1.1 The Complainant is Four Seasons Hotels Limited, of Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, of New York, New York, United States of America.
1.2 The Respondent is Internet bs Corporation/ Private Whois Service, of Nassau, the Commonwealth of the Bahamas.
2.1 The disputed domain name <fourseasonsresorts.com> (the “Domain Name”) is registered with Internet.bs Corp (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2009. In the Complaint the Complainant identified “Internet bs Corporation” i.e. ; the Registrar as the Respondent. The WhoIs details publically available for the Domain Name at that time recorded “Private Whois Service” as the registrant of the Domain Name, but the Complainant contended that this was the name of the “domain name privacy service operated by the Registrar. It contended that it had approached the Registrar to demand details of the underlying registrant of the Domain Name, but that that information had not been provided. In the circumstances it had named the Registrar as the Respondent.
3.2 On December 7, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The following day the Registrar responded by email from an unnamed individual to the Center as follows:
“We are trying to contact our customer and asked to remove domain privacy so you can effectively process the UDRP”.
3.3 On December 8, 2009 the Registrar purported to formally respond to the Center's verification request. In that response it did not disclose the details of its “customer” or underlying registrant of the Domain Name. Instead, it stated the registrant of the Domain Name to be “Private Whois Service”; i.e.it simply provided the details already publically disclosed on the WhoIs register.
3.4 The Center sent an email communication to the Complainant on December 14, 2009 forwarding this information to the Complainant and asking the Complainant if it wanted to submit an amendment to the Complaint. It however, also indicated that the Complainant was not required to do so and alternatively might simply indicate that the Complaint should proceed in its present form. On December 17, 2009 the Complainant confirmed that its position was that the Complaint should proceed un-amended1.
3.5 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”).
3.6 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 December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2010.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 20, 2010. 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.
3.8 On January 29, 2010 the Panel issued a procedural order in these proceedings (the “Procedural Order”). The Procedural Order stated that the Panel was likely to make findings and statements in this decision that were likely to be critical of the Registrar. Those findings and criticisms were set out on a preliminary basis in some detail. The Procedural Order also informed the Registrar that the Panel might also invite the Center to bring these criticisms to the attention of ICANN for such further investigation or action in relation to the Registrar's activities and business practices as ICANN considers appropriate.
3.9 In the circumstances (and as a matter of procedural and substantive fairness to the Registrar) the Procedural Order invited (but did not require) the Registrar to file a submission in relation to these matters2 on or before February 4, 2010. The Procedural Order also provided for an extension of time for filing of a decision in this matter until February 5, 2009.
3.10 The Registrar filed a submission with the Center pursuant to the Procedural Order in the early hours of the morning (Swiss time) on February 3, 2010. In short, in that submission it contended that its refusal to provide registrant information had been justified. However, it ended its submission as follows:
“Notwithstanding all the above and after approval from our customer we are very pleased to forward the Registrant's details for the subject domain as set by our customer:
It also provided a Hong Kong address, phone number and Gmail email contact address for this customer.
3.11 On February 3, 2010 the Center sent a copy of the Registrar's submission to the contact email addresses appearing on the website operated by HK Hosting Limited at ‘www.hkhosting.com'.
4.1 The Complainant is a company incorporated under the laws of Ontario, Canada. As its name would suggest, its business includes the operation of the well known “Four Seasons” hotel chain. It currently manages and operates eighty-two (82) “Four Seasons” hotels and resorts in 34 countries.
4.2 The Complainant (and affiliate companies of the Complainant) owns various registered trade marks that incorporate or comprise the terms “Four Seasons” or “Four Seasons Resort”. They include United States Registered Trade Mark no 1,687,336, in class 42 for hotel services registered on May 12, 1992.
4.3 The Complainant owns various domain names that it uses in connection with its business activities. These include <fourseasonresort.com>.
4.4 The publically available WhoIs details for the Domain Name indicate that it was registered on July 19, 1998. As is already recorded under the heading Procedural History above, the identity of who actually controls and registered the Domain Name was initially unknown by the Complainant as at the commencement of these proceedings. The recorded “registrant” of the Domain Name was “Private Whois Service”, which is the name of the “domain name privacy service” offered by the Registrar.
