The Complainants are VRL International Ltd. of Georgetown, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland and International Lifestyles, Inc of Washington, D.C., United States of America, represented by Katten Muchin Rosenman LLP., United States of America.
The Respondent is Relevansanalys of Norra Vallgatan, Malmö, Sweden, represented by Groth & Co KB, Sweden.
The disputed domain name <hedonismhotels.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009.
On July 20, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 21, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the Respondent is listed as the registrant;
(c) the contact details provided for the Respondent in the Complaint are correct;
(d) English is the language of the registration agreement between the Registrar and the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2009. On August 12, 2009 in response to Respondent's request for extension to file Response, to which the Complainant objected, the Center granted the request extending the Response due date to August 17, 2009. The Center also advised the Respondent that in the event he deemed the extension to be insufficient, he may request the Panel, when appointed, for additional time to make further submissions by way of Supplemental filing, pursuant to paragraph 10 and 12 of the Rules. The Response was filed with the Center on August 17, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 20, 2009. 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 first Complainant operates “all-inclusive” hotels in the Caribbean and South America. All-inclusive hotels are hotels or resorts where the accommodation, food and beverage and other entertainment services are provided for the one all inclusive fee. According to the Complaint, the first of these hotels was established in 1976. Currently, there are 16 such hotels. Of these, two (or possibly three) – Hedonism II and Hedonism III (there are also some references in the Complaint to a Hedonism I) – in Jamaica are known and marketed as the Hedonism Resorts.
The second Complainant is the first Complainant's exclusive licensee for travel agency and travel planning services in respect of, particularly, the first Complainant's Hedonism hotels. As for the purposes of this decision nothing turns on the separate identities or roles of the two Complainants, for the most part further reference will be limited to the Complainants collectively for simplicity.
The Complaint includes evidence in exhibit 2 that the first Complainant has an extensive portfolio of registered trademarks. These include:
(a) United States Registration No. 2,271,059 for HEDONISM filed in July 1997 and claiming first use in commerce in April 1999;
(b) US Registrations Nos. 2,366,421 and 2,431,421 for HEDONISM RESORTS filed in, respectively, February 1999 and February 2000 and both claiming first use in commerce in April 1999;
(c) US Registration No. 1,503,381 for HEDONISM II filed in June 1987 and claiming first use in commerce in November 1981;
(d) US Registrations Nos. 2,354,972 and 2,391,792 for HEDO filed in, respectively, March and December 1999 and claiming first use in commerce in, respectively, March and November 1999;
(e) Mexican Registrations Nos. 770022 and 795527 for HEDONISM dating from October 2002;
(f) Australian Registration No. 973393 for HEDONISM dating from October 2003.
These registrations cover a range of services broadly covering hotel resort services, travel agency or arrangement services and related services.
Exhibit 2 also includes evidence of many more trademark registrations, mostly for marks consisting of HEDONISM II or HEDONISM III. Amongst many others, these include CTM No. 000376095.
The Respondent registered the disputed domain name in September 2004. At the time of this Decision, it resolves to a website the home page of which is in the form of a blog that includes links to some articles under the following titles:
- Are there different values for various activities?
- Ultimate pleasures in London
- Motivational hedonism - pleasure or pain?
- Torbjörn Tännsjö - A controversial Swedish philosopher
- University students are getting hedonistic and selfish?
There is also a page for “member login”.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
As set out in section 4 above, the Complainants have clearly established rights in registered trademarks in various parts of the world for at least HEDONISM, HEDONISM RESORTS, HEDONISM II, HEDONISM III and HEDO.
The Complainants have also submitted evidence in support of their claim that these trademarks are famous as a result of their extensive and extended use. In view of the conclusion already reached it is not strictly necessary to reach a conclusion about this claim in this context. It may be relevant, however, under paragraphs 4(b)(ii) and 4(b)(iii) of the Policy and will be discussed in that context. The Complaint does include evidence that the Complainants' resorts have achieved many awards and prizes. While many of these awards and prizes are for the Complainants' superclubs other than the Hedonism Resorts, a number are specifically for or related to the Complainants' Hedonism Resorts. There is also a considerable body of references to the Complainants' Hedonism Resorts in newspaper and magazine articles.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainants' proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420.
