WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NH Hoteles, S.A. v. Success, Inc.

Case No. D2012-1288

1. The Parties

The Complainant is NH Hoteles, S.A. of Madrid, Spain, represented by INTERDOMAIN, Spain.

The Respondent is Success, Inc. of Malibu, California, United States of America, represented by Patel & Almeida P.C., United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <nhhotel.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. On June 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 26, 2012, 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 June 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. The Response was filed with the Center on July 19, 2012.

The Center appointed Charné Le Roux as the sole panelist in this matter on July 27, 2012. 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 a Spanish company founded in 1978 and Europe’s third ranked business hotel chain. It has almost 400 hotels in 26 countries across Europe, the Americas and Africa. The Complainant trades on the Madrid Stock Exchange. In 1998 the Complainant began to commercialize its services through its website at “www.nh-hoteles.com”. It was listed on the IBEX 35 stock index shortly afterwards and in 1999 the Complainant doubled in size, owning 168 hotels with a presence in 15 countries. The Complainant continued with its expansion outside of European borders and in 2011 ranked amongst the top 20 hotel chains in the world. The Complainant has received many awards including the Best Hotel Chain 2012, “Five Star Diamonds Award” given by the American Academy of Hospitality Sciences and the Golden Apple Award 2010.

The Complainant owns registrations for the trade marks NH and NH HOTELES throughout Europe, Latin America, the USA and Northern Africa. The trade marks that are most relevant to this dispute are a US trade mark registration for the word mark NH filed in March 2002, a Spanish registration for the mark NH HOTELES (consisting of a word mark for NH and a design element incorporating the word “hoteles”) filed in March 1985, a Community trade mark for NH HOTELES filed in November 2000, (which has since lapsed), a Community trade mark (“CTM”) for NH lodged in April 2002 and a Mexican trade mark for NH lodged in March 2001.

The Complainant also owns the domain name <nh-hoteles.com>, registered in January 1997, and <nh-hotels.com>, registered in May 2000.

The Respondent registered the Disputed Domain Name on May 17, 2002. The website of the Disputed Domain Name resolves to a pay-per-click website, showing sponsored links for different hotels. The Disputed Domain Name was also offered for sale through the website “www.sedo.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is one of the largest business hotel chains in Europe and that it has since its opening in 1978 grown into a significant business, currently constituting of almost 400 hotels in 26 countries across Europe, the Americas and Africa.

The Complainant submits that it began promoting its services through the website “www.nh-hoteles.com” in 1998 shortly after it registered the domain name <nh-hoteles.com> in January 1997. Its international expansion to Latin America and Europe commenced shortly afterwards and in 1999 it doubled in size, with a presence in 15 countries. The Complainant contends that it had already become the top third business hotel chain in Europe when the Defendant registered the Disputed Domain Name. It contends that its trade marks are well-known and it submitted evidence of a number of trade marks registrations and domain names owned by it, as well as its awards and international recognition, as set out above.

The Complainant contends that the Disputed Domain Name is confusingly similar to its NH and NH HOTELES trade marks. It indicates, firstly, that there is a complete reproduction in the Disputed Domain Name of the trade mark NH, with “HOTEL” being a generic, descriptive term and secondly, insofar as the Complainant’s NH HOTELES trade mark is concerned, that the word “HOTELES” is the Spanish term for “hotel”.

The Complainant contends that the Disputed Domain Name is, if not identical, so similar to the Complainant’s trade marks that there is a likelihood of confusion arising.

The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:

a. There is no evidence of the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;

b. The Respondent has not been commonly known by the Disputed Domain Name;

c. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, because the Disputed Domain Name is being offered for sale and, in the interim, is connected to a pay-per-click website offering competing services, presumably to generate revenue and with an intent for commercial gain to be garnered from diverted consumers who have been misled;

d. The Complainant’s attempt to purchase the Disputed Domain Name from the Respondent by making an anonymous offer for USD 1,500 resulted in a counter offer for USD 500,000.

The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the Disputed Domain Name for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to it for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

The Complainant contends that the Respondent’s requested price of USD 500,000 through the Sedo platform clearly surpassed any reasonable out-of-pocket expenses related to registration of the Disputed Domain Name.

The Complainant contends that the Respondent has been found to trade under many different names, including Success, Success Inc, Yomtobian, Karim Yomtobian, Steven Yomtobian, Yomtobian Enterprises Inc, Saeid Yomtobian, Rocky Production etc. all bearing identical contact details, including the postal and/or email addresses. The Complainant submits that these names identify the Respondent in a large number of cybersquatting cases and that it has been involved for more than 10 years in the activity of registering famous marks (and/or their misspellings) as domain names in order to obtain commercial gain. Reference is made by the Complainant to Fairchild Publications Inc. v. Saeid Yomtobian, WIPO Case No. D2000-1003 in this regard, where reference is made to a number of other URDP decisions in which it was found that the Respondent registered the relevant domain names to divert users away from the trade mark holders’ sites to its own competing site.

