World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viceroy Cayman Ltd. v. Anthony Syrowatka

Case No. D2011-2118

1. The Parties

Complainant is Viceroy Cayman Ltd. of Grand Cayman, Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by Neal, Gerber & Eisenberg LLP, United States of America.

Respondent is Anthony Syrowatka of Bali, Indonesia, appearing pro se.

2. The Domain Names and Registrar

The disputed domain names <viceroybeijing.com>, <viceroycambodia.com>, <viceroychina.com>, <viceroyhongkong.com>, <viceroykunming.com>, <viceroyshanghai.com>, <viceroysingapore.com> and <viceroythailand.com> are registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 5, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On December 6, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. The Response was filed with the Center on December 27, 2011.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 9, 2012. 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.

On January 17, 2012, Complainant submitted a supplemental filing (“Reply in Support of the Complaint”). On January 18, 2012, the Panel issued Procedural Order No. 1, declining to admit or consider Complainant’s un-requested supplemental filing, and requesting Complainant to submit documents, including affidavits, allowing the Panel to infer that Complainant has rights in the VICEROY mark. The Panel also established a deadline for Respondent to submit its comments on Complainant's submission in compliance with the Panel Order. Lastly, the Panel reset the deadline to issue the decision on the merits to January 30, 2012.

On January 20, 2012, in reply to the Panel Order, Complainant submitted an affidavit signed by Ms. Pierson, Chief Financial Officer of the Viceroy Hotel Group, with annexes. Respondent did not send any substantial comments on Complainant's submission.

4. Factual Background

Viceroy Hotels L.L.C is under 100 % common ownership with Complainant, and, as Complainant, is a member of the Viceroy Hotel Group. Viceroy properties, hotels and resorts are located in Santa Monica, Palm Springs, Snowmass and Miami in the United States of America, Abu Dhabi and Anguilla. The group is currently developing VICEROY properties in the Maldives and in Bodrum, Turkey.

In July 2008 Viceroy Hotels L.L.C. assigned all right, title and interest in and to the VICEROY mark outside of the United States of America to its affiliate Kor Cayman Ltd., a Cayman Islands company. On September 14, 2009, Kor Cayman Ltd. changed its name to Viceroy Cayman Ltd. (Complainant).

Through its affiliates Viceroy Hotels L.L.C., Kor Cayman Ltd. and Viceroy Cayman Ltd., the Viceroy Hotel Group owns and controls numerous trademark registrations and applications for the VICEROY mark, inter alia: Thailand registration Nos. BOR35729, BOR36632 and BOR35736, and Thailand applications Nos. 787821, 787822 and 787823; Chinese registration No. 5504392 and application No. 9290023; Hong Kong, China application No. 301842589; Singapore registration Nos. T0714173I, T0714178Z and T0714179H, and Cambodian registration No. 2754007.

On February 26, 2011, Respondent registered the <viceroycambodia.com>, <viceroysingapore.com>, <viceroythailand.com> and <viceroyhongkong.com> disputed domain names.

On March 18, 2011, counsel for the Viceroy Hotel Group sent Respondent a letter requesting transfer of the <viceroycambodia.com>, <viceroysingapore.com>, <viceroythailand.com> and <viceroyhongkong.com> disputed domain names.

On March 23, 2011, Respondent replied to Complainant’s letter of March 18, 2011, stating that the disputed domain names make no specific mentions of hotels and are generic. Respondent stated that it would transfer the disputed domain names for USD 10,000 per domain name to compensate for his estimated expenses.

On May 5, 2011, Complainant's counsel responded to Respondent via email, stating that such demand exceeded by far the cost of registration and maintenance, which evidenced bad faith, and again requested the transfer of the disputed domain names. On May 6, 2011 Respondent again demanded USD 10,000 per domain name transfer.

On July 17, 2011, Respondent registered the <viceroybeijing.com>, <viceroychina.com>, <viceroykunming.com> and <viceroyshanghai.com> disputed domain names.

