WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. DomainsByProxy.com / Hans Kam, Nature Malaysia
Case No. D2014-0344
1. The Parties
The Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is DomainsByProxy.com / Hans Kam of Scottsdale, Arizona, United States of America / Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <gentinghighlands.info> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2014. On March 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 11, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2014.
The Center verified that the Complaint together with the amended 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 April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. The Response was filed with the Center on April 15, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 12, 2014. 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 investment holding and management company of the Genting Group of Companies. The Complainant is a listed company in Malaysia and its core business is in leisure, hospitality and the casino operations.
The Complainant operates its leisure, hospitality and casino business under the GENTING trademark and it owns the Resorts World Genting (formerly known as Genting Highlands Resort) which is an integrated leisure and entertainment resort in Asia.
The Complainant is the owner of the GENTING trademark (as early as 2001) and has secured registrations of variations of this mark (including device marks) in Malaysia and in other foreign jurisdictions. Some of the trademark registrations and applications are standing in the name of Genting International Management Limited, an indirect subsidiary.
The Complainant also operates a website located at “http://www.genting.com/” that being the corporate website for the Genting Group as well as “http://www.rwgenting.com” being the website related to the Complainant’s resorts which commands heavy internet traffic. The Complainant has also registered numerous other domain names comprising of the trademark GENTING including “www.genting.com”. Aside from these domain names, the Complainant is an affiliate of Genting Hong Kong Limited who owns a number of domain names comprising of the trademark GENTING.
The Respondent operates a website located at “www.gentinghighlands.info” which brings the web users to page consisting of information regarding Genting Highlands Malaysia including the hotels available at the resort. The website is an information portal providing travel tips and planning advice for visiting Genting Highlands which is one of the many tourist destinations in Malaysia and is part of a collection of such websites comprising “www.visitmalaysia.info”.
The disputed domain name is created on July 23, 2009.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. It comprises the Complainant’s trademark GENTING in its entirety followed by the descriptive word “highlands”.
2. The mere addition of the descriptive term “highlands” to the Complainant’s GENTING trademark, does not alter the overall impression of the domain name as one connected to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent has no connection with the Complainant whatsoever. In particular, the Respondent has not been licensed or authorized by the Complainant to use the disputed domain name. Furthermore the domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registrations. It does not appear that the Respondent has at any time been commonly known by the disputed domain name. Furthermore, the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.
2. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
3. The Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from the Complainant’s website at “www.genting.com” and “www.rwgeting.com”. It is submitted that the Respondent is attempting to obtain commercial gain, whether directly or indirectly, by luring the Complainant’s customers to the Respondent’s own website by exploiting the Complainant’s trademark in conjunction with the word “highlands” which is synonymous with one of the Complainant’s principal business activities through its group of companies.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The disputed domain name containing the Complaint’s trademark solicits unauthorized hotel bookings.
2. The Respondent registered the disputed domain name with the primary aim of diverting Internet traffic intended for the Complainant to the Respondent’s website. Therefore, that the disputed domain name was registered with the intention of disrupting the Complainant’s business.
3. The Respondent also intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s trademark. It is highly unlikely that the Respondent was not aware of the Complainant’s well-known GENTING trademark. The intentional selection of the Complainant’s trademark combined with the word “highlands” a well known name for the resort, to form the disputed domain name, itself evidences the Respondent’s knowledge of the Complainant’s trademark and business.
4. Bad faith registration may also be inferred by the registration of a well known trademark. Therefore it may be inferred from the Respondent’s conduct in registering obvious combinations of the well-known GENTING mark and the descriptive “highlands” that such registration was in bad faith.
5. It may be inferred from the Respondent’s conduct in registering the domain name consisting of GENTING and “highlands” and the website providing information regarding the Complainant’s resort, that the Respondent was aware of the GENTING trademark. This creates a presumption that the disputed domain name was registered in bad faith.
The Respondent contends that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. The Respondent’s website at “www.gentinghighlands.info” has not attempted to pass off or represent the corporate body that is the Complainant, Genting Berhad or Genting Group, nor has it attempted to use the GENTING mark as a device or manner that implies any trade connection with the said company.
2. The website is simply a personal information portal providing travel tips and planning advice for visiting Genting Highlands – one of many tourist destinations in Malaysia – part of a collection of such websites comprising “www.visitmalaysia.info”.
3. The word “Genting” is naturally identical to words contained in Genting Berhad’s trademark, and is used to refer and describe a geographical holiday region that has become public knowledge among Malaysians and tourists.
4. Evidence of Genting Highlands being a geographical region and public landmark can also be seen on government-built road signs in Peninsular Malaysia, travel brochures and tourist maps issued by Malaysian Ministry of Tourism, and road maps made by government-sanctioned highway concessionaires and private mapping companies.
