WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Far East Orchard Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Roger Klock
Case No. D2017-1088
1. The Parties
Complainant is Far East Orchard Limited of Singapore, represented by Allen & Gledhill, Singapore.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Roger Klock of Saint-Priest, France.
2. The Domain Name and Registrar
The disputed domain name <orchardparadehotel.org> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 9, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on June 13, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2017.
On July 6, 2017, July 7, 2017, and July 9, 2017, the Center received email communications from Complainant’s reservations department that appear to be irrelevant to this proceeding.
The Center appointed John C McElwaine as the sole panelist in this matter on July 12, 2017. 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
Complainant is the owner of Orchard Parade Hotel and is a member of Far East Organization, one of Singapore’s largest private property developers. Complainant does not own any registered trademarks for Orchard Parade Hotel and will rely upon common law or unregistered trademark rights.
Respondent registered the Domain Name on or around January 6, 2011. The website located at the Domain Name purports to be the “Orchard Parade Hotel Unofficial Site”.
5. Parties’ Contentions
The Orchard Parade Hotel is located in Singapore and is operated by Complainant. The Orchard Parade Hotel has been in operation for over 26 years and is located at the entrance of Singapore’s most famous shopping district, Orchard Road. Complainant contends that the Orchard Parade Hotel is an internationally recognized hotel, which consistently has an average occupancy rate over 80 percent and has generated over SGD 170 million in revenue since 2010.
Complainant asserts that its Orchard Parade Hotel has been featured in numerous media sources including newspaper articles dating as far back as 1991 when the hotel changed its name from Ming Court Hotel to Orchard Parade Hotel.
Respondent is an individual with a residence in France as listed in the WhoIs data. The Domain Name was registered on or around January 6, 2011. Sometime thereafter a website was developed at the Domain Name that is an information page for the Orchard Parade Hotel bearing a heading, “Orchard Parade Hotel Unofficial Site”. The website links to another website called Hotel2K.
With respect to the first element of the Policy, Complainant alleges that it has acquired common law or unregistered trademark rights in the mark ORCHARD PARADE HOTEL. Complainant relies upon its use of the mark for 26 years, significant amounts of money spent on marketing, awards it has received between 2011 and 2016, and unsolicited press coverage. Complainant contends that the Domain Name is identical to its unregistered trademark rights in ORCHARD PARADE HOTEL.
With respect to the second element of the Policy, Complainant points out that it has not granted Respondent a license or any other authorization to use the mark Orchard Parade Hotel. Complainant is not in any way associated or affiliated with Respondent. There is also no relationship between Complainant and Respondent that gives rise to any permission, or other right granted by Complainant to Respondent, to use the mark ORCHARD PARADE HOTEL or to register and/or use any domain name incorporating this mark.
In addition, Complainant alleges that the website operated by Respondent at the Domain Name is not used for a bona fide offering of services. Complainant alleges further that the website at the Domain Name contains a link which purports to enable users to obtain hotel rates at Orchard Parade Hotel for stays at the hotel. However, when a user clicks on the link to request the hotel rates, the Domain Name automatically redirects users to a third-party website at “www.hotel2k.com” (“the Hotel2k Website”). It is alleged that the Hotel2k Website purports to set out hotel rates for Complainant’s hotel Orchard Parade Hotel and also lists out hotel rates for other competing hotels. Complainant asserts that the Hotel2k Website is not an authorized booking agent of Complainant. Likewise, Complainant alleges that such use of the Domain Name could not be noncommercial or fair use. Complainant re-alleges that if a user was to attempt to make any booking at Complainant’s Orchard Parade Hotel on Respondent’s website at the Domain Name, the user is redirected to the Hotel2k Website which purports to allow users to book rooms at Complainant’s Orchard Parade Hotel as well as competitors’ hotels.
With respect to the third element of the Policy, Complainant claims that the ORCHARD PARADE HOTEL mark is a well-known hotel worldwide and that this mark was used long before the registration of the Domain Name. As such, Respondent must have been aware of Complainant and its business which operates under the Orchard Parade Hotel mark when it registered the Domain Name. Further evidence that Respondent was aware of Complainant’s ORCHARD PARADE HOTEL mark is the content of Respondent’s website displayed at the Domain Name. Complainant contends that the website operated by Respondent automatically redirects Internet users to a third-party website when the user clicks on a link on Respondent’s website to view hotel rates. Complainant asserts that redirecting such traffic to a website which uses a third party’s mark in a domain name in an attempt to attract more visitors, by exploiting the goodwill of the mark, has been held to constitute a registration and/or use in bad faith under paragraph 4(b)(iv) of the Policy.