On August 9, 2011, Respondent asked by email to Complainant whether the Viceroy Hotel Group had any rights in the VICEROY mark in China. On August 18, 2011, the Complainant sent a new email to Respondent, demanding transfer of all of the disputed domain names. On the same day, Respondent asked Complainant how much it was offering for the disputed domain names.

The Center’s lookout visit to the websites at the disputed domain names conducted on December 7, 2011 resulted in a “403 error” or status code 1. The Panel’s independent visit conducted on January 16, 2012 to the same websites had similar results.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

Except for the irrelevant addition of “.com”, the disputed domain names prominently feature the VICEROY name in connection with the names of jurisdictions in which the Viceroy Hotel Group owns active trademark filings (and in most cases registrations). The disputed domain names are therefore identical or confusingly similar to the VICEROY mark.

Respondent cannot establish a right to, or legitimate interest in, the disputed domain names. It has no legal relationship with Complainant thorough which it can claim any rights to the disputed domain names nor has Complainant consented to Respondent's registration of the disputed domain names. Respondent is not referred to or commonly known by the disputed domain names. Given the renown of the Viceroy name in connection with hotel resort and restaurant services, Respondent would not have chosen the disputed domain names unless it was seeking to intentionally trade on the VICEROY mark.

Respondent has used the disputed domain names in bad faith. By registering and maintaining the registration of the disputed domain names that are identical to the VICEROY mark, Respondent has prevented Complainant from registering the VICEROY mark specifying a development in Cambodia, Singapore, Thailand, Hong Kong, China, Beijing, Kunming, or Shanghai as a “.com” domain name. Respondent registered several of the disputed domain names after explicitly having been put on notice of Complainant's international trademark rights, which further indicates bad faith.

In addition, Respondent has repeatedly demanded at least USD 10,000 per domain name to transfer the disputed domain names, an amount in excess of the cost of registration or maintenance of the disputed domain names, which also evidences Respondent's bad faith. Respondent's failure to host a website at any of the disputed domain names is a further indicia of Respondent’s bad faith.

B. Respondent

In its Response, Respondent contends the following:

The term “viceroy” is a dictionary word. The Viceroy hotel group is only one of hundreds of companies around the world using the name “viceroy”, a very common name for a company or business. An example of this would be the Viceroy cigarette company. When this term is combined in domain names with names of countries and cities and without mention of Complainant’s trademark classes of hotels, resorts, restaurants or bars in the disputed domain names, it makes these domain names completely generic.

The Viceroy Hotel Group admits to only holding the trademark under the classes of hotel and resort services and restaurant and bar services, and that it is promoting the VICEROY brand as a hotel. Respondent is not using the disputed domain names for any of these purposes. Whilst the Viceroy Hotel Group has taken the time and money to obtain trademarks for VICEROY in several countries, they seem completely disinterested in registering the disputed domain names for these locations, which is a far simpler than registering a trademark.

Respondent is skeptical as to the trademarks and domain names Complainant claims to own, as it appears that almost each domain name or trademark seems to be registered in a different company name (Kor Cayman Ltd., Viceroy Cayman Ltd., Viceroy Hotels L.L.C., Kor Hotel Management LLC). Respondent is unaware of the internal politics, ownership or problems that could exist within those companies.

Respondent registered the disputed domain names in February 2011 because of the “viceroy” name and its implication of luxury and regalness from its dictionary definition, with the idea to create a luxury group of country and city website guides. Respondent is not in any way using this site to profit from the Viceroy Hotel Group trademarks via pay-per-click or any other means. Respondent currently is not hosting anything on these disputed domain names as the websites are currently under construction.

Respondent is well versed in the area of Asia guide websites as it owns and operates several guide websites including “www.spaguide.asia”, “www.villaguide.asia”, “www.foodguide.asia”, all registered years prior to registering the disputed domain names. These guide websites are currently under construction but almost completed. Once these three websites are completed Respondent will move on to developing similar website concepts for the disputed domain names.

