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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amanresorts Limited and Amanresorts International Pte Ltd v. Jainendra Baghel

Case No. D2015-0161

1. The Parties

The Complainants are Amanresorts Limited of Hong Kong, China and Amanresorts International Pte Ltd of Singapore ( “the Complainant”).

The Respondent is Jainendra Baghel of New Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <amankorahotels.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2015. On February 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 2, 2015, the Registrar 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 February 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2015.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 5, 2015. 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 part of the Amanresorts group of companies, and prior to 1999 the majority of its business was conducted through Amanresorts Limited of Hong Kong, China, whereas in 1999 and thereafter, it conducted its business mainly through Amanresorts International Pte Ltd. The Amanresorts group of companies owns and manages 28 luxury hotels around the world. Amongst these hotels is the “Amankora” hotel in Bhutan. The name “Amankora” was first used by the Complainant in 2004, when the Complainant’s Bhutan resort opened. The Complainant has registered the trademark “Amankora” (the “AMANKORA marks”) in many jurisdictions around the world, including Asia. The Complainant provided evidence of several trademark registrations for its AMANKORA marks in Annex D to the Complaint. The evidence shows that the Complainant’s registrations of the AMANKORA marks began at least as early as 2006. Additionally, the Complainant owns domain names based on the AMANKORA marks, including the domain names “amankora.com” and “amankora.net.”

The Respondent is Jainendra Baghel of New Delhi, India. The Disputed Domain Name <amankorahotels.com> was registered on January 6, 2014. It resolved to a website which was selling and promoting stays in the Complainant’s “Amankora” hotel in Bhutan. After communicating with the Complainant, the Respondent took down the website at the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to the Complainant’s AMANKORA marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Where a party fails to present evidence of facts in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent 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

To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant’s trademark.

As stated above, the Complainant is the registered owner of numerous AMANKORA marks in a number of jurisdictions. The record shows that the Complainant owned rights in the AMANKORA marks before the Disputed Domain Name registration. The Complainant submits that it has engaged in extensive use and promotion of its AMANKORA marks and that the mark has become well-known in relation to hotel services in Asia and throughout the world. The Complainant submitted several media articles as evidence of this in Annex E to the Complaint. In light of the foregoing and the Respondent’s failure to provide rebuttal evidence, the Panel finds that the AMANKORA marks are distinctive and well-known by the public as indicating the Complainant’s services, and that the Complainant has rights in the AMANKORA marks.

The Complainant asserts that the Disputed Domain Name is confusingly similar to its AMANKORA marks. The Panel agrees. The Disputed Domain Name incorporates the AMANKORA mark in its entirety. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, b/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005‑1249; Research in Motion Limited. v. One Star Global LLC, WIPO Case No. D2009-0227 (“In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Complainant further asserts that the term “hotel” is generic and descriptive of its business, thus inclusion of the term “hotel” to the AMANKORA marks does not serve to distinguish the Disputed Domain Name. The Panel agrees. The inclusion of generic content is insufficient to overcome a finding of confusion, particularly where, as here, the dominant feature of the Disputed Domain Name is a well-known mark. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. Further, the risk of consumer confusion is particularly great where the term describes a central aspect of the Complainant’s business, as in this case. Such a combination “in all likelihood heightens the confusion.” The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931; see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373. In this case, adding the generic term “hotel” to the AMANKORA marks likely heightens consumer confusion because the Complainant is well-known for its hotel services.

In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered marks and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “Amankora.” A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d. d. v. WACHEM do.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

(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 the 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 purpose 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 or service on your website or location.

As discussed above, the Complainant’s AMANKORA marks are distinctive and well-known. Given this, the Panel finds that the Respondent was likely aware of or should have known of the Complainant’s rights in the AMANKORA marks when registering the Disputed Domain Name. The record shows that the Complainant owns trademark rights in the AMANKORA marks that predate the creation of the Disputed Domain Name and that the Disputed Domain Name contains the Complainant’s mark in its entirety. Further, there is no evidence that the Respondent has any rights in the term “Amankora.” Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that the Disputed Domain Name was chosen with the Complainant’s mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. The Panel finds that the Respondent registered the Disputed Domain Name in bad faith.

The Complainant submits that the Respondent is using the Disputed Domain Name in bad faith. The Panel agrees. There is no evidence that the Respondent has used or intends to use to the Disputed Domain Name for purposes of a bona fide offering of goods and services over the Internet. As noted in Section 4 above, the website at the Disputed Domain Name was used to sell and promote stays at the Complainant’s “Amankora” hotel in Bhutan. The Panel agrees with the Complainant where it states that such use is in bad faith as the Respondent would derive financial gain from the erroneous impression made on Internet users that the Complainant is associated with the website at the Disputed Domain Name. Even though there is currently no content posted under the Disputed Domain Name, the Panel notes that passive holding does not prevent a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Furthermore, the Panel notes that paragraph 4(b)(i) of the UDRP provides that “the following circumstances [. . .] shall be evidence of the registration and use of a domain name in bad faith: [. . .] 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 [. . .] for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” There is evidence which shows that the Respondent has registered the Disputed Domain Name for the purpose of reselling it to the Complainant or its competitor at a price which is higher than their registration fees. In particular, in Annex H to the Complaint, the Complainant submitted evidence of the Respondent’s attempt to sell the Disputed Domain Name to the Complainant for “USD 6000,” a price much greater than the out-of-pocket cost to register the Disputed Domain Name. Thus, the Panel finds that the Respondent has registered or acquired the Disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name under paragraph 4(b)(i) of the Policy.

In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Name <amankorahotels.com> be transferred to the Complainant, namely Amanresorts International Pte Ltd.

Kimberley Chen Nobles
Sole Panelist
Date: March 19, 2015

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