WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotel Shilla Co., Ltd v. Shilla Group
Case No. D2018-1768
1. The Parties
The Complainant is Hotel Shilla Co., Ltd of Seoul, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Shilla Group of Chicago, Illinois, United States of America (the “USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <shillagroup.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 August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. On August 14, 2018, August 23, 2018, and August 27, 2018, the Center received communications from a Mr. Seo claiming the ownership of the Domain Name. No substantive Response was filed with the Center. On September 4, 2018, the Center notified the Parties that it will proceed to appoint the Panel.
On September 11, 2018, the Center received a communication from the Complainant. On September 12, 2018, the Complainant requested the suspension of the administrative proceeding for purposes of settlement discussions concerning the Domain Name. Accordingly, the administrative proceeding was suspended until October 12, 2018. On October 10, 2018, the Complainant requested an extension of the suspension, and the administrative proceeding was further suspended until November 12, 2018. On November 8, 2018, the Complainant requested for reinstitution, and the UDRP proceeding was reinstituted as of November 9, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 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
The Complainant is an operator of luxury hotels including the Hotel SHILLA in Republic of Korea opened in 1979. The Complainant is the owner of the trade mark THE SHILLA registered in the USA (e.g., registration number 2177727, registered on August 4, 1998), Republic of Korea (e.g., registration number 410038122, registered on September 11, 1997). The Complainant owns a number of domain names including SHILLA such as <hotelshilla.com>.
The Domain Name was registered on July 7, 2017, and has been used for a site stating that the Respondent is involved in developments for hospitality and which uses a similar design for the capital letter “A” in SHILLA as the Complainant’s “Shilla Stay” brand.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant is an operator of luxury hotels including the Hotel SHILLA in Republic of Korea opened in 1979. “The Shilla Stay” is a brand of the Complainant based on the concept of a smarter stay for business travelers. The Complainant is the owner of the trade mark THE SHILLA registered in the USA, Republic of Korea and first in time in Singapore in 1995. The Complainant owns a number of domain names including SHILLA such as <hotelshilla.com>.
The Domain Name registered is confusingly similar to the Complainant’s trade mark adding only the generic term “group” and the generic Top-Level Domain (“gTLD”) “.com” which do not prevent confusing similarity.
The Respondent is not authorized by the Complainant and is not commonly known by the Domain Name.
The web site attached to the Domain Name uses the Complainant’s SHILLA mark and says the Respondent is a specialist in developments for hospitality and real estate. It also copies the design of the letter “A” in SHILLA from the Complainant’s “Shilla Stay” brand. The Domain Name is being used to mislead consumers that the Respondent is associated with the Respondent. The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent sent an email on April 10, 2018 to the Complainant expressing an interest in developing a “Shilla” brand hotel in the USA showing the Respondent was aware of the Complainant and its business. The use of the same design of the letter “A” in SHILLA as to the Complainant’s “Shilla Stay” brand also shows knowledge of the Complainant and its business. The Domain Name has been used to confuse customers and the Domain Name has been registered and used in bad faith under 4(b)(iv) of the Policy.
The Respondent did not formally respond to the Complaint but said in an email during the proceedings that the Domain Name was registered for a School MBA project.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name in this Complaint combines a sign very similar to the Complainant’s THE SHILLA mark (registered, inter alia, under the USA registration number 2177727, on August 4, 1998), the generic term “group” and the gTLD “.com”.
The addition of the generic term “group” does not prevent confusing similarity between the Domain Name and the Complainant’s THE SHILLA mark under Policy para4(a)(i).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s THE SHILLA mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Complainant’s mark. The Complainant has not authorised the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
Panels have found that a respondent is not using a domain name for a bona fide offering of goods or services if it intentionally uses the name for a web site competing with the Complainant under its mark.
It it is clear from the evidence that the Respondent has used the site attached to the Domain Name to point to a competing web site which is not connected with the Complainant. The email sent from the Respondent to the Complainant expressing interest in operating a SHILLA hotel and the use of the same design for the letter “A” in SHILLA as the Complainant’s “Shilla Stay” brand shows the Respondent was aware of the significance of the “Shilla” name and the Complainant’s rights. The usage of the Complainant’s SHILLA mark which has a reputation in relation to hotel related services in relation to similar services not connected with the Complainant and elements of the Complainant’s branding is not fair and the web site does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. The Respondent’s informal response to say the Domain Name was registered for a school MBA project is not substantiated by any evidence. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
As determined above the Respondent’s use of its site is commercial and it is using the site to make profit from a competing web site not associated with the Complainant in a confusing manner. It seems clear that the use of the Complainant’s mark in the Domain Name for a site related to hospitality using elements of the Complainant’s branding would cause people to associate the web site at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.
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 <shillagroup.com> be transferred to the Complainant.
Date: November 20, 2018