Complainant is NH Hoteles, S.A. of Madrid, Spain, represented by INTERDOMAIN, Spain.
Respondent is Will Eom of Daegu, Republic of Korea, appearing pro se.
The disputed domain name <nhhotels.com> (the “Disputed Domain Name”) is registered with Cydentity, Inc. dba Cypack.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2010. On February 16, 2010, the Center transmitted by email to Cydentity, Inc. dba Cypack.com. a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2010, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response, confirming that 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, Complainant filed an amendment to the Complaint on February 24, 2010. The Center verified that the Complaint together with the amendment to 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”).
On February 17, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Center received the arguments of Complainant and Respondent on February 24 and February 19, 2010 respectively. On February 25, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 25, 2010. On February 25, the Center notified Respondent that in accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. The Response was filed with the Center on March 17, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 26, 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.
Complainant operates 347 modern hotels with 52,676 rooms in 22 countries in Europe, America and Africa. Complainant's hotels feature high quality restaurants. To further enhance its image as a first-rate organization, Complainant has begun partnering with several high profile restauranteurs in launching several new concepts for its hotel restaurants. Complainant is publicly traded on the Madrid Stock Exchange.
Complainant registered the domain names <nh-hotels.com> and <nh-hoteles.com> on May 17, 2000 and January 21, 1997, respectively. On March 6, 2003, Complainant was granted a Community Trademark Registration for the mark NH HOTELES, Registration No. 1972223 in classes 35, 41, and 42. Complainant has also registered the following NH trademarks in Spain:
Trademark no. 1,280,585 NH and device, class 7
Trademark no. 1,280,586 NH and device, class 4
Trademark no. 1,280,587 NH and device, class 6
Trademark no. 1,280,589 NH and device, class 5
Trademark no. 1,280,590 NH and device, class 2
Trademark no. 1,280,591 NH and device, class 1
Trademark no. 1,282,212 NH and device, class 14
Trademark no. 1,282,213 NH and device, class 15
Trademark no. 1,282,214 NH and device, class 12
Trademark no. 1,282,215 NH and device, class 11
Trademark no. 1,282,216 NH and device, class 8
Trademark no. 1,282,217 NH and device, class 9
Trademark no. 1,283,079 NH and device, class 18
Trademark no. 1,283,080 NH and device, class 17
Trademark no. 1,283,527 NH and device, class 24
Trademark no. 1,283,529 NH and device, class 23
Trademark no. 1,283,530 NH and device, class 22
Trademark no. 1,283,918 NH and device, class 29
Trademark no. 1,284,552 NH and device, class 36
Trademark no. 1,284,553 NH and device, class 37
Trademark no. 1,284,554 NH and device, class 38
Trademark no. 1,284,557 NH and device, class 41
Trademark no. 1,809,587 NH and device, class 31
Trademark no. 2,860,520 NH and device, class 39, 41, and 43
Trademark no. 2,860,528 NH and device, class 16, 39, 41, and 43
The Disputed Domain Name was registered on April 7, 2002. Respondent received four offers to buy the Disputed Domain Name in 2006, 2007, and 2008. Respondent responded to these offers by indicating that the Disputed Domain Name was not for sale.
Complainant contends that the Disputed Domain Name “coincides” with and is “similar” to Complainant's registered NH trademarks, which are well-known. Complainant further contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that (i) it has not licensed or otherwise authorized Respondent to use Complainant's NH trademarks or to apply for any domain name incorporating its trademarks, (ii) Respondent is not known by the Disputed Domain Name, and (iii) there is no Internet evidence of any entity other than Complainant that uses the name “Nh Hotels”. Complainant points out that Respondent is using the Disputed Domain Name to resolve to a website containing links to third party commercial websites, which appear to offer goods and services similar to those offered by Complainant. Complainant alleges that the registration and use of the Disputed Domain Name to resolve to such a website evidences bad faith. In particular, Complainant contends that due to the distinctiveness of its NH trademarks, and the fact that the Disputed Domain Name identifies no legal entity other than Complainant, Respondent is intentionally trying, for commercial benefit, to attract Internet users to Respondent's website with clear intent to take advantage of the reputation of Complainant's business.