Respondent in no way had any intentions to buy the disputed domain names to sell them to the Viceroy Hotel Group. Complainant contacted Respondent out of the blue asking Respondent to transfer the disputed domain names to them. Respondent does not believe that Complainant has any legal rights to the disputed domain names. Respondent was not profiting financially and does not want anything to do with Complainant’s trademarks. If Complainant wishes Respondent to abandon its dreams for these disputed domain names, it will be happy to sell the disputed domain names to Complainant. Since Respondent has taken the time to think of a concept and use for the disputed domain names, check the availability of the disputed domain names, register and host them, Respondent believes that its offer was fair as it would be abandoning all this. If Complainant is not interested in purchasing them at the price set by Respondent, Respondent will continue to develop them as country and city guide websites.

Respondent is not defiantly targeting the Viceroy Hotel Group and in fact does not want to have anything to do with it. Complainant is in fact the one harassing and bullying Respondent into transferring the disputed domain names to Complainant, despite the fact that during the correspondence with Complainant Respondent has been polite.

Complainant is also not commonly known by the disputed domain names as they have no companies or business in these countries nor have they ever suggested or promoted that they have.

Respondent is not interested in trading on Complainant’s definition of the mark and does not intend to use the disputed domain names for hotel, resort, restaurant or bar related business. Respondent is not using the disputed domain names in bad faith for pay-per-click or to promote other websites or for businesses related to Complainant’s trademarks.

Respondent requests the Panel to make a finding of reverse domain name hijacking as Respondent fears that Complainant is trying to take the disputed domain names away from Respondent and turn them into pay-per-click websites, not using them for their claimed intended use to promote the VICEROY trademark.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

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

(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

Complainant has evidenced that Viceroy Hotels L.L.C. owns numerous registrations for the VICEROY trademark in many countries. On January 20, 2012, in reply to the Panel’s Order No. 1 issued on January 18, 2012, Complainant submitted an affidavit by Ms. Pierson, Chief Financial Officer of the Viceroy Hotel Group, explaining the legal relationship between the trademark owner Viceroy Hotels L.L.C. and Complainant Viceroy Cayman Ltd. (and its predecessor in name Kor Cayman Ltd.), all members of the Viceroy Hotel Group. See “Factual Background” above. Respondent did not send any substantial comment on Complainant's submission. Therefore, the Panel is satisfied that Complainant has rights in the VICEROY trademarks through the assignment of trademark rights from Viceroy Hotels L.L.C. to Kor Cayman Ltd., the predecessor in name of Complainant.

All of the disputed domain names comprise the VICEROY trademark, just adding the names of countries or cities and the gTLD “.com”. It is well established that the addition in a domain name of descriptive or generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9: “Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name […].” See also InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (finding that the mere addition of the word “India” in the <indiainfospace.com> domain name was not sufficient to distinguish it from the complainant’s trademarks since such addition appeared to be made most likely to induce Internet users to believe that they are connecting their computers to the site of an Indian affiliate of the complainant or to some kind of “Indian operation” of the complainant.)

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s VICEROY trademarks.

B. Rights or Legitimate Interests

Complainant contends that Respondent cannot establish a right to, or legitimate interest in the disputed domain names, that Respondent has no legal relationship with Complainant through which it can claim any rights to the disputed domain names, and that Complainant has not consented to Respondent's registration of the disputed domain names. Complainant adds that Respondent is not referred to or commonly known by the disputed domain names. Finally, Complainant contends, given the renown of the Viceroy name in connection with hotel resort and restaurant services, Respondent would not have chosen the disputed domain names unless it was seeking to intentionally trade on Complainant's VICEROY mark.

For its part, Respondent claims that “viceroy” is a common, dictionary word that, when combined with a geographic name, gives a generic expression. Respondent also contends that it registered the disputed domain names in February 2011 because of the “viceroy” name and its implication of luxury and regalness from its dictionary definition, with the idea to create a luxury group of country and city website guides. Respondent adds that it is well versed in the area of Asia guide websites as it owns and operates several guide websites including “www.spaguide.asia”, “www.villaguide.asia”, “www.foodguide.asia”. These guide websites are currently under construction but almost completed. Once these three websites are completed Respondent will move on to developing similar website concepts for the disputed domain names.

