WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aman Group SARL v. Domains by Proxy LLC / Ezhar Rusli, Aman Concierge
Case No. D2019-0886
1. The Parties
The Complainant is Aman Group SARL, Switzerland, represented internally.
The Respondent is Domains by Proxy LLC, United States of America (“United States”) / Ezhar Rusli, Aman Concierge, Montenegro, self-represented.
2. The Domain Name and Registrar
The disputed domain name <amanconcierge.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 April 18, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2019, 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 April 25, 2019 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 April 26, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Response was filed with the Center on April 29, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 27, 2019. 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.
The Panel issued Procedural Order 1 on June 13, 2019 requesting additional information and observations from the Parties regarding the Respondent’s contention that the Domain Name reflected the name of an existing, incorporated legal entity. The Respondent submitted additional information on June 19, 2019, and the Complainant submitted comments in reply on June 20, 2019.
4. Factual Background
The Aman Group of Companies comprises a luxury hotel group with 34 properties in 21 countries, as well as affiliates that market a range of other products with the Aman brand, including Aman Residences, Aman Skincare, and Aman Wellness. Founded in 1988 and headquartered in Singapore, the Complainant is organized as a Swiss SARL (limited company), which owns numerous registered trademarks for AMAN as a word mark or as the prominently featured characters in figurative marks. These include International Trademark Registration Number 953150 for AMAN as a standard character mark (registered on August 24, 2007), designated, among other countries, for Montenegro and the United States.
The Complainant operates a website at “www.aman.com” (the “Complainant’s website”), with pages devoted to its Aman Sveti Stefan resort located partially on the islet of Sveti Stefan in Montenegro at “www.aman.com/resorts/aman-sveti-stefan”. The Complainant also operates websites using domain names that combine the mark AMAN with descriptive or geographic terms: <amanhome.com>, <amanspa.com>, <amanshop.com>, <amanguide.com>, <aman.city>, and <aman.asia>.
As documented in the Complaint and the Complainant’s website, the AMAN mark has been publicized online and in international print media. The Complainant has received awards for hospitality such as the Number 1 ranking for “Top Luxury Hotel Brands 2018” by Luxury Travel Intelligence and “Winner of the Best Global Spa Brand of the Year” (2018) by Spa China.
According to the Registrar, the Domain Name was created on July 28, 2018 and was initially registered in the name of the Registrar’s domain privacy service, which has expressed no interest in the Domain Name in this proceeding. Following notice of this dispute, the Registrar identified the registrant as the Respondent Ezhar Rusli of the organization Aman Concierge, with a postal address in Sveti Stefan, Montenegro. Mr. Rusli and Aman Concierge are referred to hereafter collectively as the “Respondent”.
The Respondent refers to Aman Concierge as “an existing, incorporated and legal entity”; hence the Procedural Order requesting further information on this point. The Respondent replied by submitting a copy of the registration certificate from the Montenegro Ministry of Finance, along with a certified English translation. This shows that Aman Concierge was formed as a limited liability corporation in Montenegro, with articles of incorporation dated August 2, 2018, registered by the Ministry on August 8, 2018. Mr. Rusli, holding a Singapore passport, is listed as the founder, 100% owner, and CEO. The mailing address is given simply as “Milocer BB, Budva”, with no street number. The company’s main activity is described as “consulting” pertinent to “business activities and other forms of management.” This information is consistent with the company’s current listing on the online “CRPS” Central Registry of Economic Entities of Montenegro, operated by the national tax authority, which shows that the company continues to be registered and active.
A screenshot of the web page to which the Domain Name resolved at the filing of the Complaint, attached to the Complaint, displays an image of a key, the Domain Name, and the message, in incomplete English, “Website scheduled maintenance. We’ll back you soon.” The Domain Name continues to resolve to this page at the time of this Decision.
