WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lonrho Africa (Holdings) Limited v. Bests, LLC
Case No. D2011-0925
1. The Parties
The Complainant is Lonrho Africa (Holdings) Limited of London, the United Kingdom of Great Britain and Northern Ireland, represented by Mishcon de Reya, Solicitors, United Kingdom.
The Respondent is Bests, LLC of Aberdeen, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lonrhohotels.com> (“Disputed Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2011. On May 27, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2011, Fabulous.com 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 June 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on July 8, 2011. 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 is the United Kingdom based operating and investment company of Lonrho Plc. a publicly listed company which has operated on the African continent under the LONRHO brand for more than one hundred years having commenced in 1909 as “The London and Rhodesian Mining and Land Company Limited” and having at its peak in 1989 had profits of £273 million while employing 134,000 people worldwide.
Following the group’s restructuring and public listing in 1998 it sought to re-organize itself around 5 key divisions which are described at its website “www.lonrho.com”. In 2009 the Group’s revenues were approximately £90 million. One of the Group’s key business sectors was and is the hotel sector which now accounts for 7% of the Complainant’s business, based on hotels in Mozambique, the Democratic Republic of Congo and Zimbabwe catering to both the business and tourist markets. The Complainant maintains a website for its hotels at “www.lonrhohotelsafrica.com”.
The Respondent registered the Disputed Domain Name on 18 February 1998 and it resolves to a website featuring links to the content of other third party websites offering hotel accommodation and vacations in Africa which are not associated with the Complainant.
5. Parties’ Contentions
The Complainant submits that as a consequence of its longstanding use of the LONRHO brand as noted above and in particular of its use of the LONRHO or LONRHO HOTEL marks, both prior and subsequent to public listing of the Group in 1998 and, in relation to its substantial hotel business in the African continent, that these marks have become synonymous with its business and it has developed valid and subsisting trade mark rights in each of these marks. It submits that the Disputed Domain Name is confusingly similar to the Complainant’s marks.
The Complainant notes in support of this submission that the Admission Document for its public listing stated that it had eleven hotels which generated a turnover of £15.1 million in 1995, £17.2 million in 1996 and £18.8 million in 1997 prior to listing in 1998 and that and since 2008 this division has generated revenues of £11 million. The Complainant submits that it has promoted its hotels under the LONRHO and LONRHO HOTEL brand and in particular has made a significant investment in its website at “www.lonrhohotelsafrica.com” which acts as the primary information source of its new hotel openings and promotional rates; and is the key means by which customers make reservations and learn of the Complainant’s hotel services.
The Complainant says that it has not authorised the Respondent to use its distinctive LONRHO mark and is not aware that the Respondent is commonly known by this name, has any interests in the hotel industry or has any rights or legitimate interests in relation to the mark. On the contrary, the Complainant submits that the Respondent is using the Disputed Domain Name solely to benefit from the Complainant’s marks and reputation in order to attract browsers looking for the Complainant’s website into viewing unrelated advertisements or websites for competing hotels, or alternative tourist services in the African continent.
As far as bad faith is concerned the Complainant submits that the fact that the Disputed Domain Name’s registration coincided with Lonrho’s admission to the London Stock Exchange and the publication of its Admission Document creates the inevitable inference that the Respondent registered the Disputed Domain Name in response to Lonrho’s public listing as a calculated attempt to cyber-squat. The Complainant says that its purpose was to resell the Disputed Domain Name at a profit, or in the alternative, to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant‘s trademarks in terms of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated substantial use of its LONRHO mark in connections with its general operations and in particular with its hotel business. The Panel notes that the Complainant is a publicly listed company with long standing operations in Africa and which operates across a diverse range of business sectors under the LONRHO brand or mark. Further the LONRHO mark is highly distinctive having been derived as an abbreviation of the Complainant’s original corporate name in the early twentieth century.
