WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotels Unis de France v. Christopher Dent / Exclusivehotel.com
Case No. D2005-1194
1. The Parties
1.1 The Complainant is Hotels Unis de France, Paris, France, represented by SCP Chemouli Dauzier & Associés, France.
1.2 The Respondent is Christopher Dent / Exclusivehotel.com, of Guatemala, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Names and Registrar
2.1 The disputed domain names <exclusivehotel.com> and <exclusivehotels.com> are registered with Go Daddy Software, Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2005. On November 18, 2005, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain names. On November 18, 2005, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that Exclusivehotel.com is the registrant of the domain name <exclusivehotel.com>, confirming that Christopher Dent is the registrant of the domain name <exclsuivehotels.com>, and providing the contact details for the administrative, billing, and technical contacts for both domain names. 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2005. The Response was transmitted to the Center on December 13, 2005, and received by the Center on December 14, 2005.
3.3 The Center appointed Andrew Frederick Christie, Christiane Féral-Schuhl and David E. Sorkin as panelists in this matter on February 8, 2006. The Panel finds that it was properly constituted. Each member of 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.
3.4 A Response was filed in respect of both domain names by Christopher Dent. In the Response, Christopher Dent states that he registered both of these domain names. The Panel finds that, in so responding, Christopher Dent is conceding that he and Exclusivehotel.com are, for all practical purposes, one and the same entity. The Panel accepts this concession, and herein uses the term “Respondent” to refer to Christopher Dent and Exclusivehotel.com jointly and severally.
4. Factual Background
4.1 The Complainant is a Société par Action Simplifiée, with a capital of 38,200 euros and registered at the Company and Commercial Registry of Paris, France. The Complainant provides reservation and related services in respect of hotels. On December 27, 2001, the Complainant registered the domain name <exclusive-hotels.com> for use as a URL for an Internet website providing its reservation and related services. On March 28, 2002, the Complainant registered at the Companies and Commercial Registry in Paris a business name in respect of these services containing the words “Exclusive Hotels”.
4.2 The Complainant applied for a French registered trademark for the words and image “EXCLUSIVE HOTELS, charm and character” on February 12, 2002. This application was published on March 22, 2002, and accepted for registration sometime thereafter. The Complainant applied for a registered Community trademark for the same words and image on August 12, 2002. This application was published on July 26, 2004, and its acceptance for registration was published on January 7, 2005. The Complainant obtained a US trademark registration for these words and image on December 2, 2003.
4.3 The Respondent operates the Internet website “www.exclusivehotels.com”, which provides hotel and other travel-related reservation services. This website operates under the domain name <exclusivehotels.com>, which the Respondent registered on March 20, 2002. The domain name <exclusivehotel.com> was registered by the Respondent on April 6, 2002, and points to the “www.exclusivehotels.com” website. At least some of the hotels in respect of which the Complainant and the Respondent provide reservation services are the same.
5. Parties’ Contentions
5.1 The Complainant contends that it has trademark rights in: (i) the business name containing the words “Exclusive Hotels”; (ii) the domain name <hotels-exclusive.com>; and (iii) the French, Community and United States trademark registrations for the words and image “EXCLUSIVE HOTELS, charm and character”. The Complainant also contends that the domain names in dispute are identical or confusingly similar to these various trademarks.
5.2 The Complainant contends that the Respondent has no right or legitimate interest in the domain names because the domain names were acquired after the filing of the Complainant’s French trademark application and the services provided by the Respondent under the domain names are available to internet users based in France.
5.3 The Complainant contends that the Respondent has used the domain names in bad faith by using them as URLs for a website which provides services that operate in the same economic sector and on the same market as the Complainant’s services. By so doing, the Respondent has intended to create confusion in the minds of Internet users and to lead the Complainant’s clients into wrongly believing that they are accessing the services of the Complainant.
5.4 The Respondent contends that the Complainant has no trademark rights enforceable under the Policy because: (i) the Complainant’s registered business name is not a trademark; (ii) the Complainant’s registered domain name is not a trademark; and (iii) the Complainant’s registered trademark is descriptive. The Respondent also contends that the domain names in dispute are not identical or confusingly similar to the Complainant’s trademark because: (i) neither of the domain names are the same as the Complainant’s trademark; and (ii) the Complainant’s trademark has words additional to those contained in the domain names and these additional words distinguish the domain names from the trademark.
5.5 The Respondent contends that he has a right and legitimate interest in both of the domain names, because they are common terms that are descriptive of hotels that are exclusive, and hence are laudatory. Accordingly, they are domain names in respect of which a person who provides hotel reservation services has a legitimate interest.
5.6 The Respondent contends that he did not register or use the domain names in bad faith because the domain names are composed solely of a common descriptive term and there is no proof the Respondent registered them for the purpose of profiting from the Complainant’s trademark rights. The Respondent registered the domain names before the Complainant’s trademark was registered and before the Complainant began use of its trademark.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1 For the Complainant’s business name and domain name to be trademarks to which the Policy applies, the Panel would need to be persuaded that those names are unregistered trademarks. This, in turn, would require evidence showing that, by virtue of extensive use of the names, a significant proportion of consumers of hotel reservation services have come to associate the names exclusively with the services provided by the Complainant. The Complainant has not provided evidence to this effect and, accordingly, the Panel is not willing to find that the Complainant has trademark rights in either its business name or its domain name.
