WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indian Hotels Company, Ltd., Taj International Hotels (HK) v. Bernard Yankin
Case No. D2010-2021
1. The Parties
The Complainants are Indian Hotels Company, Ltd. and Taj International Hotels (HK) Limited of Mumbai, India and East Hong Kong, Hong Kong, the People’s Republic of China, respectively, represented by Anand & Anand, India.
The Respondent is Bernard Yankin of Sunnyvale, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <51buckinhamgate.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On November 25, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 December 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2010.
The Center appointed Frank R. Schoneveld as the sole panelist in this matter on January 14, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The WhoIs database (copy provided by the Complainant), shows that the disputed domain name was created on July 31, 2010.
Taj International Hotels (HK) Limited (the “Second Complainant”) has, since August 14, 2001, been the registered holder in the United Kingdom of Great Britain and Northern Ireland (“U.K.”) of the service mark “51 Buckingham Gate”.
The hotel business “51 Buckingham Gate, Taj Suites and Residences” in London, England is owned and operated by The Indian Hotels Company Ltd. (the “First Complainant”). The Second Complainant is a subsidiary of the First Complainant.
The Second Complainant’s service mark is frequently referred to in conjunction with the above-mentioned hotel business, as shown by copies of extracts of newspapers, websites and journals – the “publications” (copies provided by the Complainants). These references occur in more than 25 publications over the period from January 2006 to June 2010. Some of the publications have an international circulation (including apparently in the United States of America (“United States”) and Asia). The publications are in either English or French.
In response to a letter from the Complainants’ authorized representative and addressed to “Mr. Bernard Yankin alias Jason Friedman”, in an email dated September 02, 2010, the Respondent in the name of “Jason Friedman [email@example.com]” replies with, inter alia, the following:
“I was treated real bad by 51 Buckingham gate a few months ago and laid complains but no form of compensation or remorse came from them that was when I vowed that we would take it down to the streets where I come from. I would tell you that I am willing to let go of this particular senerio that I have started but on a simple condition, I being paid off with the sum of 3000GBP which is what I paid for the services I never deemed worth the fee. For all I care I am willing to tanish this particular hotels image with the said amount if we do not reach a compromise. Off course the fee can be negotiable. Last week the security from 51 Buckingham gate called me with my cell fone on my dommie website and told me to take my website off under 5 mins, I wondered what he was going to do as it is now 1176 hours after then and my dommie site is still running and would continue to in order to tanish the image of the hotel. For all I care you can investigate the host of my dommie site, get to cancel it, but you can be sure I would always open a new one to continue in my fight for justice. I have not extorted up to the asked fee, but if you dont meet up with it I would not stop till I get it.
At this point in time I regret to let you know that nothing can be done until the ransom is paid. ...” [sic]
5. Parties’ Contentions
A. The Complainants
The Complainants contend that because of their adoption and long, continuous, uninterrupted and extensive usage of the “51 Buckingham Gate” mark, as well as their active promotion and advertising of the mark, they have acquired substantive common law rights in the “51 Buckingham Gate” trademark. Further, registration of the mark in the U.K. in 2001 demonstrates that the Second Complainant has rights in this service mark.
The Complaint asserts that the disputed domain name is confusingly similar to the Complainants’ common law trademark and the Second Complainant’s registered service mark, with only the letter “g” being the difference between the two. The Complainants argue that this is a deliberate misspelling, amounting to “typosquatting”. It is alleged that the similarity between the registered service mark (as well as common law trademark) and the disputed domain name is confusing. This is because the domain name would, and has, induced members of the public to consider the disputed domain name as one which is associated with the business and mark of the Complainants when it is not in any way associated with the Complainants. The Complaint provides, as one example of such confusion, copies of emails from a travel agent in the United States who mistakenly thought bookings through the disputed domain name’s website were being made directly with the business of the First Complainant, when they were actually being made with the Respondent.
The Complaint alleges the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- The Respondent has not been licensed or otherwise permitted to use the Second Complainant’s trademark.