The Complainant also refers to Sociéte des Technologies de l’Aluminium du Saguena Inc. v. Success Inc., WIPO Case No. D2008-0268, where reference is once again made to the Respondent’s track record and 12 previous decisions in which it has been found to have been implicated in the registration and use of domain names in bad faith.

The Complainant also contends, in connection with the Respondent’s bad faith, that by using the Disputed Domain Name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

The Respondent contests the Complainant’s assertion that its trade marks are well-known. It denies that it had any knowledge of the Complainant’s existence when it registered the Disputed Domain Name in 2002.

The Respondent contends that the Complainant’s trade marks are not well-known in the USA (where the Respondent is located), because the Complainant does not have any presence in the USA. It also points out that the Google and Wikipedia results which the Complainant provided as part of its evidence in showing the extent of its reputation did not exist in 2002 when the Disputed Domain Name was registered and/or that they were in their infancy and did not have the search capacity that is available today.

The Respondent denies that the Complainant owned any trade mark registrations for the mark NH HOTELES prior to the Disputed Domain Name registration in 2002. It argues in respect of the trade mark registrations referenced above that the Complainant’s USA registration was only registered in May 2009 (which the Panel notes is incorrect; the registration relied on by the Complainant was registered in August 2007), that the Complainant’s Spanish trade mark registration is not for the mark NH HOTELES, but only NH and that the Complainant’s CTM application lodged in 2000 (and which lapsed because it had not been renewed), is not relevant because it was only registered in 2003.

The Respondent denies that the Disputed Domain Name is identical or confusingly similar to the trade marks owned by the Complainant, firstly because the Complainant did not own the NH HOTELES trade mark prior to the registration of the Disputed Domain Name and secondly, insofar as the NH registrations are concerned, that this trade mark is not distinctive of the Complainant and that there are many parties who use “nh” as part of their domain names and trading styles, including <nhjobs.com> and <nh.com> (the Panel notes that both of these appear to be using “nh” as an abbreviation for the State of New Hampshire).

The Respondent submits that it does have a legitimate interest in the Disputed Domain Name, because it registered it based on its descriptive meaning and the simple combination of the letters “n” and “h”, with no intention to benefit from a trade mark. It submits that its purpose with the Disputed Domain Name was to display advertising links, but that it did not select the links appearing onto the website, as they were auto generated.

The Respondent denies that it registered and used the Disputed Domain Name in bad faith and submits that it had no knowledge of the Complainant’s existence or trade marks at the time of registration of the Disputed Domain Name.

The Respondent submits that it cannot be said to be acting in bad faith if the Complainant never complained to the Respondent at any time since 2002 regarding the Respondent’s ownership or use of the Disputed Domain Name.

The Respondent submits in connection with its counter offer for the sale of the Disputed Domain Name of USD 500,000, that it was not intended to be taken seriously. It simply decided not to sell the Disputed Domain Name on that particular day and it attempted to opt out of the bidding by impulsively entering the counter offer. The Respondent submits that it never knew that it was the Complainant who bid for the Disputed Domain Name.

The Respondent submits that its previous activities relating to other domain names and other domain name panel decisions should not be considered, but that it is only the facts and argument made in connection with this matter that are of relevance.

The Respondent also submits that the parking of a domain name at a pay-per-click site is not an act of bad faith per se and that it did not, in fact, earn or benefit commercially from the Complainant’s trade mark in any significant way, as in the past 10 years, it earned less than USD 30.

The Respondent also advances an argument regarding a defence of laches, on the basis that the Complainant waited over 10 years to bring the Complaint. It argues that the facts and circumstances of this matter support the conclusion that the Complainant forfeited its rights to file a Complaint against the Disputed Domain Name.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in the proceeding, the Complainant must prove:

(i) That the Disputed Domain Name is identical of confusingly similar to a mark in which it has rights;

(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) That the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds on the evidence that the Complainant owns both common law and registered rights in the trade marks NH and NH HOTELES. The Panel also finds, on the basis of the evidence submitted, that the Complainant’s trade marks are well-known.

The Respondent’s rejection of the Complainant’s claim of fame is largely based on the fact that the Complainant’s trade marks were not famous when the Disputed Domain Name was registered in 2002. In terms of the Policy, if a complainant owns a trade mark, then it generally satisfies the requirement of having trade mark rights. The Policy makes no reference to the date on which the holder of the trade mark must acquire rights. The question of priority in a trade mark versus a disputed domain name for purposes of the Policy are more relevant to the bad faith element, which will be discussed further below.

