WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Millennium & Copthorne International Limited, Millennium & Copthorne Hotels plc v. M/s Hotel Millennium Continental Private Limited / Nikhil Gopalan
Case No. D2014-2280
1. The Parties
The Complainants are Millennium & Copthorne Hotels plc and Millennium & Copthorne International Limited, Group Legal Counsel of Singapore, represented by Amica Law LLC, Singapore.
The Respondents are M/s Hotel Millennium Continental Private Limited and Nikhil Gopalan of Kochi, India, represented by Marks & Rights, India.
2. The Domain Name and Registrar
The disputed domain name <millenniumcontinental.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2014. On December 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2014, 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 January 14, 2015, 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 January 19, 2015.
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 January 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. The Response was filed with the Center on February 12, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on February 18, 2015. 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 first Complainant Millennium & Copthorne Hotels plc is a publicly-listed hotels and resorts company incorporated under the laws of England and Wales.
The second Complainant is a wholly-owned subsidiary of the first Complainant. It functions, inter alia, as the management vehicle for the first Complainant for managing the hotels, in Asia, which are grouped under the Millennium Hotels and Resorts umbrella, including the hotels in the first Complainant’s Group branded as “Millennium”, “Grand Millennium”, “Copthorne”, and “Kingsgate” hotels.
The Complainants own, manage and operate, directly and indirectly, 46 MILLENNIUM hotels around the world, in Europe, Asia, Middle East & North Africa, North America, Oceania. Additionally, the Complainants also enjoy partnership programs with some of the world’s most prominent airlines in their travel benefits, such as Singapore Airlines, Asia Miles and American Airlines (among others).
The Complainants were awarded the “Best 5-Star Business / Corporate Hotel (Gold) in the 2013 MENA Travel Awards, the “Best Business Hotel 2013” by Emigrate to Shanghai magazine, the “Best Business Hotel 2012” by Voyage Magazine, and the “Gold SABRE Award -Travel and Tourism Category” at the 8th Annual EMEA Sabre Award by Holmes Group in 2012.
The Complainants claim, since 1995, rights over the trademark MILLENNIUM for hotel properties in numerous countries around the world. Specifically, the second Complainant currently owns 71 trademark registrations for MILLENNIUM, in approximately 40 countries around the world. Amongst others, the second Complainant is the owner of the following trademark registrations for MILLENNIUM:
- Algerian trademark registration No. 75941, registered on December 10, 2008, in classes 35 and 43;
- Bangladesh trademark registration No. 116600 and 116599, registered on July 3, 2008, in class 35 and 36, respectively;
- Canadian trademark registration No. TMA754,928, registered on December 9, 2009;
- Chinese trademark registration Nos. 1085964 registered on August 21, 1997, in class 35, 10480920, registered on April 7, 2013, in class 36;
- Community trademark registration No. 310623, registered on September 24, 1998, in classes 35 and 42;
- Hong Kong trademark registration No. 302155699, registered on February 8, 2012, in classes 36 and 37, and 947715, registered on February 14, 1997, in class 42;
- Indonesian trademark registration No. 404382, registered on November 11, 1997, in class 35;
- United Arab Emirates trademark registration No. 123207 and 123208, filed on December 14, 2008, in classes 35 and 43, respectively;
- Indian trademark registration No. 1248342, filed on November 3, 2003, for the following services in class 35: “business and hotel management consultancy, business consultancy relating to catering; business advisory services relating to franchising included in class 35”.
The Complainants operate a web site at “www.millenniumhotels.com”, where they provide information about MILLENNIUM hotels and reservation options to Internet users around the world. The domain name <millenniumhotels.com> was registered on January 30, 1999 in the name of the second Complainant, which also owns the domain names <millenniumhotels.net> and <millenniumhotels.org>.
The disputed domain name <millenniumcontinental.com> was registered on April 4, 2012 and is pointed to a web site which promotes the hotels and reservation services provided by the first Respondent.