- The disputed domain name resolves to a website that substantially copies the First Complainant’s website and an email from the Respondent indicates no rights or legitimate interests in the domain name through malicious interest to seek a “ransom” of GBP 3000.
- There is no plausible explanation of use of the disputed domain name that indicates a legitimate interest in respect of it.
- The Respondent has used, without permission of the Complainants, the disputed domain name to obtain bookings for, and money in respect of such bookings, for the hotel business of the First Complainant.
The Complaint states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the Respondent has no rights or legitimate interest in the domain name.
The Complaint contends that the domain name has been registered and is being used in bad faith by the Respondent because:
- The disputed domain name is an example of “typosquatting”.
- The Respondent’s reply to the Complainants’ cease and desist letter was to demand GBP 3000, and to threaten that he “was willing to tarnish this particular hotels image with the said amount if we do not reach a compromise”, and that he “would always open a new one [i.e., domain name] to continue to fight for justice”.
- The Respondent is deliberately impersonating the Complainants and such impersonation is evidence of bad faith.
- The Respondent has registered the domain name primarily to disrupt the business of the Complainants.
- The Respondent has infringed the Complainant’s copyright, by using material on the website to which the disputed domain name resolves, that substantially reproduces the Complainants’ website.
- The Respondent is bound to be aware of the Second Complainant’s trademark and is solely guided by the motive to confuse the public into believing the Respondent is affiliated with the Complainants and to derive undue advantage from the confusion/deception, also amounting to misrepresentation and infringement of the Complainants’ service mark.
- The Respondent has induced visitors to the web page to which the disputed domain name resolves, into mistakenly believing (i) the Second Complainant has licensed its service mark “51 Buckingham Gate” to the Respondent or authorized the Respondent to register the disputed domain name, (ii) the Respondent has some affiliations or is authorized by the Complainants, and/or (iii) the disputed domain name is affiliated with the Complainants when it is not.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Rules provide at paragraph 5(e) that “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
Paragraph 14(a) of the Rules provides that: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.”
Since the Respondent has not responded to the Complaint within the time period established by the Rules and has not provided any exceptional circumstances for its default, and the Panel has not established any different time period for submissions by the Respondent or Complainants, the Panel proceeds to decide the dispute on the basis of the Complaint.
A. Identical or Confusingly Similar
The Complaint provides evidence that the Second Complainant is the registered holder of the service mark “51 Buckingham Gate” registered in the U.K. since at least 2001. The only difference between this mark and the disputed domain name is the absence of the letter “g” in the word “buckingham”.
In the absence of any response from the Respondent, the Panel finds that this difference is so minor as to be able to induce the reader of the disputed domain name to reasonably believe that the disputed domain name is simply a typing/spelling mistake of “51 Buckingham Gate”, which corresponds to the registered service mark of the Second Complainant. As demonstrated by emails in the Complaint, this would confuse a reader who sees the apparently misspelled domain name.
The Panel finds that the disputed domain name is confusingly similar to the service mark in which the Second Complainant has rights.
B. Rights or Legitimate Interests
The Complaint includes copies of emails indicating that the disputed domain name is not being used for a bona fide offering of goods or services. The email to the Complainants’ representative dated September 02, 2010 from “Jason Friedman [firstname.lastname@example.org]” shows an intention to use the disputed domain name in order to seek a “ransom” of 3000GBP”. The Complaint also contains copies of emails with a United States travel agent, indicating that the Respondent has apparently offered fictitious hotel booking services with regard to the hotel business associated with the Second Complainant’s service mark. This fictitious offering of hotel booking services indicates a design to deliberately confuse potential customers of the Complainants. It also involves the Respondent using, without consent, the service mark of the Second Complainant to deceptively obtain funds from prospective customers of the Complainants. Such use of the disputed domain name cannot be characterized as a bona fide offering of goods and services.
There is no evidence that the Respondent has ever been known by the disputed domain name, whether through a trademark, service mark or any other means.