It is well established that the gTLD “.com”, being a functional requirement of the domain name system, can be disregarded for the purposes of this inquiry. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
The Complainants contend that the disputed domain name otherwise contains the whole of their registered trademarks. They also contend that the public is likely to assume wrongly there is some connection or association between the holder of the disputed domain name and the Complainants in view of the visual and phonetic resemblances between their trademarks and the disputed domain name. The Respondent points out that the terms “hedonism” and “hotels” are both plain English words; “hedonism” also being a plain word in many other languages including Swedish.
While the Panel accepts that the generic nature of the term hedonism, in particular, could mean that a domain name would need a particularly close degree of resemblance to be considered confusingly similar, the Panel considers that the resemblance of “hedonismhotels” to “hedonism resorts”, in particular, is sufficiently close in terms of visual and aural resemblance and the underlying idea to give rise to confusing similarity and notes additionally that a user of the Internet who was aware of the Complainants' trademark HEDONISM RESORTS could well be misled into thinking, or being caused to wonder whether or not, there was an association between the two.
The Panel has much greater difficulty in reaching that conclusion in respect of the trademark HEDONISM alone or HEDONISM II or HEDONISM III. Those terms standing alone do not necessarily convey a similarity of idea and meaning as HEDONISM RESORTS. They are registered, however, in respect of hotel and resort services. The inclusion of the term “hotel” in the disputed domain name, being descriptive of those very services, does not teach away from that reference. Instead it reinforces the potential for confusion and association.
On the other hand, while the term HEDO is encompassed in the disputed domain name, the fact that the disputed domain name consists of the words hedonism and hotels, which are plain words in their own right cannot be overlooked. Accordingly, the Panel finds that the disputed domain name is confusingly similar at least to the Complainants' trademark HEDONISM RESORTS, HEDONISM, HEDONISM II and HEDONISM III.
The second factor that the Complainants are required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) of the Policy sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In view of the difficulty in disproving a negative, the Complainants must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 2.1. The burden of proof, nonetheless, always remains on the Complainants.
The Complainants point out that the Respondent is not related to them; nor are there any contracts, arrangements or other business relationships between the parties. Neither of them have granted the Respondent permission to use the disputed domain name. The disputed domain name is not obviously derived from the Respondent's name or the name of the individual “behind” the Respondent.
The Panel notes that the Respondent is based in Sweden. The Complainants have, at least, a CTM for HEDONISM II in respect of a wide range of hotel and travel agency related services and, as found above in section 5A, the Panel has concluded that the disputed domain name is confusingly similar to the Complainants' trademark. Thus, the use of the disputed domain name in connection with those services would infringe the Complainants' proven CTM.
These facts are usually sufficient to support a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
With perhaps one possible exception, however, the disputed domain name does not appear actually to be used in connection with the types of goods and services covered by the CTM. Rather, the website to which the disputed domain name resolves appears to be directed to issues related to philosophy, ethics and hedonism.
The Respondent also seeks to justify the adoption of the disputed domain name. The Respondent states that the individual behind the disputed domain name studied philosophy at the University of Lund in Sweden in the year 2002. During that course he and other students, including international exchange students, met up at various hotels to discuss what the Respondent claims was their mutual interest in hedonism philosophy. The website and the disputed domain name grew out of that. He contends that the disputed domain name was registered without knowledge of the Complainants' hotels or services.
As discussed below in section 5C, the Complainants challenge the Respondent's version of events and the consequences that follow under the Policy.
The Respondent also appears to contend that he is entitled to the disputed domain name on a first come, first served basis. This particular claim, however, cannot stand. While domain names are registered on a first come, first served basis, all domain name registrations in the gTLD, “.com”, are registered amongst other things subject to the Policy. A person who successfully registers a domain name on the basis that they were the first to apply to register it secures the registration subject to the threefold requirements of the Policy.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainants contend that, having regard to the extent and international fame and notoriety of their trademarks, the Respondent must have registered the disputed domain name with at least constructive knowledge, if not actual knowledge, of the Complainants' rights. In support of this allegation, the Complainants point to the confusing similarity of the disputed domain name to their trademarks and question how else the Respondent could have arrived at the particular verbal combination embodied in the disputed domain name. They point out also that the disputed domain name was registered after they acquired their registered trademarks, including the CTM. The Complainants also note that “Relevansanalys” is in fact some kind of Internet entrepreneur or service provider. A Google translation of the website referred to, not the website to which the disputed domain name resolves, indicates that the Respondent carries on business in the field of search engine optimization.
The Complainants also contend that the Respondent's version of how the disputed domain name was arrived at is false; claiming, amongst other things, that there is no evidence that the Respondent's website went live until after receipt of a letter of demand from the Complainants' attorneys in December 2008.