Respondent argues that the “NH” portion of the Disputed Domain Name <nhhotels.com> stands for the state of New Hampshire of the United State of America (“U.S.”) and that consumers, when viewing the Disputed Domain Name, recognize the abbreviation as meaning such and the generic portion “hotels.com” means that the website has to do with hotels. Respondent claims that this is very common and that there are many domain names that have the two letter abbreviation for a U.S. state followed by the generic “hotels.com” portion. In fact, Respondent claims that domain names consisting of the two letter abbreviation for all 50 U.S. states and “hotels.com” are registered.
Respondent claims that the Disputed Domain Name was first registered prior to the registration of the Complainant's domain name <nh-hotels.com> in 2000 and that Respondent further claims that the Disputed Domain Name was deleted on April 7, 2002 due to the negligent management of the original registrant but was re-registered on the same day, and that Respondent purchased the registration in 2005. Respondent goes on to claim that the original registrant must have registered the Disputed Domain Name contemplating to profit from the generic value of the words of “NH” (New Hampshire) and “hotels” (as Respondent) rather than having Complainant in mind and all of this is in contrast to Complainant's recent U.S. trademark registration of NH in 2009. Respondent also points out that Complainant does not have any trademark registration for NHHOTELS.COM or NH HOTELS in Republic of Korea (“Korea”).
Respondent further argues that he purchased the Disputed Domain Name for the purpose of making genuine use of same - that is, creating a website that provides hotel-related services, and in fact, that is what he claims he has done. He claims that he obtains “overture” advertisements from Yahoo and that Yahoo had confirmed that there are no patent or trademark issues relating to his website. He concludes by stating that given the long history of the existence of the Disputed Domain Name together with his genuine use of the domain name, it would be patently unfair and wrong for Complainant to take away his rights to the Disputed Domain Name on the basis of Complainant's recently registered U.S. trademark for NH in 2009.
Respondent also argues that he did not purchase the Disputed Domain Name with the intention of reselling it. He states that he received numerous offers from Complainant (disguised as other third parties) seeking to buy the Disputed Domain Name but that he refused all offers, telling them that it was not for sale. He claims that since Complainant was not able to buy the Disputed Domain Name, it initiated this administrative proceeding as soon as its U.S. trademark registration for NH has been consummated.
Finally, Respondent argues that if necessary he is willing to make a statement on his website at the Disputed Domain Name, affirming that there is no relationship between his website and Complainant. Respondent then states that Complainant, in seeking to take away his domain name, is engaging in “reverse [domain name hijacking]”.
In support of his claims, Respondent submitted, among other things, copies of the email offers he received to buy the Disputed Domain Name, as well as his response that it was not for sale.
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on (1) Respondent's e-mails in English to parties interested in purchasing the Disputed Domain Name; (2) the English language content of Respondent's website at the Disputed Domain Name; and (3) Respondent's arguments in response to the Complaint, it does not appear Respondent has any difficulty comprehending and communicating in English. If an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012. Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by Complainant and would therefore likely require it to expend resources to translate same.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The case record contains ample evidence to demonstrate Complainant's rights in its NH HOTELES trademark. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant's NH HOTELES mark. The word “hotels” of the Disputed Domain Name is an English translation of the Spanish word “hoteles”. Confusing similarity can exist if the trademark and the Disputed Domain Name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See, e.g., Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279. As noted above, the Disputed Domain Name is virtually identical to the English translation of Complainant's registered trademark NH HOTELES. Moreover, the Disputed Domain Name and Complainant's trademark are phonetic equivalents. Based on the evidence submitted by Complainant, the Panel finds that Complainant has the relevant rights in NH HOTELES. Accordingly, noting the phonetic equivalence the Panel finds that Complainant has demonstrated the first element.