It appears that the hotel business sector was more substantial for the Complainant prior to its listing in 1998 than afterwards as a consequence of a sale of part of its hotel business outside Africa and a subsequent re-focus on developing a hotel business based on the African continent. In any event, the Panel is satisfied, based even on the Complainant’s recent activities in this sector, that it has developed a substantial hotel business since 2008 generating £11 million in revenues for the group and that it markets the hotels under the LONRHO name and mark and in particular through its website at “www.lonrhohotelsafrica.com”. It is not necessary for the Panel to make any finding in relation to the Complainant’s use of the mark LONRHO HOTELS as it finds that the Complainant has demonstrated sufficient use of the LONRHO mark for it to be recognised as functioning as a distinguisher both in relation to the Complainant’s hotel business and other business activities. Accordingly, the Complainant has demonstrated trade mark rights for the purposes of the Policy.
The Disputed Domain Name differs from the Complainant’s LONRHO mark only by the addition of the word “hotels”. Previous panels have found that the addition of a common used word to a distinctive trade mark does not distinguish a domain name and that the domain name is in those circumstances confusingly similar to the complainant’s mark. Similarly, in this case, the addition of the term “hotels” to the highly distinctive LONRHO mark does not distinguish the Disputed Domain Name and therefore in the Panel’s view the Disputed Domain Name is confusingly similar to the Complainant’s LONRHO mark. As a consequence the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that it has not authorized the Respondent to use its mark and that the Respondent is not commonly known by the Disputed Domain Name and does not have any interests in the hotel industry. The Respondent has not disputed these assertions and for the reasons set out below the Panel finds that the Respondent has acted in bad faith. As a result the Panel finds that the Respondent has no legitimate rights or interests in the Disputed Domain Name and that the Complainant succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
As noted above, the Complainant operated an even more substantial international hotel business prior to its public listing in 1998 and therefore prior to the registration of the Disputed Domain Name in February 1998. A press articles from 1996 demonstrate that the sale of the Complainant’s hotel businesses was reported in the media and that one of the hotel chains that it operated at this time appears to have been based in the United States. It is indicative of the size of the business that when it eventually sold in mid-1998 and after public listing, the business is reported to have fetched a substantial price of USD$540 million.
Considering the distinctiveness of the LONRHO name and mark, the Respondent ‘s base in North America and its registration of the Disputed Domain Name around the time of the Complainant’s public listing, it seems to the Panel that it is reasonable to infer on the balance of probabilities that the Respondent did not register the Disputed Domain Name coincidentally, but rather was aware of the Complainant’s operations or of its potential listing and sought registration of the Disputed Domain Name purposefully for its own ends. The Panel therefore infers that the Respondent registered the Disputed Domain Name in bad faith.
The fact that the website at the Disputed Domain Name resolves to a place keeper site featuring what appear to be sponsored advertising links to African based hotel or safari operators and that the Respondent failed to respond to the Complainant’s preliminary correspondence about its registration and use of the Disputed Domain Name is supportive in all the circumstances of the Complainant’s assertion that the Respondent acted in bad faith by knowingly seeking to use the Disputed Domain Name to attract Internet users to its website for commercial gain. A similar approach was taken by the Panel in Scandic Hotels AB v. Great Camanoe Investments Ltd / Belize Domain Whois Service Ltd, WIPO Case No. D2007-0813, and previous panels have found that in appropriate circumstances sponsored advertising links are indicative of use in bad faith, many examples of which are summarized in Starwood Hotels & Resorts Worldwide, Inc. , The Sheraton, LLC , Worldwide Franchise Systems, Inc. , Sheraton International, Inc. v. KerryWeb Enterprise, Inc , North West Enterprise, Inc. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150.
While there is no evidence that the Respondent has sought to sell the Disputed Domain Name to the Complainant, in all the circumstances the Panel considers that on the balance of probabilities the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant‘s LONRHO trademark in terms of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Disputed Domain Name was both registered and used 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 domain name <lonrhohotels.com> be transferred to the Complainant.
Dated: July 16, 2011