMAN mark, because the expression "aman" is identical to the first part of the domain name. Another factor in the Complainantís favour is that it and the Respondent are both in the hotel resort business, although the Respondent says that they operate in quite different segments of that market.

Looking at the elements in the test applied by the lLearned Panelist in WIPO Case No. D2002-0996 (Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol), the Complainant has not produced any evidence of actual confusion, and it is not clear to the Panel that the parties are using the same marketing channels. Also, there is something to be said for the Respondentís submission that the relatively high price of the services offered by each of the parties (and particularly the Complainant) suggest that any purchaser is likely to exercise a relatively high degree of care in choosing the desired resort, with a correspondingly lower likelihood of confusion arising.

Having regard to all of these considerations, the Panel does not regard the Complainantís contention of confusing similarity based on the AMAN mark as particularly strong. However, the Panel does not find it necessary to decide the point, as the complaint fails on other grounds.

Paragraph 4(a)(ii) of the Policy Ė respondent has no rights or legitimate interests in respect of the domain name

In view of the Panelís finding relating to the allegation of bad faith registration and use, it is not necessary for the Panel to address this part of the Complaint.

Paragraph 4(a)(iii) of the Policy Ė domain name registered and being used in bad faith

The Panel is not satisfied that the Complainant has proved this part of the complaint, and the complaint must therefore be dismissed. The Panelís reasons for coming to this view are as follows:

(i) In the Panelís view, the Complainant has not established that the Respondent acted in bad faith when the domain name was registered. That date was February 22, 2000, and the Respondent says that, since 1999, she had been operating an import business under the name "Amansala,", selling such items as Buddha statues, prayer curtains, and other items associated with her interests in yoga and the general nurturing of mind, body and soul. She says that she began providing her travel services through her "Amansala" business in around February 2000. While she has not produced any contemporaneous documents showing that she was conducting a genuine business under or by reference to the name "Amansala" as early as February 2000, she has produced documents dated towards the end of the year 2000 which do appear to corroborate that she was running a business under the "Amansala" name (or at least making preparations to do so). The relevant documents were produced as Exhibit 3 to the Response and include, for example, a form of "Merchant Application Agreement" with Cardservice International dated November 17, 2000. This document refers to the Respondent as "D B A" (i.e., "doing business as") "Amansala.". Under the heading "Products and Services Sold,", the form states : "Miscellaneous Specialty Retail Stores.".

The Respondent has provided an explanation for her choice of the name "Amansala,", and on the evidence produced by the parties, the Panel cannot say that that explanation is false (the RespondentísComplainantís present activities do show that she has some interest in yoga, and the Panel is not in a position to reject her explanation that it was that interest that led her to choose the name "Amansala,", rather than any desire to copy any of the Complainantís trademarks).

(ii) The Panel notes that the Respondentís business partner, Erica Gragg, did stay at two of the Complainantís "Aman" resorts in January 1998, and was therefore aware of the Complainant and its marks prior to the registration of the domain name. However, the Respondent says in her counter-statement that her import and travel business was formed, and the domain name registered, before Ms. Graggís business relationship with the Respondent began. The Respondent says further that Ms. Gragg had no part in creating the name "Amansala" or the Respondentís original business concept. In a summary administrative proceeding such as this, the Panel does not feel that it is in any position to reject those statements as being untrue.

(iii) In the Panelís view, none of the examples of bad faith registration and use set out at paragraph 4(b) of the Policy have been established in this case. The Panel has carefully considered the correspondence included as Exhibit U to the Complaint, but does not regard anything in that correspondence as evidence of an intention to sell or otherwise transfer the domain name to the Complainant for a valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name. Those negotiations clearly related to a possible transfer of all rights to the claimed AMANSALA mark in the United States and Mexico, and went well beyond the simple sale or transfer of the domain name. The Complainant has not established the ground of bad faith set out in para 4(b)(i) of the Policy.

Nor has the example of bad faith registration and use set out at paragraph 4(b)(ii) of the Policy been established. No pattern of engaging in the kind of conduct described in that sub-paragraph of the Policy has been alleged or proved.

Nor is the Panel satisfied that the domain name was registered primarily for the purpose of disrupting the Complainantís business. There is no evidence that the Respondent and the Complainant were competitors when the domain name was registered, nor any evidence of actual confusion or anything else which could be construed as an attempt to disrupt the Complainantís business.