4.5 At a later stage in these proceedings the Registrar identified the underlying registrant as “HK Hosting”. “HK Hosting” would appear to be a trading name. It may or may not be connected with the Hong Kong company HK Hosting Limited.
4.6 At least recently, the webpages operating from the Domain Name have borne all the hallmarks of having been generated by a “domain parking” of “pay-per-click” service. For example, on December 1, 2009 the webpage displayed from the Domain Name contained links to “searches” with titles such as “Caribbean Luxury Resorts”, “Four Seasons Resorts”, “Bahamas Resorts” and “Vacation Resports”. The webpage also displayed pictures of a palm tree and sun loungers on a beach.
4.7 A similar page continues to be displayed from the Domain Name as at the date of this decision.
5.1 The Complainant refers to its business and its registered trade marks. It provides extensive evidence of the extent to which the term “Four Seasons” is well known and associated with the Complainant worldwide.
5.2 The Complainant contends that it “recently became aware” of the Domain Name and complains that it is being used to advertise the services of entities and websites not related to Complainant.
5.3 The Complainant encloses with its Complaint a copy of an email that its United States lawyers sent to the Registrar on October 22, 2009. The email asserted that the Domain Name infringed the Complainant's rights under the Lanham Act and was in violation of the Policy. It also sought contact information for the registrant and/or the transfer of the Domain Name to the Complainant. The Complainant complains that the Registrar did not respond to this email or follow up emails on November 2, 2009 and November 10, 2009.
5.4 The Complainant contends that the Domain Name is confusingly similar to a number of its marks and asserts that the addition of an “s” in the Domain Name to its FOUR SEASONS RESORT mark is insignificant.
5.5 The Complainant asserts that the Respondent has not been licensed to use the Complainant mark and is not using the Domain Name for any bona fide offering of goods or services. There is instead merely use of a domain name that “incorporates a famous mark indicating the intent to trade upon the reputation of the Trademark of the Complainant to divert Internet visitors to websites of competitors”.
5.6 The Complainant claims that given the fame of its marks it is inconceivable that the Respondent was unaware of those marks when it registered the Domain Name. It also claims “constructive notice” given that the Respondent could have established the existence of the Complainant's rights by a search of the US Trade Marks register.
5.7 The Complainant further claims that “registration of the confusingly similar [Domain Name] which incorporates Complainant's famous Mark is in and of itself evidence of bad faith” (citing various previous decisions under the Policy which are said to support this proposition). It also repeats its claim that the Domain Name is being used to divert Internet users to the websites of the Complainant's competitors and that the format of the web pages displayed “strongly suggests that Respondent is obtaining ‘click-through' revenue from the Infringing Domain Name.”
5.8 Finally, the Complainant contends that “the Registrant's attempt to conceal its identity by registering the [Domain Name] through a privacy service is further evidence of bad faith”.
5.9 The Respondent did not reply to the Complainant's contentions.
6.1 For reasons that are set out the heading Discussion and Findings below, the Panel has reached the conclusion that this is a straight forward and obvious case of cybersquatting contrary to the provisions of the Policy. However, before addressing this issue further, it is convenient first to comment upon Registrar's apparent initial refusal in this case to provide underlying registrant details in relation to the Domain Name in response to the Center's initial verification request.
6.2 The Panel has considered whether it is necessary to comment on the Registrar's conduct in this case, given that ultimately it has provided contact details for the registrant (albeit ones that do not appear to clearly identify a legal entity). This suggests that the Registrar may have thought better of its initial conduct in this case. Nevertheless, the information has now been provided after purported “approval from [its] customer”. In short, the Registrar appears to continue to maintain that whether or not this information is provided is ultimately for its “customer” to decide. The Panel disagrees and is concerned that the Registrar (or other registrars) may seek to take a similar position in future. It is therefore appropriate for the Panel to address this issue.
