WIPO Domain Name Decision: D2006-0231

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boscolo Group S.p.A. v. domains Ventures

Case No. D2006-0231

1. The Parties

The Complainant is Boscolo Group S.p.A., Padova, Italy, represented by Studio Legale Tonucci, Italy.

The Respondent is domains Ventures, Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <boscolohotel.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2006. On February 23, 2006, the Center transmitted by email to Moniker Online Services LLC, a request for registrar verification in connection with the domain name at issue. On February 24, 2006, Moniker Online Services LLC, transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. On March 20, 2006, the Center verified that the Complaint satisfied the formal requirements of 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”).

The disputed domain name was due to expire on March 16, 2006. Owing to the Automatic Renewal option in place on the relevant account with the Registrar, the disputed domain was automatically renewed until March 16, 2007.

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 March 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2006.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 24, 2006. 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.

The language of the proceedings is English.

4. Factual Background

The Complainant is an Italian company, and holding company of the Boscolo group, which specialises in the provision of hotel and travel services.

The Complainant is the owner of the following figurative Community trade marks, both of which are annexed to the submitted Complaint, and viewable on the website of the Office for Harmonization in the Internal Market:

• 1969120 BOSCOLO HOTELS registered on April 22, 2002, including in class 39 (travel arrangement (services for others)) and in class 42 (temporary accommodation, reception of tourists). This trade mark has a description which is referred to below.

• 1948843 BOSCOLO TOURS registered on April 18, 2002, including in the same classes as above.

The Boscolo group operates worldwide and owns 20 hotels in Europe under the BOSCOLO HOTELS trade mark, and has also registered relevant business licences in Italy, the Czech Republic, France and China.

The Complainant is also the owner of the following domain names:

• <boscolohotels.com>

• <boscolohotels.it>

• <boscolohotels.biz>

• <boscolohotels.org>

• <boscolohotels.net>

• <boscolo-hotels.com>

• <boscolo-hotel.it>

• <boscolo-hotels.it>

• <boscolo-hotel.com>

• <boscolohotel.org>

The Complainant also offers travel services through other domain names beginning with <boscolo>.

The Respondent is a China based entity which purchased the disputed domain name <boscolohotel.com> on March 17, 2004.

The Respondent appears to use the disputed domain for advertising, among other things, travel services hosted by the resulting domain name <searchportal.information.com>. The display directed to by the disputed domain name alternates depending on the time of day the domain name is accessed by the Internet user. One such display states:

“Looking to get away? boscolohotel.com has all the information you need. We cover travel packages, hotels, flights, car rentals, and more!”

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint upon the Policy, paragraphs 4(a), (b) and (c), and in accordance with paragraph 3 of the Rules.

The Complaint can be summarised as follows:

• The disputed domain <boscolohotel.com> is almost identical, or is confusingly similar, to the Trade Mark and service mark BOSCOLO HOTELS, to which the Complainant has exclusive rights, the only difference being that the letter “s” is missing, turning the mark from a plural group, to a singular hotel. The omission of the “s” is almost imperceptible both visually and phonetically and can misleadingly divert Internet users.

• The omission of the letter “s” is a common misspelling of the trade mark, especially for non-English speaking Internet users, such as the Italian population, who constitute a principal target customer group of the Complainant and its group.

• The Respondent’s conduct is “typo squatting”, which violates paragraphs 4(b)(i) and (iv) of the Policy.

• The Respondent has no rights or legitimate interests in respect of the disputed domain name, and “Boscolo” or “Boscolohotel” is not part of its name. The Complainant has not authorized, licensed or otherwise allowed the Respondent to apply for or use a domain name confusingly similar to the BOSCOLO HOTELS Trade Mark.

• The Respondent is not making any legitimate non-commercial fair use of the name, and is clearly using the disputed domain name to divert Internet users for commercial gain, and therefore intends to benefit from the mistyping which is also evidence of use in bad faith, contrary to paragraphs 4(b) and (c) of the Policy.

• The Respondent has or had actual or constructive knowledge of the Complainant’s rights in the BOSCOLO HOTELS Trade Mark as it is an internationally known mark. The Respondent uses the disputed domain to divert Internet users to a site offering similar services, and also refers specifically to Italian cities, which is a blatant attempt to exploit the Complainant’s principal region of business.

• The Respondent has or had actual or constructive knowledge of the Complainant’s rights in the BOSCOLO HOTELS Trade Mark due to the other domain names beginning with or subsisting of <boscolohotels>, <boscolohotel>, <boscolo-hotels> or <boscolo-hotel>. One of the displays resulting from the disputed domain name features an unauthorized link to “www.boscolohotels.it”, one of the Complainant’s domain names and websites, which shows the level of knowledge.

• Further, the conduct of the Respondent amounts to “typo squatting”, which is a form of bad faith registration and use.