The Complainantís real argument is that the Respondent has used the domain name intentionally to attempt to attract, for commercial gain, Iinternet traffic to her web site at the domain name, by creating a likelihood of confusion with the Complainantís AMAN mark as to the source, sponsorship, affiliation or endorsement of the Respondentís web site or hotel resort service (subparagraph 4 (b)(iv) of the Policy). At paragraphss 35-37 of the Complaint, and again at paragraph 11 of its Reply, the Complainant asserts that the Respondent acted in bad faith in selecting and registering the domain name, because she fully incorporated the Complainantís "famous" AMAN mark with intent to trade off the goodwill developed by and associated with the Complainant. The difficulty for the Complainant is that the Panel is not satisfied that in February 2000, when the domain name was registered the Respondent did intend to trade off the goodwill developed by and associated with the Complainant. As at February 2000, it appears that the Respondent was running an import business based in New York City. While travel services were added at about the time of the registration of the domain name, the Respondentís business at that time did not involve providing hotel or spa accommodation, or anything else similar to the Complainantís business. The Respondentís activities appear to have been restricted at that stage to retail selling of imported products, and functioning as a guide or planner for individual travelers.

(iv) The subsequent development by the Respondent of the Amansala Resort at Tulum does not, in the Panelís view provide evidence that the Respondent acted in bad faith when she registered the domain name. The Respondentís resort was established in Mexico, where the Complainant has no "Aman" resort. The Panel does not see anything significant in alleged similarities in the font used on the partiesí web sites, and the Panel agrees with the Respondentís argument that the meta tags adopted by the RespondentComplainant for her web site are not suggestive of any desire to lure Iinternet visitors looking for web sites associated with the Complainant, to the Respondentís web site at the domain name.

(v) The fact that the Complainant is the proprietor of the mark AMANSARA in Cambodia, does not assist the Complainant. The Complainantís rights in that mark were acquired long after the Respondent had registered the domain name.

For the foregoing reasons, the Panel is not satisfied that the Complainant has established the matters set out at paragraph 4(a)(iii) of the Policy.

Paragraph 4(a)(ii) of the Policy Ė respondent has no rights or legitimate interests in respect of the domain name

In view of the Panelís finding relating to the allegation of bad faith registration and use, it is not necessary for the Panel to address this part of the Complaint.

Respondentís allegations of reverse domain name hijacking

The Respondent alleges that, because the Complainant was made aware through the pre-commencement correspondence with the Respondent and her counsel that the Respondent had been using the name "Amansala" in commerce since 1999, the Complainant knew or should have known that there was no evidence of bad faith on the Respondentís part in registering the domain name in February 2000. The Respondent refers to WIPO Case No. D2000-1151 (Goldline International, Inc. v. Gold Line) where an allegation of reverse domain name hijacking was upheld in circumstances where the Respondentís use of the domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where "a reasonable investigation would have revealed the weaknesses in any potential ICANN complaint. The Respondent also refersred to WIPO Case No. D2000-1202 (Deutsche Welle v DiamondWare Limitedtd) another case where the Complainant knew that the Respondent used the domain name as part of a bona fide business, and the registration date of the domain name preceded the dates of the Complainantís trademark registrations outside of the country in which its business was located.

In this case, the Panel does not believe there is anything in the Respondentís argument that the registration of the domain name pre-dated the Complainantís various registrations of its AMAN marks. In the Panelís view, the Complainant has produced sufficient evidence to show that it enjoyed common law rights in the AMAN family of marks, for some considerable period of years prior to the date of registration of the domain name by the Respondent.

In the Panelís view, the real question is whether it should have been clear to the Complainant when it commenced this proceeding, that its position was wholly without merit, and that there was no prospect of the Complaint succeeding.

While in the event the Complaint has failed, the Panel does not believe the Respondent has provided sufficient evidence to justify a finding of reverse domain name hijacking. The question of confusing similarity between the Complainantís AMAN marks and the domain name was quite clearly not beyond sensible argument, and at the time the Complaint was commenced, the Respondent had not provided the Complainant with copies of the documents dated in November and December 2000, which show that the Respondent was conducting a business under the "Amansala" name at that time. The Panel also has regard to the acknowledgement (by the Respondentís former counsel) of a degree of "uncertainty" over the partiesí respective trademark rights (see the email from Mr. Manning dated October 16, 2002).

Because of the complexity of the evidence as it has emerged in this case, it appears that the case would have been better suited to resolution in the courts. However, that is a long way short of finding that it should have been clear to the Complainant at the time it filed this proceeding, that its complaint had no prospect of success.

For the foregoing reasons, the allegation of reverse domain name hijacking is dismissed.

 

7. Decision

For the foregoing reasons, the Complaint is dismissed.

 


 

Warwick Smith
Sole Panelist

Dated: July 17, 2003