WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio
Case No. D2002-0683
1. The Parties
The Complainant is International Hospitality Management Ė IHM S.p.A., whose registered office is in via G. Carissimi, 26, Rome, Italy.
The Respondent is Enrico Callegari Ecostudio, with office in Borgo San Silvestro, 17, Parma, Italy.
2. The Domain Name and Registrar
The domain name under issue is <thecharminghotel.com > (Domain Name), which Domain Name is registered with Tucows, Inc., 96 Mowat Avenue, Toronto, ON, Canada M6K 3MI (the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), was submitted electronically to the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2002. The signed original with attachments was received by the Center the following day.
The Center sent an acknowledgment of Receipt of Complaint to the Complainant on July 22, 2002.
On July 22, 2002, the Center transmitted via email to the Registrar a request for Registrar Verification in connection with this case. On the same day the Registrar transmitted by email to the Center its Verification Response, confirming that: (i) the domain name < thecharminghotel.com> was registered with Tucows, Inc.; (ii) the Respondent is the current registrant of the Domain Name; (iii) the Policy applies to the Domain Name; (iv) the Domain Name was put on hold pending the administrative proceeding; (v) the language of the registration agreement is English.
On July 30, 2002, the Center transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically and by courier, setting a deadline of August 19, 2002, for the filing of the Respondentís response.
The Respondent sent his Response to the Center on August 1 and 9, 2002. An Acknowledgment of Receipt (Response) was sent by the Center on August 20, 2002.
On September 2, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed Sole Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist was required to send her decision to the Center by September 16, 2002.
On September 12, 2002, the Center received a letter (copied to the Panelist) from Ms. Carla Stefanini, apparently representing the Respondent, the content of which was basically the same as the Response. A copy of this letter was sent by the Center to the Panelist and to the Complainant.
The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
The Administrative Panel has issued its decision based on the Complaint, the Response, the Policy, the Rules, and the WIPO Supplement Rules.
4. Factual Background
The Complainant provided evidence of a number of trademark registrations for the words "The Charming Hotels", "Charming", "Charming Tours" for Italy (Attachments 4-6 to the Complaint) and for the words "The Charming Hotels" for a number of different countries (Attachment 7). In particular, "The Charming Hotels" was first registered by the Complainant as an Italian trademark (in 1989) and as an international trademark in 1998.
All the above trademarks were registered for a number of classes related to the hotel and tourist services.
The Complainant also provided evidence of registrations of the following domain names: <thecharminghotels.com> (on June 8, 1998) and <charminghotels.it> (on May 29, 1997).
In addition, the Complainant submitted a copy of a decision rendered by the Tribunal of Parma in April 2000, in a proceeding brought in 1994 by the Complainant against the Respondent for the alleged counterfeiting of its trademark "The Charming Hotels" by the Respondentís trademark "Charme and Relax".
The Complainant also submitted evidence of the registration by the Respondent, in addition to that of the Domain Name made in March 2002, of the following domain names: <thecharminghotel.it>, <thecharminghotels.it>, <charminghotel.it>.
These facts have not been challenged by the Respondent, therefore, they are considered true by the Panelist.
As attachments 1 and 7 to his Response, the Respondent submitted a copy of the requests dated June 6, 2002, and July 31, 2002, made to a company called Technorail s.r.l. and to the Italian Registration Authority, respectively, for the cancellation of the above-mentioned domain names, including the one under issue.
5. Partiesí Contentions
The Complainant contends that:
- Since 1987 the Complainant has been managing an international chain of hotels named "The Charming Hotels", and created a global network for the promotion, also through its website, of its affiliate hotels and for the collection, registration and placement of hotel reservations;
- In the conduct of its business, the Complainant has registered and has been using, amongst others, the trademark "The Charming Hotels" and the corresponding domain names <thecharminghotels.com> and <thecharminghotels.it>;
- The Respondent is a competitor of the Complainant and has set up and manages, under the name "Charme and Relax", a network for the promotion, also through the web, of independent hotels and for the collection, registration and placement of hotel reservations;
- The Respondentís Domain Name is confusingly similar to the Complainantís trademarks;
- The Respondent has no rights or legitimate interests in the Domain Name;
- The Respondent has registered the Domain Name in bad faith in order to prevent the Complainant from reflecting its registered trademarks in a corresponding domain name;
- The Respondentís Domain name interferes with the Complainantís legitimate rights to use its trademarks as a domain name;
- At the time of registration the Respondent was perfectly aware of the Complainantís trademarks "The Charming Hotels";
- The registration in bad faith amounts also to bad faith use, it being a positive action which has negative results on the Complainantís use of its trademark;
- In any case the Respondent does have presence on the web by means of keeping an "under construction" web-page;
- The Respondentís bad faith in registering and using the Domain Name is also evidenced by the list of domain names held by the Respondent which are identical with or confusingly similar to the trademarks of the Complainant and of other competitors (such as <sagittariusbooking.com>, <sagittarius-hotel.com>, <sagittariushotel.com>, <sagittarius-hotel.com> (see Attachments 24-35 to the Complainant).