The first Respondent in this administrative proceeding is “M/s Hotel Millennium Continental Private Limited”, located in Cochin, India. It is the entity referred to in the “About” and “Contact Us” pages of the website hosted at the disputed domain name and with which the Complainants dealt with in pre-complaint correspondence.
The second Respondent in this administrative proceeding is Nikhil Gopalan of the organization Cokonet Technologies, located in Cochin, India. He is the Registrar-identified domain name Registrant on record, according to the Registrar’s email communication sent to the Center on December 31, 2014, in response to the Center’s request for verification in connection with the disputed domain name.
5. Parties’ Contentions
The Complainants state that, as a result of their ownership, management and operations of their numerous hotels and resorts around the world, and their strategic affiliation and association with various airlines, the Complainants have come to be recognized as a company in the hotel, resorts and hospitality industry and have acquired valuable, substantial goodwill in the MILLENNIUM hotel brand and trade mark, in respect of hospitality and related services.
The Complainants inform the Panel that they expend a considerable amount on advertising and promotion of their MILLENNIUM trademarks, products and services, encompassing the provision of hotel and accommodation, hospitality services and related services, including food and beverage, health, fitness and therapeutic services.
The Complainants contend that the disputed domain name is confusingly similar with the Complainants’ trademark MILLENNIUM, since it incorporates the trademark in its entirety and any reasonable person would immediately assume that the disputed domain name, or a website associated with the disputed domain name as its address, will direct the person to the official or approved website of the Complainants. The Complainants also highlight that, where the use of a trademark is with a generic term, this is not a sufficient difference to render the domain name dissimilar from a trademark and thus the addition of the word “continental”, which is a descriptive or generic term in the hotel or hospitality trade, does not differentiate or distinguish the disputed domain name from the Complainants’ MILLENNIUM name and trademark.
The Complainants point out that the registration of the disputed domain name has the effect of diverting or distracting potential customers away from the Complainants’ web site at “www.millenniumhotels.com”, causing losses of customers which are unknown and unquantifiable, hence representing a potential huge loss of revenue to the Complainants.
The Complainants assert that the continued use of the disputed domain name by the Respondents will erode the distinctiveness of the MILLENNIUM name and trademark and possibly lead to tarnishing of the trademark.
The Complainants also state that MILLENNIUM is a distinctive and well-known trade mark, and that in an earlier UDRP case, a panelist found that the Complainants’ hotels enjoy “widespread international reputation”. Therefore, the Complainants conclude that it is not a mark which other traders should claim to be entitled to use, unless they were seeking to create a misleading impression of association with the Complainants.
With reference to the Respondents’ rights or legitimate interests in the disputed domain name, the Complainants state that neither the Respondents are a licensee of the Complainants or are in any other way authorized to use the Complainants’ MILLENNIUM trademark. It is underlined that the second Complainant has owned the MILLENNIUM trademark in India since 2003, almost a decade before the disputed domain name was registered.
The Complainants further state that the use of a domain name cannot be bona fide where the use is a deliberate infringement of another party’s rights, and concludes that the Respondents’ use in fact constitutes infringement of the Complainants’ trademark rights in India or amounts to the common law tort of passing off.
As to the bad faith requirement, the Complainants contend that, where a trademark is so obviously connected with such a well-known product or service, the use by someone with no connection to the product or service constitutes bad faith. They also submit that the MILLENNIUM name and trademark is sufficiently well-known that its use as a domain name would similarly indicate knowledge on the part of the Respondents.
The Complainants also state that an ordinary Internet user familiar with the goods or services under the MILLENNIUM name and trademark would, upon seeing the disputed domain name, be misled into believing that an association exists between the disputed domain name and the trademark owner and that the Complainants own and operate a MILLENNIUM hotel located in that particular city of India where the first Respondent operates.
The Complainants additionally state that the first Respondent did not respond to a cease and desist letter sent by the Complainants’ solicitors and allege that such a circumstance is further evidence of bad faith registration and use and of the disputed domain name.
