WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises

Case No. D2008-1003

 

1. The Parties

The Complainant is Spyros Michopoulos S.A, Halandri, Greece, represented by Helen and Panos Papaleloudis and Associates Law offices, Greece.

The Respondent is John Tolias, ToJo Enterprises, Koropi, Greece.

 

2. The Domain Name and Registrar

The disputed Domain Name <kivotos-hotel.com> is registered with Abacus America Inc. dba Names4Ever.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On July 8, 2008, Abacus America Inc. dba Names4Ever transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 11, 2008. The Center verified that the Complaint together with the amended 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 July 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 7, 2008.

The Center appointed Luca Barbero as the sole panelist in this matter on August 19, 2008. 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.

 

4. Factual Background

The Complainant is the owner of trademarks comprising KIVOTOS in relation with food and drink and temporary accommodations such as the Greek trademark No. 120585 of October 14, 1993 in class 43 and the community trademark No. 2228799 of July 30, 2002 in classes 39, 41 and 42.

 

5. Parties’ Contentions

The Complainant indicates that it has been operating in the hotel business for over twenty years.

The Complainant states to be a member of the well-known and reputable international hotel chains “Small Luxury Hotels of the World” and “Leading Hotels of the World” and to be considered as being among the most luxurious hotels world wide as well as throughout Greece, being a reference point at the international level in the area of high quality tourist services.

The Complainant informs the Panel that there are several reports in many international magazines dealing with tourism and on the Internet quoting the Complainant and its services, providing in the annexes some examples of such publication.

The Complainant asserts that the sign KIVOTOS is the distinctive element of the Complainant’s trademark. Therefore, the Complainant contends that the disputed Domain Name is confusingly similar to the trademark of the Complainant.

With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainant states that the Respondent has registered the contested Domain Name in order to advertise the services of the company “Blue Horizon S.A. Technical and Hotel Enterprises” which operates a hotel business in Skiathos island. The Complainant indicates that “Blue Horizon S.A.” has only recently been established (operating for about a year as it was registered with prefecture decision N: 1335/23.02.2007) and used in bad faith the contested Domain Name thus violating the Complainant’s trademark KIVOTOS and misleading consumers who obviously mistake it for a branch of the Complainant.

The Complainant contends that the Respondent illegally took advantage of the Complainant’s reputation in the particular area of hotel businesses with the sole intention to attract customers and has intentionally attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark.

With reference to the circumstances evidencing bad faith, the Complainant contends that the trademark KIVOTOS is well-known and that the Respondent proceeded to register a domain name incorporating an imitation of the trademark with the aim to exploit the Complainant’s reputation.

The Complainant highlights that the Respondent also was acting in unfair competition taking undue advantage from the Complainant’s registered trademark KIVOTOS for a hotel based on Mykonos island.

The Complainant informs the Panel that the Respondent did not reply to the cease and desist letter but has subsequently also registered the domain name <kivotoshotel.gr>, indicating that for the issue of the unfair competition and the trademark infringement the Complainant has also filed an interim measure against the Principal of the Respondent before the First Instance Court of Volos and has initiated a procedure with the National Telecommunications and Post Commission for the “.gr” domain name.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations comprising the sign KIVOTOS. The Panel finds that the disputed Domain Name is therefore confusingly similar to the trademarks owned by the Complainant.

Pursuant to a number of prior decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark).

More in particular, the word “hotel” should be regarded along the lines of the interpretation adopted in all the prior decisions mentioned above especially as it is likely to increase the likelihood of confusion in the context of hotels and temporary accommodations. Indeed the word “hotel” is descriptive of Complainant’s business See, e.g., Prime Hospitality L.L.C. v. Forum LLC WIPO Case No. D2005-1091. Therefore, the mere addition of the word “hotel” does not at all exclude the likelihood of confusion between the Domain Name and the Complainant’s trademarks.

In comparing the Complainant’s trademarks to the Domain Name with reference to <kivotos-hotel.com> it should be taken into account the well-established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the Domain Name. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the Domain Name such as ‘.net’ or ‘.com’ does not affect the Domain Name for the purpose of determining whether it is identical or confusingly similar” and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused Domain Name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has used or made 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 prior to the dispute; or

(b) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, it is sufficient that the Complainant establishes a prima facie case in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights and legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy as decided inter alia in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Name.

Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services or intends to make a legitimate, noncommercial or fair use of the Domain Name. Indeed the Respondent is acting in the same field as the Complainant and is using the contested Domain Name for promoting its business.

As stated in Peter Frampton v. Frampton Enterprises, Inc. WIPO Case No. D2002-0141:

“It is eminently clear to this Panel that the Respondent, by currently using the contested domain name which identically incorporates the Complainant’s “PETER FRAMPTON” mark, to sell items in the exact same field of endeavor as the Complainant, i.e., music-related, is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant’s site to the Respondents’ website for the latter’s own benefit, i.e., by capitalizing on the celebrity reputation and fame of the Complainant’s name, a name which the Respondent coincidentally shares with the Complainant, to cause user confusion. Such use, which at its heart relies on exploiting user confusion, can not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name. In that regard, see Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, cited supra (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services.”).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration the Panel notes that in light of the fact that the Complainant’s hotel has been operating for many years and belongs to the renown chains of the ‘‘Small Luxury Hotels of the World” and “Leading Hotels of the World” the Respondent, apparently also operating in a related business activities, was very likely to be aware of the Complainant’s trademark.

As in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

Since the Respondent is related to a direct competitor of the Complainant, the Respondent’s registration of the contested Domain Name interferes with the Complainant’s business and Internet users are likely to be misled as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286). Therefore, the Panel finds paragraph 4(b)(iv) of the Policy applicable to the present case.

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

As to the information provided by the Complaint in the section “Other Legal Proceedings” pursuant to Rules, paragraph 3(b)(xi) about the Court procedure before the First Instance Court of Volos, in light of the much broader scope of such action (unfair competition and trademark issues) as opposed to the present disputed Domain Name, the Panel deemed appropriate - according to paragraph 18 of the Rules - to proceed to a decision. The Panel notes that the present decision is obviously rendered without prejudice to the issuing of any subsequent decision that may be handed down by a court of competent jurisdiction which would of course be free to consider, but not bound by, this panel decision issued under the UDRP.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kivotos-hotel.com> be transferred to the Complainant.


Luca Barbero
Sole Panelist

Dated: September 8, 2008