WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CDL Hotels International Ltd. v DNSDEALER.COM
Case No. D2000-0958
1. The Parties
The Complainant is CDL HOTELS INTERNATIONAL LTD., a company incorporated in the Cayman Islands and having its registered office at Great Eagle Centre, 23 Harbour Road, Wanchai, Hong Kong (SAR), China.
The Respondent is DNSDEALER.COM located at 3272/119 Ladpraw 130rd, Bangkabi, Bangkok, 10240, Thailand.
2. The Domain Name and Registrar
The dispute concerns the domain name <cdlhotel.com> registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
On August 4, 2000, the Complainant submitted a complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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). On August 7, 2000, it submitted the hardcopy of the same to the WIPO Center.
On August 11, 2000, the WIPO Center acknowledged receipt of the said complaint.
On August 15, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On August 17, 2000, the Registrar sent a confirmation to the WIPO Center that it was the Registrar of the said domain name and that the registrant was the Respondent.
On August 22, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the said Notification) by post/courier, facsimile and e-mail to the Respondent and transmitted electronically copies of the said documents to the Complainant, the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as August 22, 2000, and required the Respondent to submit a Response to the complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date i.e. September 10, 2000. On September 12, 2000, the WIPO Center sent the Notification of Respondent Default to the Respondent and copied it to the Complainant. As the Complainant had elected to have the dispute decided by a single-member panel (the Panel) in its complaint, on September 26, 2000, the WIPO Center appointed Mr. Hariram Jayaram to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel. On the same day, the WIPO Center sent to the Panel the Transmission of Case File to Administrative Panel, with an electronic version of the Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibilities under the Rules. The Panel will hereby issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules, the Supplementary Rules and any principles of law which the Panel deems to be applicable.
4. Factual Background
In the complaint, the Complainant claims ownership of the trademarks CDL and CDL HOTELS. The Complainantís parent company is the Singapore-based City Developments Limited, the originator of the CDL trademark. It is Singaporeís largest property developer and has used the CDL mark extensively around the world for 37 years. City Developments Limited is active in the development and construction of residential and commercial real estate, including shopping malls, bars, restaurants and other industrial and hotel properties. It is a publicly listed company which is traded on the Singapore Stock Exchange. City Developments Limited was established in 1963 and is one of Singaporeís top ten companies in terms of net profit, according to the Singapore 1000 list. In 1989, its hotel operations were spun off to the Complainant which was incorporated in that year. The Complainant has used the trademark CDL HOTELS since its incorporation. It is a publicly listed company on the Hong Kong and Singapore Stock Exchanges, with more than 2 billion shares in circulation. It owns its hotel portfolio through its majority-owned subsidiary Millennium & Copthorne Hotels plc, which has been traded on the London Stock Exchange since 1995. Its subsidiaries include not only Millennium & Copthorne Hotels plc, but also CDL Hotels USA, and CDL Hotels New Zealand Limited which has registered four trademarks for the CDL logo with the New Zealand authorities. CDL Hotels New Zealand Limited is traded on the New Zealand Stock Exchange. It owns CDL Investments New Zealand Limited, a company with over 170 million shares traded on the New Zealand Stock Exchange. Collectively, this family of companies is one of the top 15 hotel owners and operators in the world. The Complainant and its subsidiaries own or control hotel properties in the United States, the United Kingdom, France, Germany, Singapore, Australia, New Zealand, Malaysia, Indonesia, Philippines, Hong Kong (SAR) and Taiwan.
The financial and the real estate communities are very familiar with the trademarks CDL and CDL HOTELS through these companiesí substantial real estate holdings and their publicly traded stock. Through extensive and continuous usage, the trademarks CDL and CDL HOTELS have become associated with the Complainant and its related companies. There have been many articles in the financial and trade papers referring to CDL Hotels. Apart from those stockholders who own shares in this family of companies, many travellers have stayed in the hotels associated with the trademarks CDL and CDL HOTELS in various parts of the world. The letters CDL may not typically be the brand name to be found on the Complainantís hotels, many of which are branded as "Millennium" or "Copthorne" Hotels, but from the samples of advertising literature the public will appreciate the Complainantís connection to these properties. The advertising literature proclaims that the hotels are a member of the CDL Hotels Group. A person viewing the Millennium & Copthorne Hotelsí comprehensive guide of hotels and resorts would be able to see from the cover that all the listed Millennium &Copthorne properties are properties of the Complainant.
This family of companies has used the trademarks CDL as well as the trade names with the letters CDL on the internet. The Complainant has an active website based in Singapore, with the domain name <cdlhotels.com.sg>. CDL Hotels New Zealand Limited has an active website which uses the domain name <cdlhotels.co.nz>. City Developments Limited operates a website at <cdl.com.sg>. Each of these sites makes reference to the members of this family of companies.
