WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swissôtel Management GmbH v. BellNames Privacy Protection Service / chen guofu / chen haiying
Case No. D2012-1521
1. The Parties
The Complainant is Swissôtel Management GmbH of Kloten, Switzerland, represented by E. Blum & Co. AG, Switzerland.
The Respondent is BellNames Privacy Protection Service of Colorado Springs, Colorado, United States of America / chen guofu of Putian, China / chen haiying of Fuzhou, China.
2. The Domain Name and Registrar
The disputed domain name <swissotelgrand-shanghai.com> is registered with GetYourDotNet.com Inc. aka 3349608 Canada Inc. dba GetYourDotInfo.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 27, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2012, the Registrar 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 Complainant on July 31, 2012, providing the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint, and in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 31, 2012.
On August 1, 2012, the Center received three email communications from the Respondent chen guofu, stating “Hi, i am not the owner of this domain. you can check the whois of this domain. Thanks.” The Center acknowledged receipt of these email communications and advised as to how the Respondent could respond to the Complaint.
Following these email communications, the Center noted on August 3, 2012, that the WhoIs records for the disputed domain name had changed to reflect “chen haiying” as the registrant. The Center requested the Registrar to clarify this change and requested the Registrar to restore the original registrant and contact information. On August 6, 2012, the Registrar indicated that the disputed domain name remained under Registrar lock, and had not in fact been transferred to a new registrant, but remained with the same registrant despite the change in registrant information. On August 10, 2012, the Center requested the Parties to submit any comments they may have had on the issue. On August 13, 2012, the Complainant requested that “chen haiying” be included in the proceeding as a second Respondent. On August 13, 2012, the Registrar confirmed that the original registrant and contact information would be restored and that the disputed domain name would remain locked.
The Center verified that the Complaint together with the amended Complaint and 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”).
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 August 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 19, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on September 20, 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.
4. Factual Background
The Complainant operates the SWISSÔTEL brand of hotels and is the owner of a number of trade mark registrations for its SWISSÔTEL word mark, including Community Trade Mark 002285567 filed in July 2001. The Complainant also operates a website at “www.swissotel.com” which in particular features its “Swissôtel Grand Shanghai Hotel” and it also operates a website for this hotel at “www.swissotelgrandshanghai.com”.
The disputed domain name was registered on March 31, 2012.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to its SWISSÔTEL word mark on the basis that it fully incorporates the mark and additionally contains elements that are generic and non-distinctive, namely the words “grand” and the geographic place name “Shanghai”.
The Complainant further submits that it has not authorized the Respondent to use its SWISSÔTEL mark, has no business relationship with the Respondent and that the use that the Respondent is making of its mark is neither a legitimate noncommercial use nor a fair use of the disputed domain name.
It says that the use by the Respondent of its mark in the disputed domain name to confuse Internet users and to divert them to a website entitled “Luxury Hotels Blog” containing links to other hotel, product or promotional sites, is not legitimate and amounts to use in bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions, save for the Respondent chen guofu, stating in an email communication “Hi, i am not the owner of this domain. you can check the whois of this domain. Thanks.”
6. Discussion and Findings
The Panel finds that the two Respondents were properly included in this proceeding following the change in WhoIs records and the Registrar’s subsequent confirmation as noted above.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns trade mark rights in its SWISSÔTEL word mark under Community Trade Mark registration 002285567. The disputed domain name contains the additional elements “shanghai” and “grand” and a hyphen, but these elements either individually or in combination do not distinguish the disputed domain name from the Complainant’s distinctive SWISSÔTEL mark, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SWISSÔTEL mark. Previous UDRP panels have taken a similar view to the incorporation of generic or geographical terms into a domain name in combination with a distinctive trade mark such as the SWISSÔTEL mark, as is set out at paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Therefore the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Complainant’s SWISSÔTEL mark and that its use of the disputed domain name to resolve to a website containing links to other hotels and services unrelated to the Complainant is for the reasons set out below illegitimate and in bad faith. Accordingly, the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in March 2012, some 11 years after the Complainant filed its Community Trade Mark for SWISSÔTEL and 5 years after the Complainant registered its domain name <www.swissotelgrandshanghai.com> for the website of its Shanghai based hotel. In these circumstances, and considering the nature of the website at the disputed domain name as described below, it seems much more than mere co-incidence that the Respondent chose to register a domain name that was identical to the Complainant’s domain name except for the inclusion of a hyphen between the expressions “swissotelgrand” and “shanghai”. The Panel therefore infers that the Respondent registered the disputed domain name knowingly and in bad faith.
The website at the disputed domain name is entitled “Luxury Hotels Blog” and contains links to hotels and advertisers’ websites not associated with or authorized by the Complainant. The links do not appear to be automatically generated but rather to have been chosen by the Respondent to include within its “luxury hotels blog”. In the absence of any other explanation, the Panel infers in the circumstances that the Respondent has for commercial gain sought to divert Internet users to this website by blatantly creating a likelihood of confusion with the Complainant’s SWISSÔTEL mark and domain name in terms of paragraph 4(b)(iv) of the Policy. This view is only reinforced by the comparatively recent registration of the disputed domain name and creation of the website to which it resolves.
Overall the case appears to be a classic case of cybersquatting, and the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element of the Policy.
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 name <swissotelgrand-shanghai.com> be transferred to the Complainant.
Dated: September 30, 2012