6.3 This is not the first occasion on which the Registrar refused to provide details of an underlying registrant behind what would appear to be its “Private WhoIs Service”. In Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183, the Registrar took a similar position. Once again it claimed that the issue of disclosure was a matter not for it but for its customer. The explanation offered was as follows:
“while we are very happy and willing to assist the Center in order to go ahead with the UDRP, we have also a contract with our customers and the Private Whois service is intended to prevent third parties to obtain the real identity of the [sic] domain holder. Please note in our opinion section 188.8.131.52. of the ICANN Registrar Accreditation Agreement does not applies [sic] to the case as we do not own the domain on behalf of a third party, instead the owner of the domain has elected not to publicly disclose personal data using a service commonly known as Private Whois or Whois Privacy and Private Whois is not a person nor an identity. We also automatically forward your emails to the owner, so we can assume the domain owner is aware of the dispute as long as they are checking their email in a regular basis.”
6.4 Further justification was offered by the Registrar in its submission filed in response to the Procedural Order. It contended the following:
(i) Whois privacy services were “admit[ed] and accept[ed]” by ICANN under “the RDE document”3 .
(ii) That the rationale for the provision of the service was the prevention of spam. It accepted that if the underlying information was provided in the course of UDRP proceedings, this would not be used by the Panel for spamming purposes. However, it contends that:
“communications between Panelist and Registrant are published and easily accessible in electronic format and that's where spamming activities could benefit from such a disclosure of confidential data.”
(iii) That the operation of the Policy is not frustrated by its service because all emails forwarded to it in relation to the Policy would be forwarded to the underlying registrant. The Privacy service operated by the Registrar involves the display in the publically available WhoIs details for the domain name of “rotating” or changing email addresses. Recognising that this might cause communication difficulties and following the decision in Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183, the Registrar has adopted a procedure whereby on the notification of proceedings on the Policy the email address displayed in relation to the relevant domain names is “locked”.
(iv) That it did not know when the Respondent asked it to disclose its customer details, but that it “comes as no surprise that [it] didn't provide such details as it would defeat the purpose of the Private WhoIs Service”.
(v) That it initially thought the fact that the proceedings had been directed against it was a “mistake” (whether this is a reference to the fact that it was named as the Respondent in the proceedings or that a procedural order was directed to it qua registrar is unclear). It then proceeds to claim that the panelist in this case “probably just vented a little excessively his frustration about having to abide by the same rules and regulations as all the registrars”. It then went on to advise the Panel to:
“focus on his mission instead of wasting time and energy on matters that are absolutely out of his scope and that anyway are irrelevant to the case. If the Panelist's goal is to demonstrate that in fact Internet.bs Corp. is the domain's legal owner or Registrant we can simply demonstrate he is absolutely wrong, as the domain was registered in 1998, years before our company was created. Furthermore we would have no problem admitting of being the owner of a domain if this were the case.”
(vi) Lastly, it excused the fact that it had not provided billing information in this case on the grounds that the Center had not asked for it. In particular, it referred to the wording of the Center's request which sought:
“... full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the above domain name(s);” (Registrar's emphasis).
6.5 The Panel is unconvinced by the explanations offered by the Registrar for its conduct in both this case and Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com supra.
6.6 The Registrar's primary purported justification for the offering of a WhoIs privacy service is the prevention of spam. However, the Registrar's suggestion that this is a valid justification for non disclosure to UDRP provider in the course of proceeding under the Policy makes little sense. The Registrar contends that there is a problem because “communications between Panelist and Registrant are published”. What the Registrar means by this is unclear and perhaps here the Registrar is confused as to the respective functions of Panel and Center. But whichever is intended, the statement is logically confused and simply wrong as a matter of fact.4
6.7 It is logically confused because at its heart what is important here is proper identification not of addresses per se but of the identity of the registrant. It is this identity that the Registrar is seeking to disguise and yet disclosure of that identity is not a source of spam.
6.8 It is also wrong as a matter of fact since neither the email information (or for that matter real world addresses) provided by a registrar either to the panel or the Center in proceedings will as a matter of course be published. As an examination of recent WIPO decisions will show, email addresses (and real world addresses) rarely appear in published decisions. In these rare cases where they do appear, this will normally be as a result of a positive decision by a panelist that the disclosure of this information is either necessary for the purposes of the decision or there is some other public interest in disclosure.