In view of its present extensive holdings the Complainant sought to register the domain names <cdlhotels.com> and <cdhotel.com> with Network Solutions, Inc. It found that the domain name <cdlhotel.com> was already registered by the Respondent.
The Complainant has ascertained that in the records of Network Solutions, Inc., the administrative contact of the Respondent is Somsak Sooksripanich of 3272/119 Ladpraw 130rd, Bangkabi, Bangkok 10240, Thailand. The name of the Respondent also appears as the domain name <dnsdealer.com> registered by the said Somsak Sooksripanich with Network Solutions, Inc. Somsak Sooksripanich is therefore responsible for the Respondentís activities, including the registration of <cdlhotel.com>
The Respondent is in the business of buying domain names and offering them for sale. A search of the database of Network Solutions, Inc. reveals that the Respondent has registered more than 50 domain names. These include multiple variations of world-famous marks such as <louisvuittons.com>, <louis-vuitton.com> and <vuittonlouis.com> as well as <kirinbeverage.com>.
When one types the domain name <dnsdealer.com> he is routed automatically to a website, <buysellthai.com>. The domain names <dnsdealer.com> and <buysellthai.com> are interconnected. This may be seen from the fact that <buysellthai.com> is registered by "thaicenter.net" which in turn is registered by SOOKSRI which has the same address as that of the Respondent. Again, the administrative contact of <buysellthai.com> has the same address as the Respondent. A link on the front page of <buysellthai.com> provides the viewer with a list of domain names for sale. At the top of this list is an invitation to contact "Somsak" at (662) 736-5271, the same telephone number listed for Somsak Sooksripanich in the Respondentís original registration of the domain name <cdlhotel.com>. The conclusion from these facts is that the same individual who operates the Respondentís business as DNSDEALER.COM also owns the website <buysellthai.com> the automatic routing destination for <dnsdealer.com>. Therefore, all activities occurring on <buysellthai.com> may be imputed to the Respondent and would be indicative of the Respondentís business practices and motives for registering domain names.
A visitor to <buysellthai.com> is offered a catalog of domain names available for sale. Adjacent to some of the listed domain names are sales prices. The domain names in question, <diorparis.com>, <esteeparis.com>, <chanelparis.com, <bkkpost.com>and <yahooth.com> are world famous marks of others. <buysellthai.com> offers descriptions of the companies whose domain names are offered for sale. The domain names listed on the <buysellthai.com> catalog are registered by a series of different ".com" owners, which list Somsak Sooksripanish as the administrative contact and/or have the same address as the Respondent. A second link from <buysellthai.com> shows more well-known domain names for sale, such as <microsoftthai.com>, <versusversace.com> and <lacostes.com>.
The domain name <cdlhotel.com> reveals a single, temporary page with the words, "Welcome to the parked homepage of www.cdlhotel.com.". It is erected by an entity called "Domains Are Free.com." The wording "Domains Are Free.com" appears as a part of the email address of the Respondentís technical contact.
Despite being notified by the WIPO center that it should file its response by September 10, 2000, the Respondent failed to do so. Instead on September 26, 2000, the WIPO Center received an email purportedly from the Respondent, to the following effect:
"What I have to do ? tell me. I registered this domain without know that it is conflict to any one before. I never know CDL hotel before, I registered for my client in thailand if you want this domain name I will cancel my client. I will transfer to you, If you want it very much do not waste your time to do with WIPO."
This email was also sent to the Complainant and copied to the Panel.
5. Partiesí Contentions
The Complainant avers that it is the owner of the common law trademarks CDL and CDL HOTELS. The Respondent has adopted the second level domain (the SLD) "CDLHOTEL" which is confusingly similar to the Complainantís trademarks. The Respondent has no legitimate interest in <cdlhotel.com>. The respondent has registered and is using the domain name <cdlhotel.com> in bad faith.
Not only has the Respondent defaulted in filing its response but has by the communication dated September 26, 2000, purportedly from the Respondent agreed to transfer to the Complainant the domain name <cdlhotel.com>.
6. Discussion and Findings
6.1 Effect of Respondentís Failure to Respond
By paragraph 5(a) of the Rules, it is expected of the Respondent to submit a response to the WIPO Center within twenty (20) days of the date of the commencement of the administrative proceeding. The Respondent has defaulted in submitting its response within the time stipulated by this paragraph. The Respondent has sought to communicate with the Complainant, the WIPO Center and the Panel after the expiry of the time limited by the Rules by way of an email. In the said email it states that the registration of the domain name <cdlhotel.com> was effected without knowledge of any conflict. It would be transferred to the Complainant if the Complainant wanted the said domain name. Attention must be drawn to paragraph 8 of the Rules which provides as follows:
"No party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the providerís Supplemental Rules."
