WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Hoteles Playa, S.A. v. Mr. Nazmeen Ansari, Matrix3D Infocom Private Ltd
Case No. D2019-0184
1. The Parties
Complainant is Grupo Hoteles Playa, S.A. of Almería, Spain, represented by EMME & PI, Spain.
Respondent is Mr. Nazmeen Ansari, Matrix3D Infocom Private Ltd, of Mumbai, Maharashtra, India, represented by The Law Firm Naik Naik & Co., India. The Intervenor is Makers Development Services Private Limited, of Mumbai, Maharashtra, India, also represented by The Law Firm Naik Naik & Co., India.
2. The Domain Name and Registrar
The disputed domain name <senatorhotels.com> is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, 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 January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. On February 18, 2019, the Center received an email communication from Respondent requesting an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to March 4, 2019. The Response was filed with the Center on March 4, 2019.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 8, 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.
On March 14, 2019, Complainant filed Supplementary Submissions. In response, Respondent filed its own Supplementary Submissions on March 19, 2019.
4. Factual Background
Complainant is the owner and operator of hotel properties in Spain and the Caribbean. Its headquarters are in the Spanish province of Almeria. The company was founded in 1989 and it now operates a total of 33 resort properties.
Complainant is the owner of a number of registrations for SENATOR-formative trademarks, including:
SENATOR HOTELES (Design) Spanish Registration No. 2.362.376, registered June 5, 2001
PLAYA SENATOR (Design) Spanish Registration No. 2.432.466, registered April 5, 2002
PLAYA SENATOR Spanish Registration No. 2.785.910, registered February 19, 2008
SENATOR HOTELS European Union Trademark 016.579.039, registered August 11, 2017
SENATOR HOTELS & RESORTS U.S. Registration No. 5,543,701, registered August 21, 2018
5. Parties’ Contentions
Complainant initiated this proceeding against the named Respondent, relying on the current state of the record which identified Nazmeen Ansari, Matrix 3D Infocom Private Limited, as the registrant. The WHOIS database also identified a prior owner but the disputed domain name appeared to have been transferred to the named Respondent sometime in late 2017 or 2018.
Complainant put forward evidence showing a number of trademark registrations in Europe and North America, dating from 2001 to 2018, which include the word SENATOR, for hotel services. Based on these registrations, Complainant claims to hold rights to the trademark SENATOR and SENATOR HOTELS, and that Respondent has adopted a domain name which is identical and/or confusingly similar to its registered rights. Complainant argues that its trademark rights, dating back to 2001, precede the named Respondent’s acquisition of the disputed domain name.
Complainant has provided evidence of revenues for 2015 and 2016, showing income of more than EUR 120,000,000 annually. It operates its corporate website at “www.playasenator.com”, and it has a broad social media presence on LinkedIn, Twitter, YouTube, Facebook, and Instagram.
The disputed domain name is <senatorhotels.com>, which was initially registered on January 23, 1999.
The named Respondent is Nazmeen Ansari, Matrix3D Infocom Private Ltd., located in Mumbai, India. Mr. Ansari appears to be the current registered owner of the disputed domain name, beginning at some point after 2017. The prior registered owner was Manish Maker, Makers Development Services Pvt. Ltd. (“Makers Development”).
With respect to rights or legitimate interests, Complainant relies on the fact that there appears to be no legitimate link between the named Respondent and the mark Senator Hotels. Accordingly, Complainant argues that the named Respondent is misappropriating Complainant’s reputation, without any rights or legitimate interests.
Finally, with respect to bad faith, Complainant’s principal arguments are founded on its understanding of the chronology, namely that the named Respondent acquired the disputed domain name “just a few months ago”, and well after Complainant had established a very substantial reputation in the tourism sector. Complainant submits that it is clear the named Respondent knew about the SENATOR HOTELS trademarks and is deliberately seeking to trade on the associated reputation. Respondent is alleged to be using the disputed domain name in association with a website directing users to links to tourism and hotel websites, for commercial gain.
As a preliminary issue, the Panel must address the request to intervene in this proceeding, and to file a Response, by Makers Development. The named Respondent Nazmeen Ansari, Matrix 3D Infocom Private Limited (“Ansari/Matrix”), filed its own Response, explaining that its only role was to serve as the Technical Contact for the upkeep and maintenance of the disputed domain, and never to serve as beneficial owner. It is important for the Panel to carefully review the evidence and submissions with respect to ownership, as this is a threshold issue with significant consequences particularly for bad faith considerations.
The named Respondent describes the circumstances which led to the WhoIs records indicating that it was the owner of the disputed domain by way of an apparent transfer in January 2018. Ansari/Matrix carries on business as a technical support provider for domain owners, and it has performed that role on behalf of Makers Development for many years. Makers Development is identified as a real estate developer, which has been carrying on business in India for more than 30 years.
The disputed domain name was held by Makers Development from 1999 until January 5, 2018, when Makers Development changed its domain name registrar. The named Respondent explains that an inadvertent error was made at this point, whereby its name was recorded as the owner rather than just the technical contact. It is submitted that the error was never noticed until these proceedings were commenced.