The Panel has considered but rejects Respondent's argument that the Disputed Domain Name was registered prior to Complainant acquiring registered U.S. trademark rights for NH. The question of priority of Complainant's trademark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, since registration of a domain name before a complainant acquires corresponding trademark rights does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544). Moreover, once trademark rights in a jurisdiction are established, the territorial scope of a complainant's rights and the goods and/or services protected by such rights are irrelevant when finding rights in a mark for purposes of the UDRP (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Question; Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661).
In any event, it is evident that Complainant acquired rights in the NH HOTELES mark well prior to Respondent acquiring any rights in respect of the Disputed Domain Name. As Respondent stated in its response, it purchased the Disputed Domain Name registration in 2005. Complainant, on the other hand, had held trademark rights in NH HOTELES mark since at least 2003. As such, Respondent's arguments concerning priority are not well taken.
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its NH HOTELES trademark. There is also no evidence that Respondent (Will Eom) is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy is inapplicable in this case. Moreover, Respondent's use of the Disputed Domain Name to sponsor listings to third party websites, presumably to generate revenue because of the association of the Disputed Domain Name with Complainant's NH HOTELES trademarks, is trading on Complainant's goodwill and cannot constitute fair noncommercial use or a bona fide offering of goods or services. See Verisign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421; Rich Products Corporation v. Cynthia Kirk, WIPO Case No. D2007-0871. This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some right or legitimate interest in respect of the Disputed Domain Name.
Respondent's response contains no evidence that would rebut the prima facie case. In defense of its actions, Respondent claims that its use of the term NH in the Disputed Domain Name is to refer to hotels in the U.S. state of New Hampshire. However, the website to which the Disputed Domain Name resolves advertises NH hotels worldwide including in Amsterdam, Madrid, and Buenos Aires. None of the sponsored links on Respondent's website refer to any hotels in New Hampshire, and thus there is no evidence supporting Respondent's contention. After having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise. Contrary to Respondent's allegations, its refusal to sell the Disputed Domain Name does not evidence rights or legitimate interests. Complainant has therefore prevailed on this part of its Complaint.
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company, WIPO Case No. D2007-1206. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.
The Panel finds that Complainant has shown registration and use in bad faith by Respondent. Given Complainant's long and widespread use of its various NH HOTELES trademarks for hotel services throughout the world, and Complainant's prior registration of the domain name <nh-hoteles.com>, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Name. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business. Respondent's registration of a domain name directly reflecting Complainant's NH HOTELES trademark, and then using it to attract Internet users to its website and to divert users to other websites for business services similar to those of Complainant while presumably deriving such commercial value from Complainant's mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. See America Online, Inc. v. Tencent Communications Corp., NAF Claim No. FA93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101. The Panel thus concludes that by using the Disputed Domain Name in connection with sponsored links, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on Respondent's website or location.
Further, as an operator of a website that links to hotel reservation services that appear to compete directly with Complainant, Respondent is competing with Complainant, itself a well-known hotel service. Respondent's registration and use of the Disputed Domain Name thus amounts to disruption of the business of a competitor and thus to bad faith registration and use of the domain name as set forth under paragraph 4(b)(iii) of the Policy. Based on the evidence presented, this Panel finds that the Disputed Domain Name had been registered and is being used in bad faith by Respondent.
Respondent has suggested Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”), which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1. A finding of RDNH is appropriate if “Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297 and see also AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Enspire Technologies (PVT) Ltd., WIPO Case No. D2008-1471. Respondent has submitted no evidence that would indicate Complainant has committed RDNH.
The Panel rejects Respondent's argument that Complainant must have acted in bad faith because it has no rights in the NH HOTELS trademark in Korea or in the U.S. prior to Respondent. Complainant's registered trademarks evidence Complainant's legitimate rights, and its right to use the Disputed Domain Name and related domain names. As noted above, there is no evidence that Respondent made any legitimate noncommercial or fair use of the Disputed Domain Name prior to Complainant obtaining its trademark rights. Thus, the Panel finds that Complainant did not bring the Complaint in bad faith, and Respondent's RDNH claim is not well founded.
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 <nhhotels.com> be transferred to Complainant.
Andrew J. Park
Dated: April 9, 2010