The Panel also finds the Disputed Domain Name is confusingly similar to the Complainant’s NH and NH HOTELES trade marks. The trade mark NH is clearly recognizable from the Disputed Domain Name and the addition of a descriptive term such as “hotel” is unlikely to prevent user confusion. The word “hotel” in the Disputed Domain Name is also an English translation of the Spanish word “hotel” and a considerable part of the public will understand the meaning of the translation. The Disputed Domain Name and the Complainant’s NH HOTELES trade mark are furthermore close phonetic equivalents. See also the decisions in NH Hoteles, S.A. v. Will Eom, WIPO Case No. D2010-0227 and NH Hoteles S.A. v. Irene Nunez Monasterio, WIPO Case No. D2009-1458.

The first requirement of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy.

In terms of the Policy, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the Respondent has to come forward with sufficient allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent does not explain why it selected the peculiar combination of the letters “nh” in combination with the word “hotel” for the Disputed Domain Name. It only says that it selected the Disputed Domain Name because of its descriptive meaning and the common combination of the letters “n” and “h”. The Panel cannot accept this assertion. The use of the letters “n” and “h” in combination with the word “hotel” in the Disputed Domain Name begs further explanation.

Furthermore, up to the date of the Complaint, the Respondent only used the Disputed Domain Name for a pay-per-click website with the intention to generate an income from it (the fact that the Respondent has not in fact generated significant income is of no consequence). This activity is not in itself indicative of a lack of a legitimate interest, but the fact that the links associated with the website attached to Disputed Domain Name are based on the trade mark value of the Complainant’s trade mark, negates the legitimacy of the Respondent’s interest. The Panel also rejects the Respondent’s assertion that it was not responsible for the content appearing on the website attached to the Disputed Domain Name.

It is noteworthy also that the Respondent advertised the Disputed Domain name for sale, which is more indicative of a lack of interest in conducting bona fide business through the Disputed Domain Name.

The second requirement of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The extent of the Complainant’s trading activities prior to the registration of the Disputed Domain Name in 2002 is not in dispute. The Respondent does not dispute the fact that the Complainant was established in 1978 and that by 1999 it already had a presence in 15 countries and owned 168 hotels. It does not dispute that it was at that time already listed on the Madrid Stock Exchange as well as the IBEX 35 Stock Index. It did not question that the Complainant then already owned the domain names <nhhoteles.com> and <nhhotels.com>, filed a US trade mark for NH in March 2002, a Spanish trade mark for NH HOTELES (which is a design mark incorporating NH and the word “hoteles”) in March 1985, a Community trade mark for NH in April 2002, a Community trade mark for NH HOTELES in November 2000 and a Mexican trade mark for NH in March 2001. These events, domain names and trade marks could not have gone unnoticed by the Respondent and the Panel rejects the assertion made by the Respondent that it had no knowledge of the Complainant’s existence when it registered the Disputed Domain Name. In rejecting the Respondent’s assertion in this regard, the Panel also took account of the Respondent’s activities in connection with other domain names. The pattern of registering and using domain names in bad faith by the Respondent, noted by other panels, sets a good picture of the Respondent’s general intentions with respect to domain names, which can hardly be said to be in good faith. See also the observations of the panel in Sóciéte des Technologies de I’Aluminium du Saguena Inc. v Success Inc., WIPO Case No. D2008-0268. In this instance too, the Respondent’s past conduct certainly raises the question as to why the Respondent registered the Disputed Domain Name and why it chose the phrase NH HOTEL, to which it gave no real explanation. The statement that the letters “nh” are meaningless, that the word “hotel” is descriptive, set against the facts surrounding the use of the Disputed Domain Name for a pay-per-click site for competing hotel services and the attempted sale of the Disputed Domain Name for USD 500,000, leave serious doubt in the mind of the Panel about the Respondent’s good intentions.

The Panel also does not accept the Respondent’s explanations regarding the price asked for the Disputed Domain Name of USD 500,000. The Respondent clearly wanted to achieve the highest possible price for the Disputed Domain Name, far exceeding its out-of-pocket costs. If it is true that the Respondent did not want to sell the Disputed Domain Name on that particular day (which in itself seems implausible) it need not have made a counter offer at all.

In these circumstances and taking all the above considerations into account, the Panel is persuaded that the Respondent registered and used the Disputed Domain Name intentionally to attract Internet Users to its website by creating the likelihood of confusion with the Complainant’s trade marks as to the source and affiliation of the Respondent’s website.

The Panel also finds that the Respondent has registered and acquired the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant for a valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name.

With regard to the doctrine of laches advanced by the Respondent as a defence to the Complainant’s case, the Panel expresses the view that laches has not been accepted as a defence, per se, in Policy proceedings, more is required and in this case nothing has been advanced by the Respondent’s about the Complainant’s conduct in standing by that should give rise to a finding that it forfeited its rights to lodge this Complaint.

In accordance with paragraph 4(b)(i) and (iv) of the Policy the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Name in bad faith.

The third requirement of paragraph 4(a) of the Policy has been met.

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 Disputed Domain Name <nhhotel.com> be transferred to the Complainant.

Charné Le Roux
Sole Panelist
Dated: August 14, 2012