WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fairmont Hotels & Resorts (U.S.) Inc. v. Kate Wood, Luxury Havens
Case No. D2018-0484
1. The Parties
Complainant is Fairmont Hotels & Resorts (U.S.) Inc. of Maryland, United States of America ("United States" or "US"), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Kate Wood, Luxury Havens of Essex, Brentwood, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <fairmontmaldives.com> (the "Domain Name") 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 2, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 31, 2018.
The Center appointed Gregor Vos as the sole panelist in this matter on April 12, 2018. 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 isthe owner of the following trademarks (hereafter: the "Trademarks"):
- US Trademark registration No. 982668 for FAIRMONT (design), registered on April 23, 1974;
- US Trademark registration No. 982669 for FAIRMONT (design), registered on April 23, 1974;
- US Trademark registration No. 983000 for FAIRMONT, registered on April 30, 1974;
- US Trademark registration No. 1656488 for FAIRMONT PRESIDENT'S CLUB, registered on September 10, 1991;
The Domain Name was registered by Respondent on September 8, 2017. The Domain Name resolves to a website which shows the text: "Notice: This domain had been redirected. If you are the registrant of this domain, please log into you account and confirm that your contact information is correct".
5. Parties' Contentions
Complainant asserts that the Domain Name is confusingly similar to the Trademarks, as it consists of nothing more than the Trademarks, the geographical indicator "maldives" and the ".com" generic Top-Level Domain ("gTLD") extension. According to Complainant, the elements "maldives" and ".com" do not prevent likelihood of confusion. The gTLD cannot be taken into consideration when assessing the confusing similarity. In addition, the geographical indicator would add rather than diminish the likelihood of confusion.
Furthermore, Complainant claims that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant states that it has not granted Respondent any license, permission or other right by which Respondent could own or use a Domain Name incorporating the Trademarks. Complainant also submits that there is no evidence that Respondent ever has been known by the Domain Name or that it has any plans to make a bona fide use of the Domain Name. Complainant further states that Respondent has registered the Domain Name shortly after news report began to appear announcing the upcoming opening of the first Fairmont hotel in the Maldives. According to Complainant, Respondent apparent reason for registering the Domain Name was for financial gain or to prevent Complainant from registering and using the Domain Name itself.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. Complainant states that through Complainant's and related entities' widespread, extensive use of the Trademarks in connection with hotel services, as well as its investments made in the promotion of the Trademarks, the Trademarks would have become famous and well-known throughout the world. Consequently, it would be inconceivable that Respondent was unaware of the Trademarks when it registered the Domain Name. According to Complainant, the fact that Respondent registered the confusingly similar Domain Name without authorization is in itself evidence of bad faith. Complainant emphasizes that the concept of a domain name "being used in bad faith" is not limited to positive action.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the Policy, a request to transfer a domain name must meet three cumulative conditions:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Only if all three elements are fulfilled, the Panel is able to grant the remedies requested by Complainant.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark in which it has rights. Complainant has sufficiently proven that there are FAIRMONT trademarks in which it has rights.
The threshold test for confusing similarity under the Policy involves a comparison between the Trademarks and the Domain Name to assess whether the Trademarks are recognizable within the Domain Name. For the purpose of assessing confusing similarity under the Policy, the gTLD suffix (in this case, ".com") is generally ignored in the comparison between the Domain Name and the Trademarks (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademarks entirely. Additionally, the Domain Name contains the geographical term "maldives". In line with consensus panel view, the Panel finds that the addition of this geographical term to the Trademarks in the Domain Name is not sufficient to avoid a finding of confusing similarity (see Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; and Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287). Therefore, the Panel finds that the Domain Name is confusingly similar with the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Complainant bears the burden of proof of showing that Respondent has no rights or legitimate interests in the Domain Name. However, if Complainant succeeds in making a prima facie case, the burden of production shifts to Respondent, which will then have to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include i) use of the domain name in connection with a bona fide offering of goods or services; ii) being commonly known by the domain name; and iii) making legitimate noncommercial or fair use of the domain name.
Complainant has stated that Respondent was not authorized or licensed to use the Trademarks. In addition, Complainant submitted that there is no evidence that Respondent is commonly known by the Domain Name. Furthermore, there seems to be no evidence of Respondent's use, or demonstrable preparation of use, of the Domain Name in connection with a bona fide offering of goods and services.
The Panel finds that this sufficiently establishes Complainant's prima facie case. The burden of production therefore shifts to Respondent. On its part, Respondent has not provided any indications of rights or legitimate interests in the Domain Name.
Considering the file before it, the Panel holds that Respondent has no rights or legitimate interests in the Domain Name in the sense of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that given Complainant's and related entities' longstanding, widespread and extensive use of the Trademarks, it would not be feasible to consider that Respondent – at the time of the registration of the Domain Name – could not have known of the Trademarks.
In line with consensus Panel view, the Panel finds that registration a domain name that is confusingly similar (particular domain names incorporating the trademark plus a descriptive term) to a widely-known trademark by an unaffiliated entity is suggestive of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). In this case, the Panel finds that this presumption is enhanced by the fact that the Domain Name was registered shortly after it was announced that a Fairmont hotel would open in the Maldives.
Furthermore, the Panel notes that there is ambiguity about the true identity of Respondent. The contact details which Respondent has provided when registering the Domain Name appear to be incorrect. After sending a letter to the provided postal address, Complainant received a letter from the actual resident of that address stating that it is unfamiliar with Respondent. The Center received a similar response after sending written notice regarding this proceeding to the provided address.
These circumstances are enough in the Panel's view to characterize bad faith registration and use in the present case.
Consequently, the Panel finds that the requirement under paragraph 4(a)(iii) of the Policy has also been fulfilled.
For 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, <fairmontmaldives.com>, be transferred to Complainant.
Date: April 26, 2018