WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amanresorts Limited and Amanresorts International Pte Ltd v. Moniker Privacy Services / Janice Liburd Porchester3@domainsponsor.com
Case No. D2011-0263
1. The Parties
The Complainants are Amanresorts Limited of Hong Kong, SAR of China, and Amanresorts International Pte Ltd of Singapore, represented by an internal representative.
The Respondents are Moniker Privacy Services of the United States of America / Janice Liburd Porchester3@domainsponsor.com of Panama (collectively referred to as the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <amansarahotel.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2011. On February 8, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 11, 2011, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 17, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 18, 2011.
The Center verified that the Complaint and the amended 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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2011.
The Center appointed Amarjit Singh as the sole panelist in this matter on March 22, 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 Complainants are both owned by Silverlink Holdings Limited and are part of the Amanresorts group of companies, which owns and manages a chain of luxury resort hotels around the world, including the Amansara resort in Cambodia.
The Complainants have owned trademark registrations in Cambodia since 2003 for AMANSARA in the following classes: 35, 39, 41, 43, 44. These registrations include, inter alia, registration nos. KH 17398/03, KH 17399/03 and KH 17400/03.
The Complainants also own the domain name registrations for <amansara.com> and <amansara.net>.
The disputed domain name <amansarahotel.com> was created on October 22, 2010.
5. Parties’ Contentions
The Complainants currently own and/or manage 24 (twenty-four) luxury resort hotels around the world, including the Amansara resort in Cambodia. The Complainants have used the trademark AMANSARA since 2002, when the Amansara resort first opened for business.
Due to the Complainants’ extensive use and promotion of the trademark AMANSARA through the years, the Complainants have acquired tremendous goodwill and reputation in the trademark AMANSARA and the mark is now well-known throughout the world.
The term “Amansara” is a fanciful, unique mark which was invented by the Complainants for use as a trademark.
The Complainants have owned trademark registrations in Cambodia since 2003 for AMANSARA in the following classes: 35, 39, 41, 43, 44. The Complainants have also recently applied to register AMANSARA in class 43 in several countries such as USA and EU.
The Complainants also own the following domain names containing the trademark AMANSARA , namely:
<amansara.com> and <amansara.net>.
The Complainants’ Amansara resort is very well-known to the public as well as the travel industry. It has been regularly featured through the years in leading media publications.
The Complainants have consistently won numerous awards and accolades through the years for its chain of luxury resort hotels as well as its Amansara resort.
The Respondent had, on October 22, 2010, registered the disputed domain name which is virtually identical/confusingly similar to the Complainants’ trade mark AMANSARA.
The Respondent has no rights or legitimate interest in respect of the disputed domain name and the same was registered and is being used in bad faith.
The Complainants had sent a cease and desist letter to the registrant of the disputed domain name but did not receive any reply.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) That the Respondent has no legitimate rights or interests in respect of the domain name; and,
(iii) That the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Respondent registered the disputed domain name on October 22, 2010. The disputed domain name is virtually identical / confusingly similar to the Complainants’ trademark AMANSARA.
The only distinctive portion of the disputed domain name is “amansara”, since the word “hotel” is a generic, descriptive term that does not serve to distinguish the Respondent’s domain name from the Complainants’ trademark.
In Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700, it was held that:
“As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).”
The panel held in Lucasfilm Ltd and Licensing Ltd that the addition of generic descriptive words such as “pictures”, “sounds”, “trailers” and “wallpaper” to the trademark “star wars” in the domain names did not serve to distinguish the domain names. It was therefore held that the domain names <starwarspictures.com>, <starwarssounds.com> were confusingly similar to the complainant’s registered “star wars” trademark.
In the present case, the word “hotel” is a generic, descriptive word that does not serve to distinguish the Respondent’s domain name from the Complainants’ trademark. Indeed, the word “hotel” merely heightens the confusion between the marks, as the Complainants’ trademark is well-known in relation to, inter-alia, hotel services. As such, the disputed domain name is confusingly similar, if not identical to the Complainants’ trademark.