Based on the above, the Complainant requests the transfer of the Domain Name.
The Respondent has not taken position specifically in connection with the arguments made out by the Complainant. In its Response, the Respondent asserts that before this proceeding started, it had already taken steps in order to have the Domain Name at issue (and the other domain names <thecharminghotel.it>, <thecharminghotels.it> <charminghotel.it>), canceled and that the Domain Name was registered by mistake. In the same Response, the Respondent proposed transferring the Domain Name to the Complainant. The above was basically confirmed by the letter sent by Ms. Carla Stefanini, apparently representing the Respondent, on September 13, 2002.
6. Discussion and findings
A. Preliminary procedural issue
In the Panelistís opinion, the preliminary question arises as to whether the Respondentís requests for cancellation sent on June 6, 2002, to a company, Technorail s.r.l., and on July 31, 2002, to the Italian Registration Authority (Attachments 1 and 7 to the Response) prevents the Panelist from deciding the case. According to Par. 17(2) (b) of the Rules: "If, before the Panelís decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel".
In the case in hand, the Panelist believes that the above-mentioned requests do not affect this proceeding nor make it "unnecessary or impossible" to issue a decision since:
- the request dated July 31, 2002, to the Italian Registration Authority has no relevance here for the purpose of Par. 17(2) (b) of the Rules. As a matter of fact it does not concern the Domain Name, but only similar domain names whose top level is ".it" (i.e.: <charminghotel.it>; <thecharminghotels.it>; <thecharminghotels.it>);
- the request dated June 6, 2002, is not addressed to the Registrar but to Technorail s.r.l. which, according to Who is data base print out (Attachment 2 to the Complaint), appears to be the technical contact for the Domain Name. In addition, from the correspondence further exchanged between Technorail and the Respondent (Attachments 2-6 to the Response) it clearly appears that the cancellation could not be made due to procedural reasons (indeed in its Verification Response the Registrar confirmed that the Respondent still is the registrant of the Domain Name);
- the letter sent by Ms. Carla Stefanini on September 13, 2002, apart from not being in accordance with the Rules and the Supplemental Rules, does not add anything to the above.
Therefore, failing any reaction on the part of the Complainant for the suspension/termination of the proceeding, the Panelist has examined the merits of the dispute.
B. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs the Panelist to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainantís trademark or service mark;
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) sets out in particular but without limitation three circumstances which, if proved by respondent, shall be evidence of the respondentís rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
C. (I) Identity or confusing similarity
The Domain Name <thecharminghotel.com> is confusingly similar with the Complainantís trademarks "THE CHARMING HOTELS", the only difference between the two consisting in the absence, in the former, of the letter "s" which turns the word hotel (plural in the Complainantís trademarks) into singular. Such a difference is objectively not sufficient to distinguish the Domain Name from the Complainantís trademarks.
The Complainant therefore succeeds in proving the first of the elements under Par. 4(a) of the Policy.
(II) Rights or legitimate interests
It is clear from the Complaint that the Complainant has never authorised or licensed the Respondent to use its trademarks "THE CHARMING HOTELS". It also appears that the Respondent is not commonly known by the Domain and there is no evidence of any use or demonstrable preparation to use the Domain Name.
The above would be sufficient to constitute prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name, but in the case in hand this fact is indeed confirmed by the Response and relevant attachments, whereby the Respondent acknowledges that (i) the Domain Name (as well as each of the corresponding or similar domain names carrying the top level .it) were registered by mistake and (ii) the Respondent had already requested their cancellation.
The Panelist finds therefore that also the second element Par. 4(a) of the Policy has been established.
(III) Bad Faith
Under the Policy, the Complainant is required to prove also the third element provided for in paragraph 4.a(iii), namely that the domain name "has been registered and is being used in bad faith".
The Domain Name is confusingly similar to the trademarks registered and used by the Complainant, which fact the Respondent knew for sure, having been summoned in 1994, before the Tribunal of Parma for the alleged counterfeiting of the Complainantís trademarks "The charming hotels". Also, as described in paragraph C. (II), the Respondent has no rights or legitimate interests in the Domain Name.
Based on the above, the Panelist finds that the Domain Name has been registered in bad faith.
On the other hand the Respondent has acted with passive holding, which has been repeatedly and consistently regarded by the Panelís decisions as use in bad faith, since the very early decision Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In addition, there is evidence that the Respondent is a competitor of the Complainant and the Panelist deems this circumstance sufficient to satisfy Par. 4(b)(iii), also considering the list of domain names held by the Respondent which are identical with or confusingly similar to the trademarks of other competitors.
In the light of the above, the Panelist finds that the Domain Name was registered and is being used in bad faith.
Based on the above, the Panelist requires that the Domain Name <thecharminghotel.com> be transferred to the Complainant.
Dated: September 16, 2002