6.9 Next, it would appear that the Registrar has misunderstood the nature of the Procedural Order, and appears be proceeding on the misapprehension that the Panel was engaged in some general attack on the legality of WhoIs privacy services as a whole. This is not the case.
6.10 The issues surrounding the offering of WhoIs privacy services are complex and controversial. The Panel understands, for example, that in due course ICANN will at some point in the future be releasing an “RFP for a third WHOIS study area on Proxy and Privacy services”5. For present purposes it is sufficient to record the fact that notwithstanding that these services are now de facto offered by a number of registrars, no express provision for them in the Registration Accreditation Agreement (“RAA”) that governs the relationship between ICANN and registrars. At times the two are difficult to reconcile.
6.11 For example, paragraph 3.3.3 of the RAA places an obligation on registrars to maintain a publically accessible database that records the names and contact details for the Registered Name Holder (defined in the “RAA” as the “holder of the Registered Name”). There are also a series of provisions in the RAA (at para 3.7.7) that set out minimal contractual terms that must be placed in the agreement between Registered Name Holders and Registrars. These cover, for example the provision of information and liability in those cases where use of a domain name is licensed to a third party. So the difficulty that the operators of these services face is that under the RAA they must claim that they are entitled to name themselves (albeit under the banner of a privacy service) as the Registered Name Holders for the purposes of paragraph 3.3.3 compliance, but this in turn means that they must bind themselves to comply with the obligations usually imposed on registrants under paragraph 3.7.7.
6.12 The Panel declines to express a further view on these issues, save to say that for what it is worth the Registrar's initial assertion in Association Robert Mazars case supra that “184.108.40.206. of the ICANN Registrar Accreditation Agreement does not applies [sic] to the case as we do not own the domain on behalf of a third party” does not make sense to the Panel. It seems inherent in the claim that a “whois privacy service” is legitimate under the RAA that the Registrar is consequently bound to comply with the obligations placed upon Registered Domain Name holders (including the obligations under paragraph 3.7.7) under the RAA.6
6.13 However, perhaps more immediately significant in the present case is the issue of the non-compliance of the Registrar with the requirement that it provide the Center with billing contact details for the underlying registrant. In the Panel's assessment, a Registrar is obliged to provide these to the Center in compliance with paragraph 2(a)(i)(b) of the Rules (which directly binds the Registrar by reason of paragraph 3.8 of the RAA and paragraph 1 of the Policy). For the Registrar not to do so would seem to involve a breach of the Rules and, consequentially, the RAA.
6.14 Notwithstanding, the Registrar's assertion that it is “operating in full compliance with ICANN policies and rules”, the Registrar does not appear substantively to contest this. Instead, its position seems to be that it cannot be blamed for not providing this information because the Center did not ask for it. It refers instead to the wording of the Center's verification request (set out above) which was said simply to request details of billing information in the WhoIs details for the Domain Name.
6.15 The Panel believes this to be an excessively narrow reading of the Center's request. It is clear that the Center was making a request for details in the context of proceedings under the Policy. Paragraph 2(a)(i) of the Rules refers to information:
“(A) shown in the domain name's registration data in Registrar's WhoIs database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact”
It is, therefore, quite clear that information in relation to the “registration's billing contact” is quite distinct from the information held in any publically available WhoIs database. This can and should have been provided to the Center to enable it to fulfill notification obligations vis à vis the underlying domain name holder.
6.16 The Registrar's stance is also in marked contrast to the seemingly common practice of reputable registrars that operate a domain name “privacy service” to disclose details of the underlying registrant to the Center in response to the Center's verification request (see, for example, footnote 2 to the Association Robert Mazars decision supra).
6.17 From a practical perspective it is important that those who offer WhoIs privacy services operate in this way. A refusal by a registrar to disclose to a requesting Policy provider the underlying owner or holder of a domain name (and their contact details) hidden behind a “privacy service” in proceedings under the Policy, involves a potential threat to the operational integrity of the Policy. Registrars who operates in this fashion potentially provide a tool that enable cybersquatters to conduct their activities in secrecy and to help them avoid the extent of their abusive activities becoming public; thereby depriving complainants, potential complainants and panels with information that is potentially highly relevant to the assessment of abusive behaviour. For a registrar to participate in facilitating or aiding these activities risks undermining the operation of the Policy. For the reasons already given, the Panel considers this to be contrary to the provisions of the Policy. It is undoubtedly contrary to its spirit.