5. The “highlands” word contained in the domain is used to qualify and differentiate GENTING in this context as a geographical region away from any terms of official bearing and trademark. The term “highlands” is a topographical description and there are other localities in Malaysia that bear similar name, such as Cameron Highlands: Borneo Highlands and Lojing Highlands.
6. The term “genting” is also a common word that means “mountain pass” or “critical gap” in Malay, the local language of Malaysia, which is descriptive of the destination’s name. The meaning of Genting as “pinnacle” is even as quoted by one of the Complainant’s official sources on a travel ezine report.
7. Furthermore, the Complainant uses the term “Resorts World Genting”, and not “Genting Highlands”, to represent themselves officially in tourism-related materials.
The Respondent contends that it has rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent’s website presents casual information from a personal narrative that collects tourist attractions in the area include outlying ones for trip planning purposes – not a corporate profile or portal providing official links to casino, entertainment and other recognized/trademarked goods and services from the Complainant, Genting Berhad.
2. The Respondent’s website was created in 2009. Since then, the website grew out of a personal initiative to reach web audiences seeking travel information on destinations around Malaysia on an informal basis. All information contained in the website is original text, gleaned from research, homework and random trips up Genting Highlands to update information and photos on the website from time to time.
3. There are also many other travel information portals (local and international) featuring Genting Highlands that have long been established before the Respondent’s website even came about – similar in format, content, style and navigation. This common structure of web design is established by industry precedent and experience on what works best in making a good (online) information site for travel destinations. Therefore, mutual similarities exit amongst them. Just like the Respondent’s website “www.gentinghighlands.info”, all these other travel information websites above provide links or/and search boxes to third party/own hotel booking portal as well.
4. For accommodation, the Respondent’s website provides links through search boxes (supplied by Agoda) that point to hotels at http://www.agoda.com/city/genting-highlandsmy.html, which earns commission each time a guest departs from a booking. This is the only mode of revenue used on the website, and is standard (legal) procedure under affiliate schemes (“https://partners.agoda.com/affiliate.html”) of online hotel booking sites, themselves having to be endorsed and authorised by the Complainant, Genting Berhad in order to sell their rooms (in this case, Agoda).
5. It would be impossible for hotel booking website operators like Agoda to sell their hotel rooms without direct authorization from the Complainant, Genting Berhad as they own and manage the resort, and would not release rooms that are sold to guests if Agoda (or any other online hotel booking portal) is an “unauthorised” or scam site. By giving consent to Agoda to sell their rooms (with Agoda earning a commission for every sale), then participants of Agoda affiliate scheme are really partners helping to direct bookings through their blogs/websites that generates revenue for Resorts World Genting at the end of the cycle. Such affiliate schemes are also in use all over the World Wide Web by personal blogs, private websites and travel agencies.
6. It is very clear that “http://www.agoda.com” (and by extension, “www.gentinghighlands.info”) is not a scam or unauthorized site selling imaginary rooms at Genting Highlands or anywhere else. This is evident by the guest comments and reviews left on the hotel pages, the size of their Internet presence and online market share, and personal experience using their booking engine to stay at hotels.
The Respondent contends that the disputed domain name was not registered and is not being used in bad faith on the following grounds:
1. The website’s purpose is to attract visitors to Genting Highlands, and not to disrupt any business of Genting Berhad or attempt to represent/pass off their service mark. There is no use of known official terms and taglines (e.g., “Resorts World Genting”, “Genting Casino”, “Genting Berhad”, “Genting Group”, “City of Entertaiment” etc.) on any part of the website, nor is there use of their logo, icons and graphical style. A few photos that belong to Resorts World Genting appear on the website, but these photos are available for public download at their official media page.
2. The website does not purport to represent the company or their service mark in any form whatsoever including text, images and context – and when viewed and explored – can simply be construed as a free information travel site on Genting Highlands (including outlying tourist attractions) to the reasonable online surfer.
3. All text and information on the website have been completely processed and written by the Respondent, and if any excerpts appear elsewhere on the web, then they have been lifted without the Respondent’s knowledge.
4. All the photos that appear on the website were also personally taken by the Respondent’s camera, save for a few obtained from the web (e.g. from the Complainant’s Resorts World Genting’s media page).
5. In fact, the website has undergone an evolution since its inception in 2009, receiving updates and changes to its content and structure over time to its current status, and is in constant flux towards the future as it receives more updates pertaining to change in Genting Highland’s environment, attractions and other important factors, in view of serving Internet audiences and enriching the information superhighway.