In these circumstances, Makers Development has also filed a Response, urging the Panel to recognize its status as an intervenor, or as an added party in its role as beneficial owner of the disputed domain. The Panel has considered prior decisions with respect to intervention, including Candi Controls, Inc. v. Whois Privacy Protection Services Inc. / Domain Vault LLC, WIPO Case No. D2016-0818:
“…the question before the Panel is under what circumstances can a non-party appear and intervene as a third party in a UDRP proceeding. The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) define the term “respondent” as “the holder of a domain-name registration against which a complaint is initiated” (see Rule 1). The Rules, however, are silent as to what the term “holder” means and which parties are included in the meaning of “holder.” Neither the Rules, nor the Policy, prevent a finding that a person or entity other than the named respondent can be treated as the holder or owner of the domain name at issue. Indeed, prior UDRP Panels that have considered the meaning of “holder” have expanded the concept from meaning solely the party that is the actual listed registrant in the concerned registrar’s Who[I]s records of a domain name to include a beneficial or underlying owner of the disputed domain name. See, e.g., Avon Products Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272 (allowing a non-party to file a response where the listed registrant was a nominee registrant); PHE, Inc. v. Aisha Haider, WIPO Case No. D2007-0992 (finding that the named registrant might not exist and that a non-party was the beneficial and underlying owner of the disputed domain name).”
Based on the facts put forward on behalf of both the named Respondent and the Intervenor itself, the Panel accepts that the Intervenor ought to be permitted to participate in this proceeding, as a co-respondent. Both parties will be referred to hereinafter as “Respondents”.
The critical facts as set out above in connection with the original registration of the disputed domain name are relied upon by Respondents, principally to deny the characterization of an opportunistic acquisition of the disputed domain name in 2018, by which time Complainant had established a portfolio of SENATOR-formative trademarks and a reputation in the hotel business.
Respondents also attempt to argue that the Complaint fails to establish enforceable rights because the SENATOR name is allegedly used internationally by multiple third parties for hotel services. Evidence of competing businesses and their websites using the SENATOR brand in certain variations is provided.
Respondents submit that Makers Development does hold rights and legitimate interests in the disputed domain name by virtue of its incorporation of a subsidiary as early as the 1980’s under the names Senator Hotels Pvt. Ltd. and subsequently Senator Hotels LLP. Although there is no tangible evidence of hotel properties actually operating under this name, Respondents argue that a genuine intention to create a group of Senator Hotels was present at the time, as shown by the records of incorporation.
With respect to bad faith, a different chronology of events is put forward by Respondents, indicating that the relevant date for determining intention is not January 2018, when the named Respondent appears to acquire the disputed domain name but rather the original date of registration in January 1999, in the name of Makers Development. Respondents maintain that the critical fact is the continuing ownership of the disputed domain name in the hands of Makers Development. Under this sequence of events, Complainant’s trademark rights are alleged to exist only after the registration of the disputed domain name.
6. Discussion and Findings
As a preliminary matter, the Panel must address the admissibility of the supplemental filings. In the particular circumstances of this case – specifically the allegations relating to ownership of the disputed domain name and the intervention of a new party Makers Development Services Pvt. Ltd. the Panel exercises its discretion to accept the supplemental filings.
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest 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
Complainant has identified a portfolio of registered trademarks of which the primary element is SENATOR combined with variations of the word “hotel”. The disputed domain name is confusingly similar to Complainant’s marks. Accordingly, Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s finding under bad faith, it is not necessary to reach a conclusion under this element.
C. Registered and Used in Bad Faith
As indicated previously, the Panel accepts that Makers Development ought to be recognized as an intervenor in this matter, to clarify the issue of the beneficial ownership. Makers Development has provided evidence to the effect that its rights to the disputed domain name date back to 1999 when the initial domain name registration was made. It has explained that its choice of domain name was made because it was developing a hotel in Srinagar, Kashmir (India), and it intended to use SENATOR HOTELS as an identifier for a chain of hotel properties.
In support of this account, Makers has provided documents from the India Ministry of Corporate Affairs proving the existence of a subsidiary which adopted the associated name Senator Hotels Pvt. Ltd. in 1984 (subsequently renamed Senator Hotels LLP in 2016). Although the evidence about the details of its operations is weak, it appears that there was a business reason for the choice of the disputed domain name in January 1999, which was entirely unrelated to Complainant’s hotel operations under the SENATOR name. Complainant only obtained its earliest trademark registration in Spain in June 2001, with a filing date of December 1, 2000, which was nearly 23 months after the registration of the disputed domain name. In this proceeding, there is no evidence of common law rights which preceded this filing, and no indication of a reputation in the SENATOR HOTELES mark that had any international scope that could have reached India. Based on the evidentiary record, the Panel concludes that Makers Development had no reason to be aware or to suspect that prior rights in the SENATOR HOTELS brand existed in the hands of Complainant in 1999, when the disputed domain name was registered.
For purposes of this proceeding, the Panel finds that Complainant has failed to establish bad faith at the relevant time, and has therefore not satisfied the requirements under paragraph 4(a)(iii) of the Policy.
The Panel notes, however, that this decision is based only on the limited evidentiary record available in this proceeding, and acknowledges that this complex factual matrix could possibly benefit from a more complete record in a different forum.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: April 9, 2019