6.18 The Registrar's appeal to the terms of its contract with its customers is also circular and self serving. The Registrar presumably determines the contractual terms on which it offers its “privacy service”. Should the Registrar contractually bind itself in a way that threatens to frustrate the operation of the Policy, that provides no excuse for its conduct. If the requirement of disclosure causes the Registrar difficulty with its customers, then it has no one to blame for that difficulty but itself.
6.19 The Registrar's actions in this case also have to be understood in the specific context of the facts of this dispute. As the Panel has already stated this is a clear cut case of cybersquatting. It is disappointing to the Panel that the Registrar has decided to take such a stance in this case on the issue of providing the identity and contact details of the holder of the disputed domain given that context.
6.20 In the circumstances, the Panel invites the Center to bring a copy of this decision to the attention of ICANN to take such investigation and action in relation to the Registrar as it considers appropriate.
6.21 The Registrar appears to contend that the reference to ICANN falls outside of the remit of the Panel. The Panel disagrees. The Panel accepts that a panel has no power to impose its interpretation of the operation of the RAA on either ICANN or registrars. Panels also have no power to impose any form of sanction on a registrar even in the face of the most egregious misconduct. The only positive powers specifically granted to panels are to decide the fate of domain names the subject matter of proceedings under the Policy and under paragraph 10 of the Rules to conduct those proceedings in such manner as they consider appropriate in accordance with the Policy and Rules. Registrar compliance is ultimately a matter for ICANN.
6.22 Nevertheless, both panels and the Center have a clear interest in the effective operation of the Policy that they administer. Should it come to their attention that the actions of specific registrars threaten the integrity of the Policy (regardless of whether or not those actions may ultimately be in breach of its terms), it is appropriate for them to bring this to ICANN's attention. Insofar as a panel requires the authority of the Policy or Rules to do this, paragraph 10 of the Rules provides it.
6.23 Examples, of past communication between the Center and ICANN in relation to registrar conduct include:
(i) The Center's letter of December 11, 2009 to ICANN in respect of the activities of the registrar Nameview7;
(ii) The Center's letter of April 9, 2009 to ICANN in respect of the activities of the registrar Lead Networks Domains Pvt. Ltd.8; and,
(iii) The Center's letter of April 16, 2008 to ICANN in respect of various registrar practices9.
6.24 Examples of references to ICANN by panels in cases under the Policy include:
(i) Loders Croklaan B.V. v. Loderscroklaan.Com/ Loders Croklaan, Paul Bakker, WIPO Case No. D2009-1216;
(ii) Funix B.V. v. Domain Administrator, WIPO Case No. D2009-1048;
(iii) Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080;
(iv) FOSS A/S, FOSS NIRSystems INC v. fossnirsystems.com c/o Whois IDentity Shield /Admin, Domain, WIPO Case No. D2008-1256;
(v) General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834;
(vi) Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792
(vii) Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886
(viii) NAF NAF v. Hostmaster Hostmaster, WIPO Case No. D2007-1175; and
(ix) Therapro, Inc. v. Administrator, Domain/ Therapro, WIPO Case No. D2006-0883;
6.25 Lastly, the Panel records in this decision an aspect of the Registrar's submission in this case that is curious. The Registrar denies that it is the underlying owner of the Domain Name and purports to offer proof as to why this is so. This is rather odd since no such allegation was made by the Complainant in its Complaint or suggested by the Panel in the Procedural Order.
7.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
7.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
7.4 It is clear that the Complainant owns various registered trade marks that comprise or incorporate the term “Four Seasons” and that it is the owner of a US registered trade mark for FOUR SEASONS RESORT. The Domain Name can only be sensibly read as the words “Four”, “Seasons” and “Resorts” in conjunction to the <.com> TLD. This is a clear and obvious case of a domain name that is confusingly similar to a mark in which a complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
7.5 The Panel accepts that the Domain Name in this case is currently being used by the Respondent for use with a “domain name parking” or “pay per click” service.