5. Parties’ Contentions
The Complainant asserts that the Domain Name incorporates its registered and well-known AMAN trademark, along with the dictionary word “concierge” that is commonly associated with the hospitality industry, since it refers to a hotel employee who makes tour, theatre, and restaurant reservations for guests. The Complainant considers that this adds to the confusingly similarity of the Domain Name.
The Complainant states that it has not given the Respondent permission to use the AMAN mark and that the Respondent is not known by the Domain Name. The Complainant argues that “concierge” is relevant only to the hospitality and travel industry, and that the Complainant is the “only entity” in that industry that is well known by the name “Aman”.
The Complainant concludes that the Respondent registered and used the Domain Name in bad faith, to mislead Internet users for commercial gain. The Complainant contends that the Respondent is passively holding the Domain Name by parking it without active use and with no conceivable good faith use in the future. The Complainant asserts that the Respondent’s use of a domain privacy service is further evidence of its bad faith.
The Complainant replied to the Respondent’s information about incorporating Aman Concierge as a Montenegro limited liability company by asserting that this was a “sham company with no proper company address”. The Complainant observed that the mailing address given in the company registration and in the Domain Name registration lacks a street number and said that the Complainant’s demand letter was returned as “undeliverable”.
The Respondent, which is not represented by counsel, sent an email to the Center dated April 29, 2019 responding in substance to the Complaint. The Center replied that it would treat this communication as the Response if it received no further submission. The Panel accepts this communication as the Respondent’s argument but takes into account that it lacks the required certification of accuracy and completeness under the Rules, paragraph 5(c)(viii).
The Respondent’s communication is written “in the capacity of the owners of Aman Concierge, an existing, incorporated and legal entity.” The Respondent has provided further information about that entity in response to the Panel’s Procedural Order, as described above.
The Respondent does not challenge the Complainant’s trademark rights. The Respondent denies any interest or involvement in the Complainant’s business or in any hotel or tour business.
Instead, the Respondent describes itself as “a team of dedicated Personal Assistants or ‘local go to guys’ to our clients” and explains its interest in the Domain Name and its good faith as follows:
“We are a legally registered entity with a name that is used extensively in Arabic, the native languages our clients and in the many verses in the Quran. It is in fact an indirect Quranic phrase أمان, which means ‘safety’, ‘peace of mind’, ‘sureness’, ‘trust’.
The root which is used as word derived from the A‐M‐N (safety, trust, faith) that is closely associated by our clients from Asia, Turkey and Middle East. For our clients, the words In the Indonesian language context, it means ‘peaceful’ and in the Malaysian language context, it means ‘secure’.
Our logo as per attached ‘AmanConcierge Logo.jpg’ does not in any way resemble that of the complainants’.
We would appreciate if the parties involved had perform their due diligence before making assumptions that we have obtained the domain name in bad faith. The domain name was selected based on the company that was being incorporated at that time.
The domain name amanconcierge.com was bought by a legal entity and if was copyrighted, should have been placed under the complainants name nor should it not have been allowed for sale in the first place not by go daddy or any other domain hosting providers.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant unquestionably holds registered AMAN trademarks, and the addition of a descriptive word does not avoid confusing similarity. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
The Panel concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and the failure to use the Domain Name for an active, relevant website. This shifts the burden to the Respondent.
Here, the Respondent has claimed a legitimate interest in acquiring the Domain Name for use in its “concierge” business, as it is incorporated with a corresponding name. In response to the Procedural Order, the Respondent has provided evidence of incorporation, with a brief statement of a “consulting” business. In its communication to the Center, the Respondent describes its business rather vaguely as offering the service of “personal assistants” as “local go to guys” for clients in Asia, Turkey, and the Middle East.