The Respondentís purported direct communication with the Panel without its leave must be considered as unhealthy. When a Respondent does not submit the response within the time limited and in the absence of exceptional circumstances, the Panel is entitled by paragraph 5(e) of the Rules to decide the dispute based upon the complaint. Paragraph 14(b) of the Rules enables the Panel to draw such inferences as it considers appropriate.
6.2 Elements to be Proved
Under paragraph 4(a) of the Policy the Complainant must prove each of the following elements in order to succeed in its complaint:
(i) The Respondentís domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondentís domain name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas ,WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even when the Respondent has failed to make a response:
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar to Complainantís Trademarks
The Complainant relies on its rights in its trademarks CDL and CDL HOTELS to bring this administrative proceeding. Neither of them are registered as trademarks by the Complainant. Itís subsidiary, CDL Hotels New Zealand Limited has registered the CDL logo as four (4) trademarks in New Zealand. The Complainant makes reference to these registrations, as well as other facts, to establish that CDL and CDL HOTELS are trademarks common to the family of companies whose members are:
(i) the Complainant listed on the Hong Kong and Singapore Stock Exchanges;
(ii) City Developments Limited traded on the Singapore Stock Exchange;
(iii) CDL Hotels New Zealand Limited quoted on the New Zealand Stock Exchange;
(iv) CDL Investments New Zealand Limited traded on the New Zealand Stock Exchange;
(v) Millennium & Copthorne Hotels plc listed on the London Stock Exchange; and
(vi) CDL Hotels USA.
The Complainant has used the trademark CDL HOTELS since 1989. The family of companies to which the Complainant belongs, owns several hotels in many parts of the world. On the websites of some members of this family, CDL and CDL HOTELS appear as the second level domains (SLDs). As a result, the financial and real estate communities and internet users are familiar with these trademarks.
Rights in these trademarks may be asserted by the Complainant as a member of this family of companies. Being unregistered the trademarks would constitute common law trademarks in Hong Kong (SAR) where the Complainant has its registered office. A side-by-side comparison shows the confusing similarity between the domain name <cdlhotel.com> and the trademarks CDL and CDL HOTELS.
6.4 Respondentís Rights or Legitimate Interests in the domain name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate his rights and interests in the domain name <cdlhotel.com> by showing:
i) his use of, or demonstrable preparations to use, the domain name or a name corresponding to the said domain name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
There is no evidence of use or demonstrable preparation to use the domain name <cdlhotel.com> as part of a bona fide offering of goods or services by the Respondent. An entry to the site will only reveal a single, temporary page welcoming the browser to its parked homepage. The registrant bears the name DNSDEALER.COM and cannot be said to be commonly known by the domain name <cdlhotel.com>. It cannot be said to be making a legitimate noncommercial or fair use of the domain name. The Respondentís business is that of buying and selling domain names. Its alter ego is Somsak Sooksripanich who is directly or indirectly connected with a number of entities besides the Respondent, involved in registering well-known trademarks as domain names and offering them for sale. All these confirm the lack of legitimacy on the part of the Respondent in acquiring the domain name <cdlhotel.com>.
6.5 Registration and Use in Bad Faith
The Complainant must prove that the Respondent registered and also used the said domain name in bad faith in order to establish bad faith on the part of the Respondent.
By paragraph 4(b) of the Policy, the circumstances indicating registration and use of a domain name in bad faith include the registration or acquisition of the domain name primarily for the purpose of selling or transferring the domain name registration to the Complainant, the owner of the trademark, for valuable consideration. There will also be bad faith registration and use if the domain name has been registered to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.
Although the Complainant has a website with the domain name <cdlhotels.com.sg> in Singapore it has been prevented from registering the domain name <cdlhotel.com> on account of the prior registration by the Respondent. By the Respondent continuing as the current registrant the Complainant is deprived from registering the said domain name.
The phrase, "Welcome to the parked homepage of www.cdlhotel.com" may not be indicative of active use by the Respondent of the domain name. Although engaged in the business of registering domain names and subsequently offering them for sale, the Respondent has not as yet made offers of sale of the domain name <cdlhotel.com>.
The panel in Education Testing Services v. Netkorea Co, WIPO Case No. D2000-0087 cautions that:
"Öthe element of Ďuseí that is required for a finding of bad faith does not have a narrow or technical meaning as is usually the case with the definitions of Ďuseí applied when determining whether someone has Ďusedí a trademark under a particular trademark statute."
The panel in Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) says:
"Ö the concept of a domain nameÖ being used in bad faith Ö is not limited to positive action, inaction is within the concept."
The Respondent has the potential to offer the domain name <cdlhotel.com> for sale in line with its business practice and extract a price for the transfer. The Respondentís registration of the domain name <cdlhotel.com> cannot in any sense be regarded as done in good faith.
For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said domain name <cdlhotel.com> be transferred to the Complainant.
Dated: October 9, 2000