The Complainant also points out that the Respondent has been a respondent in other UDRP proceeding, which have resolved in the transfer of the domain name disputed in each instance.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint (paragraph 5(e) of the Rules).

6. Discussion and Findings

In order to be successful in its Complaint, the Complainant must show each part of paragraph 4(a) of the Policy;

(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.

Each part will now be dealt with in turn:

A. Identical or Confusingly Similar

The Complainant owns a figurative Community trade mark registration for BOSCOLO HOTELS, for which the description is: “Branches of leaves, joined at the base by a tiara which supports two intersecting Bs and dominated by a crown, with BOSCOLO HOTELS written underneath.” (the “Trade Mark”)

The Complainant states that the disputed domain name is identical or confusingly similar to the Trade Mark because the only element of difference is the omission of the “s”. There is more to consider, however, as the Trade Mark as registered is a logo mark, which contains the words BOSCOLO HOTELS, from which the “s” is dropped to form the disputed domain <boscolohotel.com>. As the Trade Mark is not a pure word mark, the disputed domain name is not a classic case of “typo-squatting” of the Trade Mark per-se. The disputed domain name therefore is not identical to the Trade Mark, and confusing similarity must be considered.

In line with European Court of Justice reasoning, which is the law relating to trade marks that applies in Italy, the home of the Complainant, “[i]n determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (as per the Court in SABEL/PUMA case (C-251/95 of November 11, 1997)). Although this is not binding law upon the Panel, the Panel notes that this case was considered and relied upon by the Panel in the decision of <cadburyland.com>, Cadbury Limited v. Jonathan Harris, WIPO Case No. D2000-1249.

In this instance, the Trade Mark is a logo mark with the words “BOSCOLO HOTELS” written underneath a device, and the comparator is the disputed domain name, <boscolohotel.com>. Overall, phonetically, the word elements of the marks are confusingly similar, one being a plural noun, “BOSCOLO HOTELS”, the other being the singular BOSCOLO HOTEL. The Panel also notes that the Complainant has rights in the domain names <boscolohotels.com>, <boscolo-hotel.com>, and <boscolohotel.org>, all being top-level domain names, and in which the Complainant has common law rights.

The Panel considers the decision in SABEL/PUMA and the common law rights of the Complainant in the domain names listed above to be relevant considerations, in accordance with paragraph 15(a) of the Rules.

In light of these legal principles, the Panel considers the overall impression of both marks to be confusingly similar, and the Panel finds that the requirements of paragraph 4(a)(i) of the Policy, confusing similarity with a trademark in which the Complainant has rights, are satisfied.

B. Rights or Legitimate Interests

The Respondent, by not responding to the Complaint, has not made any claim that it has any right or legitimate interests in the disputed domain name. The Complainant has asserted that it has not authorized, licensed or otherwise allowed the Respondent to apply for or use the BOSCOLO HOTELS mark or anything similar thereto.

The Complainant contends that the Respondent is not using the disputed domain name in connection with bona fide offering of goods or services, as the intention is to divert Internet users from the Complainant’s websites to the disputed domain name (paragraph 4(c)(i) of the Policy).

The Respondent is not called by the name used in the disputed domain name or anything similar (paragraph 4(c)(ii) of the Policy).

The Complainant contends that the Respondent is not using the disputed domain name for a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers but is unfairly using the disputed domain name to divert Internet users to the disputed domain name (paragraph 4(c)(iii) of the Policy).

The site hosted through the disputed domain seems to have been created to attract people who mistype the Complainant’s domain names, while appearing to offer similar services, in the manner of a “portal” which has links to a variety of websites.

The Respondent has not rebutted any of the Complainant’s contentions, nor put forward any grounds to show legitimate interest, to further those given as examples in paragraph 4(c) of the Policy.

Accordingly, on the basis of the facts in this case, the Panel finds that the Respondent has no right or legitimate interest in the disputed domain name, and therefore the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are satisfied.

C. Registered and Used in Bad Faith

The disputed domain name is, as the Panel has found, confusingly similar to trade marks in which the Complainant has rights. The Complaint has contended that the Respondent knew or had constructive knowledge of the Complainant’s rights, because there are links to the Complainant’s legitimate websites from the disputed domain name. The Respondent has not rebutted this assertion.

By using the disputed domain name, the Respondent has created a likelihood of confusion with the Complainant’s Trade Marks as to the source, sponsorship, affiliation or endorsement of the disputed domain and the products and services offered therefrom. One display resulting from visiting the disputed domain name includes the following phrase: “Looking to get away? boscolohotel.com has all the information you need. We cover travel packages, hotels, flights, car rentals, and more!” This is indicative of the nature of services provided by the Complainant, and of the classes registered under the Trade Mark, and advertised, promoted and offered on its legitimate websites.

The Respondent has not forwarded any information or response for the Panel to consider.

For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <boscolohotel.com>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist

Dated: May 8, 2006