7.6 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
7.7 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
7.8 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons given there, the Panel has reached the unequivocal conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainant's trade marks. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
7.9 As the Panel has already stated, it seems clear that the Domain Name has at least recently been used in connection with a “pay per click” or “domain name parking” service.
7.10 It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
7.11 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
7.12 It is abundantly clear that the Domain Name has in this case been used to take advantage of confusion with the Complainant's mark. The Panel is persuaded that the fame of the term “Four Seasons” in conjunction with hotel related services is both extensive and world wide. There is also no other reasonable reading of the Domain Name other than as a reference to the Complainant's business operating under the “Four Seasons” and “Four Seasons Resort” names. Given this, the only sensible conclusion that can be drawn from the fact that the Domain Name has been used with a domain parking service is that the registrant intended to use confusion on the part of the Internet users to draw them to the page generated by the service. There has undoubtedly been and continues to be bad faith use.
7.13 So far as bad faith registration is concerned, it is notable that the domain name was registered over 12 years ago and there is only evidence before the Panel of its recent use. Nevertheless the nature of the domain name is such that it is difficult to conceive of a legitimate use10 of the domain name absent the authorisation of the Complainant. The only reasonable conclusion it is possible to draw is that the underlying registrant of the Domain Name registered11 the domain name in order in some way or other to take unfair advantage of the reputation that the Complainant had developed in the “Four Seasons” and “Four Seasons Resort” names. In the circumstances the Panel finds that there was also registration in bad faith.
7.14 Accordingly the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.15 For the avoidance of any doubt the Panel records that in reaching its conclusion on bad faith registration it has not relied upon or adopted the Complainant's contention of constructive notice12. This is a case where the Panel is convinced that there was actual knowledge of the Complainant's mark.
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 <fourseasonsresorts.com> be transferred to the Complainant.
Matthew S. Harris
Dated: February 5, 2010
1 This was a position that the Complainant was quite entitled to take. See the Panel's comments regarding the choice of named respondent in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case D2007-1886.
2 As per the procedure adopted in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case D2007-1886; Aluship Technology SP. Z O.O. v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028; and, Western Union Holdings, Inc., v. Laksh Internet Solutions Private Limited and others, WIPO Case D2008-1675.
3 This is a reference to the Registrar Data Escrow Specifications with which registrars must comply.
4 The Panel is also aware that in some jurisdictions national law can place restrictions on disclosure of personal information of individuals. However, the Panel is not aware of any such law which is specifically applicable in the present case, and in any event the registrar has not pointed to or sought to rely on any such law.
5 see http://gnso.icann.org/issues/whois/
6 The Registrar refers to the Registrar Data Escrow Specifications which do indeed make reference in one paragraph to “Whois privacy or proxy services” and the concept of “beneficial users”, but it is hard to see how this supports the Registrar's claim that paragraph 220.127.116.11 does not apply to it.
7 Available at http://www.wipo.int/export/sites/www/amc/en/docs/icann111209.pdf
8 Available at http://www.wipo.int/export/sites/www/amc/en/docs/icann090409.pdf
9 Available at http://www.wipo.int/export/sites/www/amc/en/docs/icann160408.pdf
10 For a more detailed explanation of what is meant by “legitimate” and “illegitimate” use in this context see La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377 and the decision of the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455.
11 The relevant date for assessment of that intent is possibly some more recent date that the date of initial registration. This is because according to the Registrar the Domain Name was initially registered “years before” the Registrar came into existence, and it arguable that the listing of the Registrar's privacy service in the WhoIs details would have trigged a fresh registration for the purposes of the Policy (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp., WIPO Case No. D2009-0785). However, on the facts of this case the exact date does not matter.
12 For a critique of the application of that doctrine in the context of the Policy see ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346 and footnote no. 2 to the decision of the Panel in Henkel KGaA v. Mr. Augustin Sbinta, WIPO Case No. DRO2008-0003.