As noted above, the Respondent categorically denies registration of the disputed domain name with any knowledge of the Complainants, their hotels or their trademarks. The Complaint does not include any evidence that the Respondent has in fact stayed at the Complainants' hotels or otherwise utilized their services.
The Respondent further contends that the Complainants' reputation is limited to Jamaica or the Cayman Islands. In any event, the Respondent disputes that the Complainants have any reputation in Europe, still less Sweden.
As noted above, the Complainants have submitted evidence supporting a considerable reputation in their trademarks. For the most part, these materials seem to be publications in North America (although many, if not all, appear to be available online). It is certainly the case that the materials are all English language publications. As the Respondent contends, none appear to have been published in Sweden or otherwise specifically targeted at the public in Sweden.
The Response does include as Exhibit 1 evidence confirming that the Respondent was in fact a philosophy student at the University of Lund in the relevant period. The website to which the disputed domain name resolves does appear, at least in its “blog” element, rather rudimentary and limited. However, Exhibit 2 to the Response includes what are claimed to be, and appear to be, screenshots from the members' forum of the website. If these materials are to be believed, the members' forum has some 54 members, not a particularly large number, covering some 1217 topics involving 4423 posts. The topics, such as can be seen, are consistent with the purpose claimed for the website by the Respondent.
Exhibit 3 to the Response is a copy of a letter purporting to be from the manager of the Lindsbergs Kursgard hotel which, consistently with the Respondent's claims, confirms that there have been annual meetings at the hotel for the <hedonismhotels.com> group in 2005, 2007, 2008 and 2009. There is also in exhibit 8 what appears to be an email from the Director of Sales at Hilton Hotels confirming discussions with the Respondent about meetings of the group to be held at the Hilton Hotel in 2008 (before the Complainants challenged the disputed domain name) and this year.
Having regard to the concrete proofs offered by the Respondent, the Panel is not in a position to go behind the Respondent's denials of knowledge of the Complainants or their trademarks or to question the bona fides of the use of the disputed domain name in connection with a group, albeit relatively small, sharing a common interest in philosophy and hedonism.
It is true, as the Complainants point out, that the disputed domain name is confusingly similar to the Complainants' trademarks. The composition of the disputed domain name from the combination of the plain words “hedonism” and “hotels”, while not wholly descriptive, detracts significantly from the force of any inference of actual knowledge that might be drawn from that resemblance. Further, the Complainants seek to use the finding of registration and confusing similarity to infer constructive knowledge of their trademarks. However, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions fairly summarises the thrust of decisions under the Policy at paragraph 3.4:
Most panels have declined to introduce the concept of constructive notice into the UDRP. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant's trademark registration preceded the respondent's domain name registration, respondent was presumed to have notice of the trademark.
As the learned panelist in The Way International Inc. v. Diamond Peters, WIPO Case No. D2003-0264 explained:
As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner. If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at the complainant? If the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly. In so saying, the Panel is conscious that some panels have deemed the requisite knowledge in cases where the respondent is snapping up lapsed domain names in circumstances where he must have a very good idea that the domain name is a trade mark of a third party (e.g Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981), but this is not such a case.
This Panel respectfully agrees. Nor, having regard to the state of the evidence about use of the Complainants' trademarks in Sweden, can the case reasonably be regarded as one in which the Respondent must have known of the Complainants' rights. Cases such as Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 are distinguishable.
Proceedings under the Policy are proceedings on the papers. As such, there is no basis for preferring the Complainants view of the Respondent's motivations and purposes over the Respondent's view given the corroborating evidence advanced by the Respondent in support of his claims.
In the circumstances of the record in this case, therefore, the Panel finds that the Complainants have failed to establish that the Respondent registered the disputed domain name in bad faith. As the Complainants must establish that the disputed domain name was both registered and is being used in bad faith, therefore, the Complaint must fail.
The Complainants also contend that it is impossible for the Respondent to use the domain name as the name of any business. This contention overlooks the fact that the Respondent is in fact using the disputed domain name in connection with, so far as appears on this record, a non-commercial activity which does not appear to trade on the Complainants' rights or reputation.
The Respondent seeks a finding of reverse domain name hijacking.
As the Complainants have failed on the basis of the explanation and materials presented by the Respondent, an explanation and materials which could reasonably be expected to have been available only to the Respondent, the Panel refuses to make such a finding.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: September 3, 2009