6. This is personal effort on the part of the Respondent to make a good quality and freely accessible website has borne fruit in steady (and growing) website visitors, resulting in top ten search engine rankings accumulated over the years for popular related keywords such as “Genting Highlands” (“https://www.google.com/search?q=genting+highlands”).
7. Unfortunately, this may have attracted attention from certain parties who have misunderstood, misrepresented or connected falsely the intention, purpose and content of “www.gentinghighlands.info” in order to “protect assumed vested interests”, trademarks and online presence (e.g. search engine results) in a manipulative manner.
8. The disputed domain name has never been used (since its registration by the Respondent) for spam, malicious activities or an attempt to sell/benefit from the Genting trademark.
9. It is, and will be a free personal information travel site that covers just one of many tourist destinations in Malaysia under “www.visitmalaysia.info”.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the GENTING mark in connection with its leisure, hospitality and casino business.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s trademark GENTING in its entirety followed by the descriptive word “highlands”. In general, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. This is particularly the case if the incorporated trademark to constitute the dominant or principal component of the domain name and the trademark is an invented word which functions only as a badge of origin of the Complainant and its goods or services. However, a principal exception to this general rule is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name. The Panel finds that this exception does not apply to the disputed domain name in this case on the basis that the dominant portion of the disputed domain name, namely the Complainants GENTING mark, is not of a distinctive nature. The Respondent also argues that “genting” coupled with “highlands” is a term which refers to a geographical location in the Peninsular of Malaysia; that this is a popular and well known tourist destination in Malaysia. Therefore, the Respondent argues, the term “genting” although a registered trade mark by the Complainant together with the term “highlands” is a term which can also refer to a geographical location in Malaysia.
On this basis, while ordinarily a geographer term following a mark would be confusingly similar under the Policy, the Panel finds that there may be a question as to whether that the average consumers who are the Internet users seeking to purchase or download information about the Complainant’s products or services will be confused by the Respondent’s disputed domain name. This conclusion is further buttressed by the fact that the Complainant and its leisure, hospitality and casino business are also widely known as RESORT WORLD GENTING and not merely GENTING.
On the balance, the Panel finds that further evidence would be required to make a determination as to the first part of the test.
It is not necessary to make a determination however due to further findings under the second and third elements.
B. Rights or Legitimate Interests
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.)
The Panel finds that based on the reasons adduced by the Complainant in the Complaint, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Given the circumstances broadly described in paragraphs 4(c)(i) and (iii), the Panel finds that the Respondent has successfully rebutted this presumption. The Panel finds that the Respondent has been using the disputed domain name since its registration in 2009 for the purposes of providing useful travel information to Internet users in respect of the tourist destination Genting Highlands located in the Peninsular of Malaysia, and has continued to use the disputed domain for this purpose. The Panel finds that there is sufficient evidence which demonstrates that the Respondent has been using the disputed domain name for the bona fide purpose of information sharing and is providing a valuable service to internet users seeking to find out more about a particular location, so as to sufficiently rebut the Complainant’s case as to rights or legitimate interests.
Accordingly, the Panel finds that the Complainant has failed for the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s 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 has argued that the Respondent registered its domain name with the primary aim of diverting Internet traffic intended for the Complainant to the Respondent’s website. Therefore, that the disputed domain name was registered with the intention of disrupting the Complainant’s business.
However, the Panel finds that the disputed domain name at the Respondent’s website “www.gentinghighlands.info”, like other travel information websites provides links or/and search boxes to third party/own hotel booking portal such as Agoda. Internet users do not make hotel bookings directly with the Respondent. The Respondent merely links Internet users seeking hotel accommodation to legitimate third party hotel portal such as Agoda who must presumably be authorised by the Complainant to promote and sell available hotel rooms. Based on this reasoning, the Panel accepts the Respondent’s contention that by the Complainant giving consent to Agoda to sell their rooms (with Agoda earning a commission for every sale), it logically follows that participants of Agoda affiliate scheme would have an argument of implied consent to create bookings that are ultimately for the Complainant’s resort and its Resorts World Genting.
Accordingly, on the narrow of this case, in particular that the disputed domain name comprises the Complainant’s trademark plus a geographic term which appears to be in common usage, and that the Respondent does not attempt to copy or mimic the Complainant’s website (i.e., does not seek to confuse Internet users) but rather is informative in its own rights, the Panel finds that the Complainant has not established that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with a Complainant’s 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 under the Policy.
The Panel thus finds that the Complainant has failed for the third part of the test.
The Panel notes in conclusion that this is a finely balanced case, and that this Decision should not be viewed as foreclosing any court scrutiny should the parties (who are from the same jurisdiction) deem that appropriate.
For the foregoing reasons, the Complaint is denied.
Susanna H.S. Leong
Date: May 26, 2014