WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcotel Hotels & Resorts GmbH v. Reserved for Customers, MustNeed.com
Case No. D2019-2282
1. The Parties
The Complainant is Arcotel Hotels & Resorts GmbH, Austria, represented by Gassauer-Fleissner Rechtsanwälte GmbH, Austria.
The Respondent is Reserved for Customers, MustNeed.com, Taiwan province of China.
2. The Domain Name and Registrar
The disputed domain name <arcotel.com> (“Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 20, 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 September 26, 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 October 1, 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 October 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 13, 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.
4. Factual Background
The Complainant is an international hotel chain founded in 1989. The Complainant has superior hotels in Austria and Germany where it ranks among the 50 biggest hotel groups.
The Complainant has a license from the holder of the ARCOTEL trademarks registrations with the express right to file Complaint under the Policy. The owner of the Complainant is Dr. Renate Wimmer, who is the holder of the following trademarks:
- ARCOTEL, Austria trademark registration No. 128015, registered on November 8, 1989; and
- ARCOTEL, International trademark registration No. 547878, registered on January 5, 1990.
The Disputed Domain Name <arcotel.com> was registered on November 15, 2001
The Disputed Domain Name redirects to a website with pay-per-click links and a link to a third party website under the hypertext “Go To Hotel Comparison”.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name consists of the ARCOTEL trademark and the Top-Level Domain (“TLD”) “.com”, which is generally not an element of distinctiveness that can be taken into consideration when evaluating the confusing similarity.
Thus, the Disputed Domain Name is identical to the ARCOTEL trademark of the Complainant.
Rights or legitimate interests
The Complainant alleges that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. In addition, the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the ARCOTEL trademark in the Disputed Domain Name or for any other purpose.
The Complainant further states that the Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services. Moreover, the Respondent is not commonly known by the Disputed Domain Name.
Registration and use in bad faith
The Complainant submits that the Respondent knew or must have known the Complainant’s trademark since the Disputed Domain Name is identical to the Complainant’s ARCOTEL trademark.
In addition, the Complainant states that by the use of the Disputed Domain Name the Respondent is trying to divert traffic intended for the Complainant’s website to its own purpose for earning click through revenues from Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(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.
A. Identical or Confusingly Similar
The Complainant has trademarks rights over the term ARCOTEL, as evidenced by the trademark registrations listed in the Complaint.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark ARCOTEL. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only element.
Furthermore, the Disputed Domain Name contains the Complainant’s ARCOTEL trademark in its entirety; the addition of the TLD “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it chose not to reply to the Complaint.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent was well aware of the Complainant’s prior rights and business, since the Disputed Domain Name was registered on November 15, 2001, while the Complainant had the registration of one of its trademarks since 1989. Thus, it is very unlikely that the Respondent could have been unaware of the Complainant’s trademark and business when it registered the Disputed Domain Name.
The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights.
Paragraph 4(b)(iv) of the Policy states: “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”.
In the case at hand, in view of the Respondent’s registration of the Disputed Domain Name identical to the Complainant’s trademark, used for pay-per-click links associated with hotels rooms and rate comparison services, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitutes bad faith.
Due to this pattern of conduct, it is obvious that the Respondent intentionally created likelihood confusion with the Complainant’s trademark and websites in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
The Panel infers that the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its website creating a likelihood of confusion with the Complainant’s ARCOTEL trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, and in doing so is disrupting the business of the Complainant.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
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 <arcotel.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: November 27, 2019