The Panel finds that the Respondent is legally incorporated in Montenegro under the name “Aman Concierge”, precisely corresponding to the Domain Name. The Respondent registered this limited company in Montenegro a few days after registering the Domain Name and before notice of this dispute. This is consistent with the Respondent’s statement that “[t]he domain name was selected based on the company that was being incorporated at that time.” The Complainant argues that the incorporation is a “sham” because the registered address lacks a street number and the Complainant was unable to deliver a demand letter (presumably to the address as shown in the Domain Name registration, which is in Sveti Stefan, some six kilometers from Budva). The Center has been able to communicate with the Respondent, however; even its courier package appears to have been delivered. It also appears from the June 19, 2019 submission that the Respondent has been conducting business through social media, and indeed the Respondent operates an Instagram account with the name “amanconcierge” and the tagline “Vip Concierge in Turkey, for everything from a to z”. The photos and comments posted on the Instagram account largely concern activities, sites, and events in Turkey. They do not reference the Complainant or its properties.
The Domain Name itself is not yet associated with a developed website. The Respondent created a graphic logo featuring an image of a key (a traditional symbol associated with concierges). This is dissimilar to the Complainant’s logo, which is a stylized version of the letters forming “Aman”, with a diacritical mark over the initial “a”. The Respondent displays the key logo on a web page associated with the Domain Name, along with a “scheduled maintenance” message.
In sum, there is some evidence that the Respondent has taken steps since July 2018 to form and engage in a business distinct from the Complainant’s, without mimicking the Complainant’s branding.
The Respondent asserts a legitimate interest in both terms that comprise the Domain Name, relevant to a business intended to offer personal services to customers. The term “concierge” in contemporary English is used not only for an employee in the hotel and tourist industry, as the Complainant contends, or for the caretaker of an apartment building, but also for a range of personal services or “personal assistant” functions offered by some companies to their own employees or to their individual and corporate customers. See, e.g., the entries for “concierge” in Wikipedia and the online versions of the Cambridge Dictionary and the Merriam-Webster Dictionary, and the website of the International Concierge and Lifestyle Management Network at “www.iclmnet.com”. Search engine queries produce many results for “concierge services”, “private concierge” services, and “professional concierge” services offered to wealthy or busy individuals, traveling or otherwise. “Aman”, as the Respondent points out, is a word derived from Arabic and found in the Qur’an, signifying peace, trust, or security; it is a dictionary word in several languages in Islamic-majority countries that the Respondent identifies as its intended markets for potential customers visiting Montenegro. The Complainant’s United States Trademark Registration Number 5715492 for AMAN (registered on April 2, 2019) similarly states that “[t]he English translation of ‘AMAN’ in the mark is ‘PEACEFUL’.” The Respondent effectively claims a legitimate interest in using the term for one of its relevant meanings, giving customers peace of mind with trusted personal services.
The Respondent’s website is undeveloped, however, ten months after registration of the Domain Name. The Respondent offers little evidence of demonstrable preparations to use the Domain Name in connection with a personal concierge business apart from incorporating the business, obtaining artwork for a design logo, and reportedly making connections with customers and prospective customers on Instagram. This likely would be insufficient to satisfy the Policy, paragraph 4(c)(i) (see WIPO Overview 3.0, section 2.2, citing decisions that require other indicia of “demonstrable preparations”, such as investment in website development and a credible business plan).