As for the presence of the suffix “.com” in the disputed domain name, it is well-established that the incorporation of the generic top-level domain name “.com” in a domain name has no legal significance and does not serve in any way to distinguish the domain name from the Complainants’ trademark. In Busy Body Inc. v Fitness Outlet Inc, WIPO Case No. D2000-0127 it was held that the addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants.
The Respondent has not responded to any of the contentions raised by the Complainants and in absence of any rebuttal by the Respondent to the contentions of the Complainants or justification for the registration thereof, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark AMANSARA pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainants contend that Respondent has no rights or legitimate interests in the disputed domain name pursuant to the Policy, paragraph 4(a)(ii) because:
(a) the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or apply for any domain names incorporating the trade mark;
(b) the domain name bears no resemblance to the Respondent’s name or business;
(c) the Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Policy, paragraph 4(c) allows three non-exclusive circumstances for the Respondent to demonstrate that it has rights or a legitimate interest in the disputed domain name, viz:
(i) Before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) You [Respondent] 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 trade mark or service mark at issue.
The Respondent has not rebutted to any of the contentions raised by the Complainants and in the absence of any rebuttal by the Respondent pleading the applicability of any of circumstances as indicated above, the Panel finds on the current record that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Policy, paragraph 4(b) sets forth four non-exclusive criteria for the Complainants to show bad faith registration and use of the disputed domain name, viz:.
(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 purposes 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 complainants allege that respondents have demonstrated their bad faith under the Policy paragraph 4(b)(iv).
The Complainants contend that the disputed domain name resolves to a webpage featuring sponsored links, which lead to the websites of other hotels, including to hotels which are the direct competitors of the Complainants.
The Complainants further contend that they had sent a cease and desist letter to the registrant of the disputed domain name but did not receive any reply.
The Complainants further contend that by using a domain name that is confusingly similar to the Complainants’ well-known AMANSARA trademark, the Respondent is intentionally attempting to attract for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship etc. of the Respondent’s website. The likelihood of confusion is enhanced since the disputed domain name contains the descriptive word “hotel” in addition to the Complainants’ trademark, given that the Complainants are in the hotel business.
“Commercial gain” to the Respondent can be inferred from the presence of the “Sponsored Listings”. It was held in General Growth Properties, Inc. v. Baker Ballantine. WIPO Case No. D2005-0919, that it could be inferred from the presence of the “Sponsored Listings” in the web page the domain name resolved to, that the respondent would have derived some financial benefit from Internet traffic following such sponsored links having been attracted to these web pages by the use of the domain name. In TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620, the panelist held that it could reasonably be concluded from the respondent’s use of such links that the respondent is engaging in the revenue generating activity sometimes called click-through, in which the respondent collects fees from third parties for each Internet user referred to them. The panelist held in TDS Telecommunications that in order to maximize traffic, the respondent had appropriated the complainant’s trademark and goodwill, relying on Internet users to find the respondent’s website through search techniques or by presuming that the domain name would be the complainant’s Internet location. The same conclusion may be reached on the similar facts of the subject case.
The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the domain name is either virtually identical or confusingly similar to the Complainants’ AMANSARA trademark, comprising the Complainants’ trademark with the addition of the descriptive term “hotel”. As stated above, the likelihood of confusion is further increased by the use of the descriptive word “hotel”, since the Complainants’ trademark is used in respect of hotel services.
Further, the Respondent’s failure to respond to the Complainants’ cease and desist letter supports a finding of bad faith (especially where, as in this case, the trademark in question has substantial goodwill and reputation): see TDS Telecommunications Corporation v Registrant Nevis Domains and Registrant Moniker Privacy Services, WIPO Case No. D2006-1620.
The Panel finds that the Complainants have provided sufficient evidence to establish the elements of bad faith and in the absence of any rebuttal by the Respondent, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <amansarahotel.com> be transferred to the Complainant Amanresorts International Pte Ltd.
Dated April 2, 2011