Amanresorts Limited v. Progress Enterprise c/o James Stewert
Claim Number: FA1107001399226
Complainant is Amanresorts Limited (“Complainant”), represented by Penny Leng, Singapore. Respondent is Progress Enterprise c/o James Stewert (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amanresort.us>, registered with Directnic, Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2011; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2011.
On July 19, 2011, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <amanresort.us> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 22, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 8, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amanresort.us> domain name is confusingly similar to Complainant’s AMANRESORTS mark.
2. Respondent does not have any rights or legitimate interests in the <amanresort.us> domain name.
3. Respondent registered and used the <amanresort.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Amanresorts Limited, is the owner of the AMANRESORTS mark. The mark has been registered with the Intellectual Property Office of Singapore (“IPOS”) (Reg. No. T98/095170 registered September 22, 1998). Additionally, the AMANRESORTS mark has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,861,837 registered July 13, 2004). Complainant uses its mark in connection with hotel, restaurant, and travel services. Among these services, Complainant operates three award-winning luxury hotels in Bali, Indonesia.
Respondent, Progress Enterprise c/o James Stewert, registered the disputed domain name on July 24, 2002. The <amanresort.us> domain name resolves to a website operated by Complainant’s competitors, “Bali Hotel” and “Bali Villa,” that promotes and advertises various competing hotels in Bali, Indonesia.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A complainant may, after demonstrating its registration of a mark with a federal trademark authority, successfully assert rights in that mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of UDRP ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). For the purposes of Policy ¶ 4(a)(i), the registration of a mark established rights regardless of the location of the parties. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has provided the Panel with evidence of its registration of the AMANRESORTS mark with the “IPOS” (Reg. No. T98/095170 registered September 22, 1998). Complainant has also provided proof of registration of the AMANRESORTS mark with the USPTO (e.g., Reg. No. 2,861,837 registered July 13, 2004). The Panel thus finds that Complainant has rights in the AMANRESORTS mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <amanresort.us> domain name is confusingly similar to its AMANRESORTS mark. Respondent’s <amanresort.us> domain name is simply Complainant’s mark absent one letter, “s,” followed by the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the deletion of the letter “s” does not differentiate the disputed domain name from Complainant’s mark enough to negate a finding of confusing similarity by the Panel. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). Previous panels have consistently held that the addition of a ccTLD is irrelevant for the purposes of Policy ¶ 4(a)(i). See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s <amanresort.us> domain name is confusingly similar to Complainant’s AMANRESORTS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks both rights and legitimate interests in the <amanresort.us> domain name. Once Complainant has made a prima facie case in support of this, the burden will shift to Respondent to dispute the claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that Complainant has made a prima facie case. Respondent, however, has failed to submit a response to the Complaint. Both Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) and Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) support the allowance of the Panel to infer that Respondent’s failure to respond as an admission of the truth of Complainant’s assertions. The Panel will, however, review the record for information suggesting that Respondent does have some rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record to suggest that Respondent owns any service marks or trademarks reflecting the <amanresort.us> domain name. As such, the Panel finds that Respondent has neither rights nor legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
A respondent which is commonly known by a disputed domain name may establish rights or legitimate interests in said domain name. Complainant claims that Respondent is not commonly known by the <amanresort.us> domain name. Panels have previously looked to the WHOIS listing for disputed domain names coupled with the claims of the complainants to determine whether a respondent was commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Complainant argues that Respondent is known as “Bali Hotel” and “Bali Villa,” neither of which contain any part of the disputed domain name or the AMANRESORTS mark. Additionally, the WHOIS listing for the <amanresort.us> domain name identifies “Progress Enterprise c/o James Stewert” as the domain name registrant. The Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not put the <amanresort.us> domain name to a use that constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use. Previous panels have found that respondents used their domain names in bad faith where the domain names resolved to websites in direct competition with the complainant. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”). The <amanresort.us> domain name resolves to a website operated by Complainant’s competitors in the hotel services industry which promote and advertise hotels in Bali, Indonesia which compete with similar hotels Complainant owns and services in the same area. Therefore, the Panel finds that Respondent’s use of the <amanresort.us> domain name to advertise and promote hotels which compete with Complainant to be neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Disruptive, infringing websites have been found to be those which advertise and promote competing products. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to UDRP ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Respondent’s <amanresort.us> domain name resolves to a website which is operated by Complainant’s competitors and which advertises and promotes competing hotels. The Panel finds that the promotion of competing goods on the infringing <amanresort.us> domain name ensures that Complainant’s business is disrupted by Respondent’s registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Complainant contends that the registration and use of the disputed domain name was done for commercial gain as a result of a likelihood of confusion. The <amanresort.us> domain name, a confusingly similar domain name, resolves to a website which advertises hotels which compete with those that Complainant offers through its business. Internet users searching for Complainant will likely come across Respondent’s domain name. Because of the high level of similarity, there will most certainly be initial confusion as to the association of Respondent to Complainant. Once entering the <amanresort.us> domain name, Internet users’ confusion will increase seeing that the website offers extremely similar products to those offered by Complainant. Internet users may then purchase stays at the hotels being advertised through Respondent’s <amanresort.us> domain name. The Panel infers that Respondent profits from these sales. Therefore, the Panel finds that Respondent’s registration and use of the <amanresort.us> domain name was done in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amanresort.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 18, 2011
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