Complainant also alleges that Respondent intentionally registered and used the Domain Name, which consists entirely of Complainant’s well-known mark to generate traffic to the Hotel2k Website. Complainant points out that it can be expected that many Internet users may type <orchardparadehotel.org>, expecting to be directed to Complainant’s website. Complainant asserts as an additional ground for bad faith that by registering the Domain Name and redirecting web traffic to the Hotel2k Website, Respondent is intentionally using the Domain Name to attract Internet users who actually intended to search for Complainant to Respondent’s website or the Hotel2k Website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
In this matter, Complainant does not possess a trademark registration for the ORCHARD PARADE HOTEL mark and instead relies upon having established unregistered trademark rights in said mark. As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), because of the global nature of the Internet and Domain Name System, the fact that a complainant must show established acquired distinctiveness does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP. See WIPO Overview 3.0 at section 1.3. In fact, unregistered rights have been found to support standing to proceed with a UDRP complaint including where the complainant is based in a civil law jurisdiction. See id.
Here, Complainant has established that it used the mark for approximately 21 years before the Domain Name was registered by Respondent. In addition, Complainant submitted facts that were not rebutted by Respondent showing numerous awards and claiming significant marketing efforts. Importantly, Complainant established that Respondent targeted Complainant’s ORCHARD PARADE HOTEL mark by virtue of the content of Respondent’s website. Such content strongly supports Complainant’s assertion that Complainant’s ORCHARD PARADE HOTEL mark has achieved significance as a source identifier, and calls for a justification or response from Respondent In light of the above, the Panel finds that Complainant has established unregistered trademark rights in the ORCHARD PARADE HOTEL mark.
The Domain Name is identical to Complainant’s ORCHARD PARADE HOTEL mark. Based upon the foregoing, the Panel finds that Complainant has met its burden of showing that the Domain Name is identical or confusingly similar to Complainant’s ORCHARD PARADE HOTEL mark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Complainant contends there has never been a relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point.
Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 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.”
The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.
There is no evidence to suggest that Respondent has ever used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Therefore, Respondent cannot establish rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy. Respondent is using the Domain Name in connection with a website that purports to offer hotel reservations. However, clicking on such links takes the user to the Hotel2k Website. Respondent’s website contains no indicator of source other than a heading “Orchard Parade Hotel Unofficial Site”. Here, given that Respondent has used a Domain Name identical to Complainant’s trademark, no other source of the website is provided, and no explanation of the “unofficial” nature of the website is provided, the Panel finds that the Domain Name is not connected with a bona fide offering of services. See, e.g., Six Continents Hotels, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Peiyan Yao, WIPO Case No. D2013-0660 (finding that a respondent who developed a website at the domain name <hotelindigoshanghai.com> was not using this domain name in connection with a bona fide offering of services where competing hotel reservations could be made for the complainant’s hotel).
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent purports to offer hotel reservations on its website. Such activity does not amount to a fan site, criticism or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (respondent’s “website was clearly and obviously a site that was highly critical of Complainant”).
To the extent that Respondent may be considered a “reseller” of Complainant’s hotel rooms, the Panel finds that the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) to be the appropriate analysis for this case. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:
(i) Respondent must actually be offering the goods or services at issue;
(ii) Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(iii) Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
(iv) Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, Respondent is not offering reservations services for Complainant’s hotel. Instead, potential customers are linked to the Hotel2K Website. The Hotel2K Website aggregates hotel reservation offers from several different online travel sites, such as Booking.com and Priceline.com. Both the Hotel2K Website and the other online travel sites providing reservation information for Complainant’s hotels include the ability to search for other Singapore hotels thereby providing the opportunity for a bait and switch. In addition, as discussed above the mere inclusion of “Unofficial” does not clearly disclose Respondent’s relationship with Complainant. In fact, no information whatsoever is provided about Respondent.
Accordingly, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the content of the website displayed at the Domain Name clearly indicates that Respondent registered the Domain Name with the intent of attracting Internet users for commercial gain by creating confusion as to Complainant’s sponsorship of or affiliation with Respondent’s websites. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. See, e.g., Six Continents Hotels, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Peiyan Yao, supra.
To the extent that the addition of “Unofficial” to the header may be interpreted as a disclaimer, the Panel finds that such a disclaimer is insufficient. The disclaimer does not identify the source of the website and does not specifically identify that Respondent is not related to Complainant. Moreover, in this case, the Domain Name is identical to Complainant’s ORCHARD PARADE HOTEL mark. As such, Internet users searching for Complainant are more likely to be diverted or to assume that Respondent’s use of the Domain Name is authorized or connected to Complainant. As stated by the WIPO Overview 3.0, section 3.7, “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.”
Respondent could have picked any number of names distinct from Complainant or used its true identity, but instead registered and used a Domain Name identical to Complainant’s ORCHARD PARADE HOTEL mark and designed a website to trade off Complainant’s goodwill. Respondent then used a privacy service to shield its identity from the WhoIs database. UDRP panels have recognized that, although privacy shields provide some benefits, they are often used for “more nefarious ends, such as obstructing proceedings under the UDRP, [and] hiding evidence of bad faith cybersquatting patterns….” Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753; see also The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156 (“The attempt by the Respondent to hide its identity … support[s] a finding of bad faith”.) The Panel finds that in the circumstances of this case, Respondent’s use of a privacy service further supports the Panel’s finding of bad faith. Respondent has failed to respond or otherwise explain its actions.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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, <orchardparadehotel.org>, be transferred to Complainant.
John C McElwaine
Date: July 26, 2017