The Respondents state that the Complainants cannot have exclusive rights over the common word “millennium” which is descriptive and is being used as a trademark by a multitude of entities, as shown e.g., in the WIPO Global Brand Database. They also state that it is a general practice for businesses to either prefix or suffix different words alongside the common dictionary word “millennium”, so that the combination in its entirety forms a distinctive mark.
The Respondents contend that the Complainants as well as the first Respondent are using their respective marks alike, in a mutually distinctive manner, without any scope for confusion, and assert that the respective marks have happily coexisted.
Moreover, it is pointed out that the first Respondent has prior rights over the trademark MILLENNIUM in the United Arab Emirates and in India, as prior adopter and user of the mark.
In particular, the Respondents highlight that, as early as in the year 1998, the promoter of the first Respondent, Mr. V.K. Mohammed, had bona fide adopted the mark MILLENNIUM in relation to catering services by incorporating the firm “Millennium Caterers Co. L.L.C.” in the Emirate of Abu Dhabi, United Arab Emirates. Subsequently, a Millennium Express Supermarket was established in the United Arab Emirates in 2004 and Millennium Hypermarkets have established in United Arab Emirates and Oman in 2010.
The first Respondent highlights that, at the time of the adoption of its mark MILLENNIUM in relation to catering and food services, no person including the Complainant was using the said mark in the Middle East, nor was the Complainants’ mark a distinctive one. Thus, the Respondents claim that the founder of the first Respondent had established common law rights over the mark MILLENNIUM since 1998.
The first Respondent subsequently started using the mark MILLENNIUM in relation to hotel services in India in 2004 by the establishment of a “Millennium Hotel and Tourist Home” at Thrissur in Kerala State. The first Respondent M/s Hotel Millennium Continental Private Limited was then incorporated, on October 10, 2011, to take over the hospitality business of Millennium Group.
The Respondents rebut the Complainants’ allegations that the disputed domain name is likely to mislead the potential customers of the Complainants, indicating that the class of customers, as well the geographical area of operation of the first Respondent and the Complainants are entirely different and the Complainants have failed to provide any evidence of customer confusion.
They also state that, even though the Complainants claim registration of an Indian mark MILLENNIUM in 2003, the Complainants have failed to use the mark in commerce in India and have thus registered the mark in said country (in the name of the second Complainant) without any bona fide intention to use the same. According to the Respondents, the Complainants have also failed to provide any evidence as to the distinctive nature of the Complainants’ trademark in India.
The Respondents further assert that Mr. V.K. Mohammed, founder of the first Respondent, has filed a trademark application in India, on December 9, 2009, for services of providing food and drinks and temporary accommodation in class 43. Said application (No. 1893724), is under evaluation of the Indian Trademark Registry.
It is also stated that the first Respondent was bona fide using the trademark MILLENNIUM and the disputed domain name well before receiving the Complainants’ notice of alleged infringement of the Complainants’ rights, dated December 13, 2013.
The Respondents also rebut the Complainants’ assertions as to the Respondents’ bad faith, stating that knowledge of the Complainants’ rights does not, in itself, preclude the Respondents from having a right or legitimate interest in the domain name and that the connection, or lack of it, between the first Respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate”.
The Respondents further inform the Panel that the founder of the first Respondent started another entity by the name “Millennium Gold” in 2009 for retailing in jewelry and ornaments and that he also registered a trademark in India (No. 1873975) for MILLENNIUM GOLD. They also state that the art work comprising the depiction of “Millennium Gold” along with its distinctive logo has already been granted a copyright registration in India (No. A-103586/2013), according to the Indian Copyright Act of 1957, and that the first Respondent has registered and maintains the domain names “www.millenniumgold.in” and www.millenniumgroupllc.com” for beneficial use for its business activities.