6.2 The evidence shows that the Complainant is the owner of a French, Community and US trademark registration for the words and image “EXCLUSIVE HOTELS, charm and character”. The Panel notes the Respondent’s argument that this mark is too descriptive to be a valid registered trademark. The Panel is of the view that, in this case, it is neither necessary nor appropriate to form an independent view on the validity of these registrations. The issue of the mark’s descriptiveness is best dealt with when considering whether the domain names are confusingly similar to this mark, whether the Respondent has a legitimate interest in the domain names and whether the Respondent has acted in bad faith. Accordingly, for the purpose of its analysis of the Policy, paragraph 4(a)(i), the Panel is willing to assume that the Complainant owns a trademark to which the Policy applies.
6.3 Because the Complainant’s trademark contains some words and an image that are not present in either of the domain names, it is clear that neither of the domain names are identical to the Complainant’s trademark. The Panel notes the Respondent’s argument that neither of the domain names is confusingly similar to the Complainant’s trademark because the additional components of the Complainant’s trademark mean that the domain names are sufficiently distinguished from it. The Panel is inclined to accept this argument. In the Panel’s view, it is significant that the words that are common to the Complainant’s trademark and the domain names – namely, “exclusive hotel(s)” – are words that are descriptive or at least laudatory of the subjects (in this case, hotels) of the services in respect of which the trademark and the domain names are used. This fact, together with the fact that there are non-trivial components to the Complainant’s trademark that are not present in the domain names, means that the Panel is of the view that the domain names are not confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
6.4 The Complainant applied for the French trademark registration (but not the Community or US trademark registration) prior to the dates on which the Respondent registered the two domain names. The Panel acknowledges that, under French trademark law, a trademark registration takes effect from the date of application. Thus, the Panel finds that the Complainant’s rights in the French trademark registration are prior to the Respondent’s rights in the domain names.
6.5 The Panel notes, however, that the Respondent is operating a website hotel reservation service under the domain names. No evidence was provided to indicate when that website commenced operation. The Complainant asserted that the Respondent “has not been able to establish privileged commercial relationships with those working this area. The site … is in fact a ‘directory’, that is to say it solely lists hotels … without establishing any commercial agreements with these hotels”. The Respondent did not deny this, but asserted that he was an affiliate of IAN.com (Interactive Affiliate Network) which has agreements with the hotels listed on his website, and that he received commissions from IAN.com for each reservation transacted on his website. The Respondent further asserted that he advertises his website on “www.clickdiario.com” to users in Guatemala where he is resident.
6.6 The Panel notes that the domain names are descriptive of a quality (exclusiveness) that many hotel customers might seek in a hotel, and are laudatory of hotels in general. The domain names are, therefore, domain names that a hotel reservation service provider might, in good faith, wish to use – and hence are domain names in which such a service provider might have a legitimate interest. The Complainant did not provide any evidence showing that the Respondent’s hotel reservation service was not a genuine service. Given the evidence before it, the Panel finds that the Respondent operates a bona fide hotel reservation service under the domain names. The Panel concludes that the Respondent has a legitimate interest in the domain names.
C. Registered and Used in Bad Faith
6.7 There is no evidence before the Panel to indicate that the Respondent registered and is using the domain names in bad faith. It is true that the Complainant applied for the French trademark registration prior to the Respondent registering the domain names. However, the Panel notes that the application was not published until March 22, 2002, – which is after the date on which the Respondent registered the domain name <exclusivehotels.com>. No evidence was provided that suggested the Respondent was aware of the Complainant’s French trademark application prior to the application’s publication. It seems, therefore, that the Respondent did not know of the Complainant’s trademark application prior to registering the first of the two domain names. The Respondent’s assertion that he registered the second domain name, <exclusivehotel.com>, “to complement his earlier registered domain, and had nothing to do with the Complainant’s mark” is plausible in the absence of evidence to the contrary.
6.8 The Complainant asserts that “Given the normal steps undertaken by any interested person or company who wishes to reach a new market, the [Respondent] could not have overlooked the pre-existing rights of the [Complainant] who used the term “EXCLUSIVE HOTELS” as a business name even prior to the filing of the [trademark applications]”. The Panel notes that while the Complainant provided evidence that it registered its business name prior to the trademark applications, this evidence did not establish that the Complainant used its business name prior to the trademark applications. The Complainant’s only evidence on actual use of the business name was the publication in trade journals of articles about the re-naming of the Complainant under its business name. The earliest of these publications was dated “May/June 2002”, which is after the Respondent registered both of the domain names. On the evidence before it, the Panel is unable to find that the Respondent either registered or is using the domain names in bad faith.
For all the foregoing reasons, the Complaint is denied.
Andrew Frederick Christie
Christiane Féral-Schuhl David E. Sorkin
Dated: February 23, 2006