The Complainant is Four Seasons Hotels Limited, Toronto, Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Laksh Internet Solutions Private Limited., Mumbai, Maharashtra, India.
The disputed domain name <fourseasonspuntamita.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On August 20, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2008. The Center verified that 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 September 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on October 2, 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.
The Complainant owns trademark registrations in the United States of America (“United States”) for FOUR SEASONS HOTELS, dated May 11, 1982, for FOUR SEASONS RESORT, dated May 12, 1992 and FOUR SEASONS dated January 13, 1998.
The disputed domain name was registered on September 4, 2006.
The following are the Complainant's arguments. They do not necessarily represent the Panel's views.
The Complainant, on its own and through its affiliates and subsidiaries, has for many years managed and operated luxury hotels and resorts internationally including in the United States and Mexico under the world-famous FOUR SEASONS mark (the “Mark”). The Complainant currently manages and operates 78 FOUR SEASONS hotels and resorts in 32 countries.
The Mark has come to represent the highest standards of quality and service in the accommodations and leisure industry and the Complainant has long been recognized as one of the leading luxury hotel and resort management companies in the world.
The Complainant advertises, identifies and promotes the vast majority of its FOUR SEASONS hotels, resorts and residences under the umbrella name FOUR SEASONS, immediately followed by the geographic location of the hotel, resort and/or residence. One such example is the “FOUR SEASONS RESORT, Punta Mita, Mexico”. The FOUR SEASONS name functions both as the house mark designating the family of FOUR SEASONS hotels, resorts and residences, and in virtually every instance as part of the name of the individual hotel, resort or residence itself. The term FOUR SEASONS is the distinctive element in the corporate names of the FOUR SEASONS hotels, resorts and residences, and serves as the unifying identifier of the Complainant's Four Seasons worldwide operations. For years, the Complainant has advertised its FOUR SEASONS services in prominent newspapers, magazines and periodicals. In addition to its extensive use of its Mark, the Complainant has obtained numerous registrations for the Mark throughout the world in connection with its hotel, resort and residential services and related goods and services.
The Complainant also has developed a prominent Internet presence for the Mark, including in connection with its website located at “www.fourseasons.com”. The foregoing website enables visitors to the site to access information regarding the Complainant's various FOUR SEASONS branded hotels and resorts and related services.
The existence of federally registered, incontestable, valid, and subsisting registrations for the Mark in the United States Patent and Trademark Office, and registrations in foreign jurisdictions, including Mexico, is sufficient to establish the Complainant's rights.
The infringing domain name is confusingly similar to the Complainant's Mark, because it consists entirely of the Complainant's Mark coupled with a geographic location where one of the Complainant's hotels is located. The combination of the Complainant's Mark with an identifying location “adds to rather than diminishes the likelihood of confusion”. The infringing domain name refers to a specific FOUR SEASONS hotel corresponding to “The FOUR SEASONS RESORT, Punta Mita, Mexico”. As such, this domain name is confusingly similar to one of the hotel names and service marks used by the Complainant.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's Mark in a domain name or in any other manner. Furthermore, there is no evidence that the Respondent is using the infringing domain name in connection with a bona fide offering of goods and services. The only use of the infringing domain name has been to misdirect Internet traffic to a website, which advertises links to, inter alia, websites that offer travel, accommodations, hotel, resort, residential property and/or leisure services and/or related goods and services. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
The Respondent is using the infringing domain name to lead Internet users to websites of entities not affiliated with the Complainant that offer hotel and travel services in direct competition with the Complainant.
The infringing domain name is being used to advertise the services of competitors and websites not related to the Complainant. When Internet users looking for legitimate services offered by the Complainant intuitively type the infringing domain name into the address bar of their Internet browser, they are directed to a website that contains a search engine window and displays numerous travel and/or accommodations and/or residential property services related links (collectively, the “Link Sites”).
Internet users who click on any one of the many links on the Link Sites are diverted to additional webpages that display hotels, hotel booking links, residential properties and residential property links, many of which lead to the websites of the Complainant's competitors.
The Respondent is a serial cybersquatter who has been named as a respondent in at least eleven domain name dispute proceedings with WIPO or the National Arbitration Forum in 2008. In all but one of these proceedings, the panel ordered that the disputed domain name be transferred from the Respondent to the Complainant. A reverse WhoIs search dated August 25, 2008 revealed a total of 5,354 domain names associated with the Respondent's address @lakshinternetservices.com, 5,001 of which are currently or once were registered by the Respondent.
The Respondent had previously cloaked its true identity by registering the infringing domain name through a privacy service, Private WhoIs Escrow Domains Private Limited.
The Respondent's unauthorized registration and use of the Complainant's Mark in the infringing domain name to divert Internet users to websites offering goods and services of competitors is evidence of bad faith. The Respondent's registration of a confusingly similar infringing domain name which incorporates the Complainant's famous Mark “is in and of itself evidence of bad faith”. The Respondent is a known cybersquatter with a history of registering and using domain names in bad faith. The pattern of cyberflight between the Respondent and Registrar in several domain name dispute proceedings further demonstrates bad faith. The Respondent's attempt to conceal its identity by registering the Infringing Domain Name through a privacy service alone is evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has a registered trademark in the United States for FOUR SEASONS. The disputed domain name consists of those words and “puntamita.com”. The addition of a location to a trademark relating to travel fails to remove the confusing similarity that would otherwise exist between the trademark and the domain name. As the panel said, in Accor v. Thawan Laungrungthip, WIPO Case No. D2006-0365:
“the mere addition of the geographic terms “patong” and “phuket” to the Complainant's mark are insufficient to avoid a likelihood of confusion.”
Most Internet users will either be unfamiliar with the word “puntamita” or will associate it with a travel location. While the words “four” and “seasons” are dictionary words in common usage, there is nothing in the subsequent material that would indicate to most Internet users that the domain name referred to anything other than the Complainant.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark, FOUR SEASONS.
There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Evidence produced by the Complainant shows that the disputed domain name has been used in the past to promote products and services that compete with at least one of the Complainant's hotels. It seems apparent from this that the Respondent knew of the existence of the Complainant and its internationally renowned trademark when registering the domain name and sought to take advantage of it to earn click-through revenue by diverting Internet users to other websites.
The fact that the Respondent is using the domain name in issue to divert customers to competitors of the Complainant is further evidence of bad faith.
The panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068 agreed that this type of behaviour constituted bad faith. It said:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant's competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
“This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant's products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent's website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent's website generates revenue for the Respondent in that manner.”
For all these reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in bad faith.
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, <fourseasonspuntamita.com> be transferred to the Complainant.
Dated: October 16, 2008