As to the Complainants’ claims on the Respondents’ bad faith, the Respondents highlight that the founder of the first Respondent adopted the mark MILLENNIUM in 1998, before the creation of the Complainants’ web site “www.millenniumhotels.com” in 1999. The Respondent further indicates that the Complainants have not produced any evidence to state that the Respondents were aware or might have been aware of the Complainants at the time of adoption of the mark MILLENNIUM in 1998.
With reference to the use of the disputed domain name, the first Respondent claims to have bona fide acquired it for beneficial usage of its business activities in India, and not in any manner to prejudice the Complainants’ rights by intentionally attempting to attract Internet users worldwide to the first Respondent’s web site for illegal commercial gain, and creating a likelihood of confusion with the Complainants’ mark.
They also state that the services offered by the first Respondent are confined to India, and that the web site published at the disputed domain name only features such services, without causing customer confusion and deception.
The Respondents also inform the Panel that the first Respondent replied to a notice of infringement of the Complainants dated April 2, 2014, refuting all the allegations, and that the first Respondent has also filed a Caveat Petition before the District Court of Ernakulam, apprehending a trademark infringement suit by the Complainant.
The Respondents conclude that the Complainants have rushed through and initiated this administrative proceeding primarily to harass the domain name holder and are attempting a Reverse Domain Name Hijacking. Therefore, the Respondents request that the Panel declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a 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 Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainants have rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Matter: Identity of Respondent
The Panel preliminarily notes that the Response was filed in the name and on behalf of both Respondents in this proceeding. However, a review of the allegations in the Response (summarized in the section above) and the documents attached thereto makes clear that the second Respondent is only a nominal registrant and that the beneficial owner of the disputed domain name is the first Respondent, in respect of which the requirements provided by paragraph 4(a)(ii) and 4(a)(iii) of the Policy should be thus evaluated.
B. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of a number of trademark registrations for MILLENNIUM registered in the name of the second Complainant, including a word trademark registration in India.
The disputed domain name <millenniumcontinental.com> entirely reproduces the Complainant’s registered trademark MILLENNIUM with the addition of generic word “continental” and the generic Top-Level Domain (gTLD) “.com”.
According to previous UDRP decisions, 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” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Furthermore, for the purposes of determining identity or confusing similarity in UDRP proceedings, the gTLD is typically not considered.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark MILLENNIUM according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, par. 2.1).
In the case at hand, it is clear that the Complainants have not authorized the Respondents’ use of the trademark MILLENIUM.
However, the Respondents have claimed a legitimate interest in the mark MILLENNIUM and in the disputed domain name based on the first Respondent’s use of this sign in its company names, trademark and domain names. The following evidence has been submitted by the Respondents to substantiate their allegations:
- Translated copy of the certificate of endorsement of commercial registration issued on September 26, 1998, by the Municipality department of Abu Dhabi in favor of the company “Millennium Caterers Co. L.L.C”;
- Translated copy of trade license dated October 3, 1998, issued in favor of “Millennium Caterers Co. L.L.C”;
- Translated copy of Membership Registration Certificate for the year 1999 in favor of “Millennium Caterers Co. L.L.C” issued by the Abu Dhabi Chamber of Commerce and Industry;
- Copy of a communication, dated August 24, 2004, issued by the Office of the Electrical Inspector, Thrissur to Millennium Hotel;
- Copies of bills raised towards “Millennium Tourist Home” in 2007;
- Copy of the certificate of incorporation, dated October 10, 2011, and of the Memorandum of Association of the first Respondent company, stating that the main objects to be pursued by the company are “to carry on the business of lodging houses, hoteliers, hotel proprietors, hotel managers, refreshment contractors and caters, refreshment room proprietors and restaurant keepers”;
- Copy of the trademark application No. 1893724 for the figurative mark MILLENNIUM, filed on December 9, 2009, for services in class 42, in the name of Mr. V.K. Mohammed as proprietor of the “M/s Millennium Group”;
- Copy of the certificate of the trademark registration No. 1873975 for MILLENNIUM GOLD, filed on October 16, 2009, for services in class 35, in the name of Mr. V.K. Mohammed, trading as “Millennium Gold”;
- Copy of an extract of the Register of Copyright relating to the Copyright registration number A-103586 / 2013 for protection of the depiction of “Millennium Gold” as an artistic work in India, issued in the name of Mr. V.K. Mohammed of “M/s Hotel Millennium Continental Private Limited”;
The above evidence shows that the first Respondent, which is the beneficial owner of the disputed domain name and controls the correspondent web site, was established with the name “M/s Hotel Millennium Continental Private Limited” several months before the registration of the disputed domain name, which occurred on April 4, 2012, and almost three years before receiving notice of the alleged trademark infringement by the Complainants. Moreover, it has been proved that the first Respondent belongs to a group of companies which all include “Millennium” in their company names, the first of which was incorporated in 1998, before the filing of the Complainant’s trademark MILLENNIUM in India.