However, the Respondent also has been “commonly known by the Domain Name” (Policy, paragraph 4(c)(ii)) since establishing itself as a registered limited company with a name corresponding to the Domain Name within days of registering the Domain Name. That would suffice to establish the Respondent’s legitimate interests in the Domain Name, even without trademark or service mark rights, absent indicia of cybersquatting (see WIPO Overview 3.0, section 2.3). There is no evidence here of a pattern of cybersquatting or commercial exploitation to date of the Domain Name. Hence, the ultimate question in this proceeding is whether the Respondent’s registration of both the company and the Domain Name in 2018 were steps taken in furtherance of a legitimate business plan, as the Respondent asserts, or part of a scheme designed eventually to exploit the Complainant’s well-known trademark, as the Complainant contends. That question is best addressed in the following section, on bad faith.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
There has been no commercial use to date of the Domain Name, but the Complainant is concerned that any potential use of the Domain Name will mislead Internet users. The Complainant argues that “concierge” is a term relevant only to the hospitality and travel industry, and that the Complainant is the “only entity” in that industry that is well known by the name “Aman”. The Panel has observed above that “concierge” is in fact used more broadly, in a manner that fits the descriptions of the Respondent’s business of offering “personal assistant” services. The Complainant refers to the “passive holding” decisions cited in the WIPO Overview 3.0, section 3.3 (although the Complainant cites the superseded WIPO Overview 2.0), arguing that there is “no conceivable” good faith reason for the Respondent to register and hold the Domain Name, given the fame and distinctiveness of the Complainant’s AMAN trademark. But this is not the case. As noted above, the Complainant’s own United States trademark registration acknowledges that the AMAN mark is not a coined term but a dictionary word in another language. It is a word potentially relevant to the Respondent’s personal concierge business, especially if the business is aimed at customers from the Middle East where the word is already known. Therefore, there are indeed “conceivable” good faith reasons for using the word “aman” in the Domain Name. This contrasts, for example, with “telstra” in the leading “passive holding” decision, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant has a resort property in Sveti Stefan, Montenegro, where the Respondent is located (according to the Domain Name registration), and the Respondent does not deny prior awareness of the Complainant. Therefore, it is fair to ask whether it is more probable that the Respondent registered both the company name and the Domain Name in order, eventually, to exploit the Complainant’s trademark or because of the relevant descriptive sense of the name. The Complainant considers that registering the Domain Name through a domain privacy service is a sign of bad faith. However, it is not unusual for an individual or small business to use a domain privacy service (this Registrar and others promote the service to such customers on privacy and security grounds), and the Panel notes that the Respondent promptly replied to the Registrar and to the Center in connection with this proceeding and filed a substantive, if informal, Response to the Complaint. The Respondent invested in incorporation as well as domain name registration, providing sufficient contact details for the Center to communicate with the Respondent, which is not classic cybersquatting behavior. While the Respondent’s website is undeveloped in the months that have passed since registration of the Domain Name, there has been no evident attempt to mimic the Complainant or exploit the Complainant’s trademark. There is no evidence that the Domain Name has been used for third-party advertising or to misdirect potential customers interested in the Complainant’s hotels or its skincare and wellness products. The Respondent has a plausible business reason for choosing the Domain Name and its corresponding registered company name and design logo, neither of which mirrors the Complainant’s. The evidence so far concerning the Respondent’s business is that it is quite distinct from the Complainant’s luxury resort, cosmetics, and wellness offerings.
The Panel finds on the available record that the Respondent’s stated reasons for selecting its company name and Domain Name are, more likely than not, legitimate rather than merely a pretext for exploiting the Complainant’s trademark. The Complainant has the burden of proof and has not demonstrated the probability that the Respondent registered and used the Domain Name in bad faith. The Panel concludes, therefore, that the Complainant has failed to establish both the second and third elements of the Complaint.
The Panel expressly issues this Decision without prejudice to refiling a complaint (see WIPO Overview, section 4.18) in the event that the Respondent were to make use of the Domain Name in the future in a manner that indicated bad faith in the registration and use of the Domain Name and in the establishment of the corresponding company name. This might, for example, include misleading website content or emails, or third-party advertising. The Respondent would be well advised to use the Domain Name for the Respondent’s intended business and seek advice from qualified legal counsel to avoid contention over the Complainant’s trademark rights. The Respondent is not correct in assuming that registrars or “domain hosting providers” are responsible for policing the sale of domain names that might be protected by “copyright” (or, more correctly, trademark). The registrant has the legal and contractual obligation not to infringe the rights of others, and the Policy is one mechanism for enforcing those rights.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: June 21, 2019