A further consideration, which is also of relevance to the third element of bad faith discussed further below, is that copies of emails from a travel agent who mistakenly thought the disputed domain name was affiliated with the Complainants, suggests that the Respondent is using the disputed domain name to divert customers or to tarnish the service mark of the Complainants with the intent of commercial gain. This Panel finds this apparent intention is reinforced by both the Respondent’s acceptance of hotel bookings for amounts in the hundreds of UK pounds, as well as the Respondent’s demand for “being paid off with the sum of 3000GBP”.
In the absence of any response from the Respondent, given the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The email from the Respondent of September 2, 2010 to the representatives of the Complainants, states (in part) that: “…I am willing to let go of this particular senerio that I have started but on a simple condition, I being paid off with the sum of 3000GBP…” [sic] and “…my dommie site is still running and would continue to in order to tanish the image of the hotel…” [sic] This indicates that the Respondent has registered the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainants, one of whom is the registered owner of a relevant service mark, for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name. The above described circumstances is evidence of registration and use in bad faith of the disputed domain name, as set out in Paragraph 4(b)(i) of the Policy.
The emails between a United States travel agent and the Respondent of August 6 and August 7, 2010 show that the Respondent was using the disputed domain name to obtain hotel bookings from prospective customers of the Complainants for commercial gain. The Respondent included, in the disputed domain name website, a substantial reproduction of the contents of the Complainants’ website, including the text and graphics of the Complainants’ website. Such conduct is likely to create confusion with the Second Complainant’s registered service mark. Confusion arises because an Internet user would reasonably but mistakenly believe either (i) that the disputed domain name was affiliated with or endorsed by the Complainants, or (ii) that the Respondent’s hotel booking service using the disputed domain name was affiliated with or endorsed by the Complainants. The content of the emails between the Respondent and the United States travel agent of August 6 and 7, 2010, and the email from the Respondent to the Complainants’ representatives of September 2, 2010, demonstrate that the Respondent intended to attract Internet users to the Respondent’s website for commercial gain. The Respondent also demanded payment of 3000GBP as “ransom”. The above described circumstances are evidence of registration and use in bad faith of the disputed domain name, as set out in Paragraph 4(b)(iv) of the Policy.
In the absence of any submission from the Respondent, the Panel cannot see how the disputed domain name and corresponding website could be a legitimate protest site. Even if it was a protest against the Complainants, the registration of the disputed domain name was evidently done primarily for the purpose of seeking payment for the disputed domain name obviously in excess of out of pocket costs directly related to the domain name. Further, the commercial gain through fictitious hotel bookings was clearly intentionally done in such a way as to unjustly profit from the Second Complainant’s registered trademark. An Internet user would mistakenly think, and in fact Complainant’s evidence shows that Internet users did mistakenly think, the Complainants had endorsed the Respondent’s hotel booking service provided using the disputed domain name, when in fact the Complainants had not given any such endorsement. In either case, in accordance with Paragraph 4(b)(i) and (iv) of the Policy, if such circumstances are present, this is evidence of registration and use of a domain name in bad faith. Using a domain name to deliberately mislead Internet users as to the affiliation or endorsement of the website to which the domain name resolves, and to do so for commercial gain with the aim of causing commercial harm to the holder of a relevant service mark, cannot be considered a legitimate protest site.
In view of all of the above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel has found that the Second Complainant has a registered service mark in the United Kingdom and the disputed domain name is confusingly similar to this service mark. For the purpose of the Panel’s decision it is unnecessary to make any finding as to whether or not the First Complainant and/or Second Complainant have a common law trademark in respect of which the disputed domain name is confusingly similar. The Second Complainant Taj International Hotels (HK) Limited, has an undisputed interest in the disputed domain name through its registration of the service mark “51 Buckingham Gate” registered in the U.K. For this reason, and in order to provide certainty in the Panel’s decision, the Panel decides to transfer the domain name to the Second Complainant alone.
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 <51buckinhamgate.com>, be transferred to Taj International Hotels (HK) Limited (the Second Complainant).
Frank R. Schoneveld
Dated: January 21, 2011