In addition, the first Respondent’s trademark application for MILLENNIUM and the one for MILLENNIUM GOLD (in the name of Mr. V.K. Mohammed, trading as “Millennium Gold”) were filed by the first Respondent five years before receipt of any notice of the dispute, and also the first Respondent’s copyright registration for MILLENNIUM GOLD as an artistic work is predated.
The Panel notes that the Complainants own several trademark registrations worldwide for MILLENNIUM in connection with hotel services, including in India since 2003, and that the Complainants’ name and trademark appear to be widely known in the related field of activity, having received awards in the recent years (2012 and 2013). Therefore, it is possible that the first Respondent could have been aware of the Complainants’ trademark MILLENNIUM for hotels when it established its company (in 2011), and registered the disputed domain name (in 2012) to provide identical services.
However, in view of the particular circumstances of the case, considering the plausible evidence provided of the use, by the first Respondent and its founder, of the sign MILLENNIUM in connection with different activities, including hotel services, since several years before receipt of any notice of the dispute, and in light of the fact that no allegation or evidence has been submitted by the Complainants in the present proceeding to demonstrate their actual use of their mark MILLENNIUM in connection with hotels in India, where the first Respondent operates, as well as the possible confusion or deception caused by the Respondent’s use of the disputed domain name, the Panel is inclined to find that the Complainants have not discharged their burden of proving the Respondent’s lack of any right or legitimate interest in the disputed domain name. Indeed, the Panel finds that the first Respondent has, at least, demonstrated that it is commonly known by a name substantially corresponding to the disputed domain name (albeit not necessarily prior to the Complainant’s use of its mark).
D. Registered and Used in Bad Faith
As mentioned above, the known character acquired by the Complainants’ trademark in the field of hotel services in the recent years suggests that the first Respondent could have been aware of the Complainants and their mark at the time of the establishment of the first Respondent company devoted to hotel services and of the subsequent registration of the disputed domain name.
However, in light of the particular circumstances of the case as detailed in section 6.B above, the Panel finds that, on balance, it is not sufficient to conclude that the Respondents’ registration of the disputed domain name amounts to bad faith.
For the same reasons, the Panel does not find that the disputed domain name is being used in bad faith.
E. Reverse Domain Name Hijacking
The Respondents state that the Complainants rushed through and initiated this administrative proceeding primarily to harass the Respondents and they accuse the Complainants of Reverse Domain Name Hijacking. The Panel, however, does not deem appropriate, given the circumstances of the case, to issue a finding of Reverse Domain Name Hijacking. While it appears on the record before the Panel that the Respondent was expanding its business offerings under the “millennium” house moniker, rather than seeking to unfairly target the Complainant’s hotel-related activities in registering the dispute domain name, the Panel cannot say that such targeting is beyond possible, but that resolution of such question would require evidentiary inquiry beyond the scope of this Policy proceeding. In other words, the Complainant’s claim, while unsuccessful here, was not so lacking as to have no basis whatsoever on which to have brought the present proceeding.
For the foregoing reasons, the Complaint is denied.
Date: March 6, 2015