The Panel is not convinced that the disputed domain names are “generic”, as contended by Respondent. The term “viceroy” may be generic or descriptive in respect of a high rank official with a title granted by the monarch or emperor of a kingdom or empire with colonial possessions, but it does not appear to be generic or descriptive when used in combination with names of cities or countries, as in the disputed domain names. Conceding - as contended by Respondent - that the word “viceroy” may have some “regalness” of its own, the fact is that it is a trademark registered in and owned by Complainant in certain countries and for certain international classes. The fact that third parties – like a well-known cigarette company - may also have rights in the VICEROY mark in other countries and/or for other international classes does not help in making Respondent's interest in the disputed domain names legitimate.

In any case, Respondent has not used any of the disputed domain names as a generic expression or in its descriptive sense of a high rank colonial officer. In fact Respondent has not used any of the disputed domain names at all. See footnote 1 above. Respondent's contention that he intends to use the disputed domain names in corresponding websites operating as cities and countries guides does not offer any plausible explanation for his choice of the term “viceroy” as the dominant part of each disputed domain name.

Respondent does own and operate websites dedicated to cities and countries guides at domain names different from the disputed domain names. However, these websites are still under construction, which does not make the alleged preparations for using the disputed domain names “demonstrable”, as required by Policy paragraph 4(c)(i). In any case, the cities and countries guides websites operated by Respondent appear to be conceived for Internet users interested in tourism, restaurants and resorts, the same kind of public to which Complainant is addressing its hotel and resort services under the VICEROY mark.

Respondent’s offer to transfer each of the disputed domain names to Complainant for USD 10,000 each, at a price well in excess of the presumable costs of registration and maintenance of the disputed domain names, cannot be evidence of any right or legitimate interest in the disputed domain names, but instead is evidence of bad faith registration and use. See below.

In sum, the Panel concludes that Complainant made out its case that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Before Respondent registered the disputed domain names <viceroycambodia.com>, <viceroysingapore.com>, <viceroythailand.com> and <viceroyhongkong.com>, Complainant's hotels and resorts existed in the United States of America and elsewhere, and Complainant's VICEROY mark was registered in numerous jurisdictions, including in Thailand, Singapore and Cambodia. Also, articles on Complainant's Viceroy hotels and resorts had appeared on various international magazines dedicated to leisure before the registrations of those domain names were made.

On July 17, 2011, after having received Complainant's letter of March 18, 2011, Respondent registered the <viceroybeijing.com>, <viceroychina.com>, <viceroykunming.com> and <viceroyshanghai.com> disputed domain names.

All this means that Respondent most likely knew or must have known of Complainant's VICEROY trademark, properties, and hotel and resort services before the registration of the disputed domain names. In other words, Respondent registered the disputed domain names with Complainant's VICEROY mark in mind, i.e. in bad faith.

Given that Respondent demanded USD 10,000 per domain name transfer to Complainant, the Panel concludes that Respondent registered the disputed domain names primarily for the purpose of selling their registrations to Complainant, who owns the VICEROY marks, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names, which is a circumstance of registration in bad faith pursuant to Policy paragraph 4(b)(i).

Respondent contends that it intends to operate websites at the disputed domain names dedicates to cities and countries guides. However, as seen above, the fact is that it did not use the disputed domain names except for demanding Complainant an abusive price for the transfer. This kind of offers has long been held to constitute a use, and indeed a use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (“Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy.)

The Panel concludes that the disputed domain names were registered and are being used in bad faith.

D. Reverse Domain Name Hijacking

Given that Complainant has proven Respondent's lack of rights or legitimate interests and bad faith registration and use of the disputed domain names, the Panel does not make a finding of reverse domain name hijacking.

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 <viceroybeijing.com>, <viceroycambodia.com>, <viceroychina.com>, <viceroyhongkong.com>, <viceroykunming.com>, <viceroyshanghai.com>, <viceroysingapore.com> and <viceroythailand.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Dated: January 30, 2012


1 According to the Wikipedia, “[i] n the HTTP protocol used on the World Wide Web, 403 Forbidden is an HTTP status code returned by a web server when a user requests a web page or media that the server does not allow them to. In other words, the server can be reached, but the server declined to allow access to the page. This response is returned by the Apache web server when directory listings have been disabled.”

 

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