World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Four Seasons Hotels Limited v. Daniel Kirchhof / Unister GmbH

Case No. D2011-0948

1. The Parties

The Complainant is Four Seasons Hotels Limited of Toronto, Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Daniel Kirchhof / Unister GmbH of Leipzig, Germany.

2. The Domain Names and Registrar

The disputed domain names <beverly-wilshire-4-seasons.com>, <four-seasons-atlanta.com>, <four-seasons-austin.com>, <four-seasons-aviara.com>, <four-seasons-boston.com>, <four-seasons-chicago.com>, <four-seasons-edinburgh.com>, <four-seasons-houston.com>, <four-seasons-hualalai.com>, <four-seasons-inn.com>, <four-seasons-jackson-hole.com>, <four-seasons-las-vegas.com>, <four-seasons-new-york.com>, <four-seasons-palm-beach.com>, <four-seasons-palo-alto.com>, <four-seasons-scottsdale.com>, <four-seasons-st-louis.com>, <four-seasons-washington.com> and <4seasons-hotel.com> are registered with PSI-USA, Inc. dba Domain Robot.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2011. On June 3, 2011, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On June 6, 2011, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names 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 June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2011.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 5, 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 Complainant has long been recognized as one of the leading luxury hotel and resort management companies in the world. Currently, the Complainant manages and operates 85 Four Seasons hotels and resorts in 35 countries.

The Complainant owns not only federal trademark registrations for the FOUR SEASONS mark in connection with its hotel and resort services in the United States and in the European Union.

Various domain names that incorporate the FOUR SEASONS trademark are also owned by the Complainant, including <fourseasons.com>.

The disputed domain names were registered between May and July 2009.

The Panel accessed the disputed domain names on July 14, 2011, when they were linked to lodge booking webpages.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain names are confusingly similar to the Complainant’s well-known and successful trademark FOUR SEASONS. The Complainant has obtained trademark registrations for its FOUR SEASONS brand in various jurisdictions throughout the world, including the United States Patent and Trademark Office and foreign jurisdictions. The generic top level domain indicator “.com” cannot be taken into consideration when judging confusing similarity. Moreover, the inclusion of hyphens between the words in disputed domain names does not distinguish disputed domain names from the Complainant’s marks. All but two of disputed domain names consist solely of the Complainant’s famous mark and a geographic location in which one of the Complainant’s hotels is located – a use that “adds to rather than diminishes the likelihood of confusion”. The other disputed domain names consist of terms that are confusingly similar to the Complainant’s mark, coupled with descriptive terms, including an expression that the Complainant regularly uses in connection with the hotels and resorts it manages.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark or a confusingly similar variant as part of a domain name. There is no evidence that the Respondent ever has been known by the disputed domain names. The Respondent registered the disputed domain names with the clear expectation that its use thereof would cause traffic to be directed to its hotel reservation websites so that it could profit from such use.

(iii) The disputed domain names were registered and are being used in bad faith. The Complainant’s FOUR SEASONS trademark has international recognition. It is therefore inconceivable that the Respondent was unaware of the trademark when it registered the disputed domain names. The Respondent’s downloading of photographs and property descriptions from the Complainant’s website and use thereof on many of its sites is further evidence that when it registered the disputed domain names, the Respondent was aware of the fame of the Complainant’s trademark. The Respondent’s unauthorized registration and use of confusingly similar variants of the Complainant’s trademark as parts of infringing domain names to divert Internet users to websites offering goods and services of competitors and the Respondent’s unauthorized downloading, display and use of photographs and property descriptions from the Complainant’s website are further evidence of bad faith. Moreover, the Respondent is a serial cybersquatter who, previously, has been forced to transfer several infringing domain names relating to other hotel and resort companies where his use and registration of the domain names in question was also found to be in bad faith. The Respondent’s general pattern of conduct is enough to establish the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Exhibits F and G to the Complaint demonstrate registrations of the FOUR SEASONS trademark in the United States and in the European Union.

The trademark FOUR SEASONS is wholly encompassed within all the disputed domain names. The substitution of the word "four" by the correspondent numeral "4" in two of the disputed domain names is irrelevant.

The disputed domain names also include geographical indications of places where the Complainant operates (<beverly-wilshire-4-seasons.com>, <four-seasons-atlanta.com>, <four-seasons-austin.com>, <four-seasons-aviara.com>, <four-seasons-boston.com>, <four-seasons-chicago.com>, <four-seasons-edinburgh.com>, <four-seasons-houston.com>, <four-seasons-hualalai.com>, <four-seasons-jackson-hole.com>, <four-seasons-las-vegas.com>, <four-seasons-new-york.com>, <four-seasons-palm-beach.com>, <four-seasons-palo-alto.com>, <four-seasons-scottsdale.com>, <four-seasons-st-louis.com> and <four-seasons-washington.com>) or generic terms commonly used in the lodge business (<four-seasons-inn.com> and <4seasons-hotel.com>).

Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).

Finally, the inclusion of other descriptive terms ("inn" and "hotel") and of hyphens between the words do not distinguish the disputed domain names from the Complainant’s mark.

As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain names.

The present record provides no evidence to demonstrate the Respondent intent to use or to make preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the Respondent is using the disputed domain names to profit through hotel reservations that could be done directly with the Complainant. In some cases, the Complainant's prospective clients are also potentially diverted to other hotel offers.

Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The registration of the disputed domain names occurred in 2009, when the Complainant’s trademark FOUR SEASONS was already well-known worldwide in the lodging business. Therefore, it is not feasible that the Respondent could ignore the Complainant’s reputation and business when it registered the disputed domain names.

Moreover, the use of the disputed domain names to intermediate hotel reservations and the reproduction of photos and contents describing the Complainant's hotels make clear that the adoption of the words “four seasons” or “4-seasons” to compose the disputed domain names were not a coincidence.

Therefore, in doing so, the Respondent:

(i) creates a likelihood of confusion with the Complainant’s trademark;

(ii) potentially obtains revenues from this practice; and

(iii) deprives the Complainant from directly selling its services to prospective clients who are clearly looking for its hotels.

Furthermore, the use of the disputed domain names may also potentially divert the Complainant's clients to competing services.

The Respondent also presents an undeniable pattern of conduct in the unauthorized registration of other hotel related domain names.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain names were registered and are being used in bad faith, satisfying the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <beverly-wilshire-4-seasons.com>, <four-seasons-atlanta.com>, <four-seasons-austin.com>, <four-seasons-aviara.com>, <four-seasons-boston.com>, <four-seasons-chicago.com>, <four-seasons-edinburgh.com>, <four-seasons-houston.com>, <four-seasons-hualalai.com>, <four-seasons-inn.com>, <four-seasons-jackson-hole.com>, <four-seasons-las-vegas.com>, <four-seasons-new-york.com>, <four-seasons-palm-beach.com>, <four-seasons-palo-alto.com>, <four-seasons-scottsdale.com>, <four-seasons-st-louis.com>, <four-seasons-washington.com> and <4seasons-hotel.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Dated: July 19, 2011

 

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