Bugatti International S.A. v. Stephen Renard / Renard International Hospitality Search Consultants
Claim Number: FA1310001523614
Complainant is Bugatti International S.A. ("Complainant"), represented by Susan B. Flohr of Blank Rome LLP, Washington, D.C., USA. Respondent is Stephen Renard / Renard International Hospitality Search Consultants ("Respondent"), represented by Catherine Lovrics of Bereskin & Parr LLP, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue (the "Domain Name") is <bugattihotels.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2013; the National Arbitration Forum received payment on October 9, 2013.
On October 9, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bugattihotels.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bugattihotels.com. Also on October 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 30, 2013.
On November 6,2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant is the owner of the world famous BUGATTI trade mark, the Bugatti red oval for automobiles, and the word mark BUGATTI-HOTEL for hotel services. Complainant alleges that it has trade mark registrations for the same across the world and is the owner of over 150 domain names including the BUGATTI mark. The BUGATTI mark was first used for automobiles in the early twentieth century by the Complainant's predecessor who transitioned to aviation manufacture by the 1940s. Since the 1980s, automobiles have been manufactured under the mark again and the mark has been licensed on luxury goods and services including hotel services.
Respondent has without authorisation registered the Domain Name and is seeking to trade off Complainant's fame and goodwill thereby misappropriating the BUGATTI trade mark and confusing customers. The Domain Name incorporates the Complainant's BUGATTI and BUGATTI-HOTEL trade marks in their entirety, only adding an "s" and removing the hyphen on the BUGATTI-HOTEL mark and adding the descriptive word "hotel" to the distinctive BUGATTI mark. The Domain Name is confusingly similar to the Complainant's BUGATTI and BUGATTI-HOTEL marks.
The Respondent lacks any rights or legitimate interests with respect to the Domain Name. The Respondent currently makes no use of the Domain Name in connection with a bona fide offering of goods and services. It is currently only attached to a holding page displaying photographs of exotic locations and the wording "Bugatti Hotels & Resorts COMING SOON" and a circular logo. Screenshots from the "wayback" machine show illegitimate and identical use of the Complainant's BUGATTI red oval Logo mark at the top of the web page on or around May 31, 2013. Such practices do not constitute a bona fide offering of goods and services nor a legitimate non-commercial or fair use under the Policy.
The Complainant has not granted the Respondent the permission to use its BUGATTI trade marks for any purpose.
There is no evidence that the Respondent is commonly known by BUGATTI, BUGATTI HOTELS or the Domain Name.
The Respondent's use of the Domain Name is an intentional attempt to attract users for commercial gain and to sell the Domain Name for more that the costs of obtaining the same. Since the Respondent reproduced the Complainant's exact BUGATTI Oval Logo mark on its web site attached to the Domain Name it cannot claim ignorance of the Complainant and its marks. Complainant wrote to the Respondent but did not receive a substantive response. After the letter the Respondent modified the web page attached to the Domain Name to its current form. Respondent has used and registered the Domain Name in bad faith.
B. Respondent
The Respondent's contentions can be summarised as follows:
The matter involves a dispute between two trade mark owners in different fields and different jurisdictions using a similar mark. This is not a case of cybersquatting. The Respondent has not adopted the BUGATTI mark in bad faith and has a legitimate interest in its BUGATTI hotels and resorts business. The Respondent has made substantial investments in its BUGATTI marks and its BUGATTI hotels and resorts projects all in good faith and without violating the rights of the Complainant. The Respondent's first three BUGATTI hotel projects are well underway in Thailand and the fourth project has begun in Myanmar.
The Complainant has overstated its trade mark rights. There are gaps of decades when the Complainant's mark was not used. The Respondent has priority on the Canadian and US trademark registers for the mark BUGATTI for hotel services. The Complainant's BUGATTI mark co-exists with numerous third party BUGATTI marks used in relation to various goods and services. There are other third party BUGATTI hotels in France, Spain and Poland. The Claimant has not provided any evidence of use or licensing of its mark in relation to hotel services. The Complainant opposed a European trade mark registration for the mark VILLA BUGATTI for hotels unsuccessfully, the board of appeal finding that confusion was unlikely. The Complainant's rights in hotels are extremely limited in scope. The Respondent's registration is the only active registration for BUGATTI for hotel services on the Canadian register and it has opposed the Complainant's application to BUGATTI-HOTEL in the US.
The Complainant's reputation in BUGATTI is limited to vehicles and customers encountering use of the mark not in relation to cars are unlikely to make any association with the Complainant or its goods and services. Customers will search for BUGATTI vehicles and will not be used to seeing BUGATTI combined with hotel. The Complainant's domain names containing BUGATTI and hotel do not resolve to any active website suggesting the Complainant does not currently licence its marks for hotel services. Customers are already used to seeing the mark BUGATTI used for hotels not associated with the Complainant. The Respondent has been advertising its BUGATTI hotels for three years without any evidence of confusion. As such the Domain Name is unlikely to confuse the Complainant's customers and the requirement under Policy 4(a)(i) has not been satisfied.
The true and beneficial owner of the Domain Name is the Respondent. The Domain Name was registered on July 15, 2010 when the BUGATTI Hotel and Resorts project was conceived and commenced. On May 31, 2011, Bugatti Hotels and Resorts Limited was incorporated in Samoa and on September 9, 2011, Bugatti Hotels and Resorts was incorporated in the Seychelles. In 2011, Bugatti Hotels and Resorts Limited filed applications to register the mark BUGATTI in Canada, the US, China, the Seychelles, Thailand, Bahamas and Myanmar for hotel services. Respondent has begun development of three properties in Thailand and one in Myanmar. Respondent has made significant investment in the development of its BUGATTI hotels and resorts in the honest and good faith belief that it is entitled to use the BUGATTI mark as proposed. The Domain Name has not been registered to mislead consumers or tarnish the Complainant's trade mark. The Respondent has rights and a legitimate interest in the Domain Name.
The Respondent did not register the Domain Name to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark. It has registered it in the normal course of business in starting a new enterprise. The Respondent has not attempted to trade on the goodwill associated with the Complainant's BUGATTI trade mark.
The Respondent sought legal advice at the early stages of its business. The Respondent did not expect the Complainant to object to its use given the many other third-party uses of BUGATTI.
When the Domain Name was first registered the Respondent's web designer copied the Complainant's red oval logo without direction from the Respondent and without the Respondent's knowledge. When this came to the Respondent's attention steps were taken to delete this logo. Neither a lack of legitimate interest or bad faith can be imputed to the Respondent for this.
The Respondent is not a competitor of the Complainant and did not register the Domain Name to disrupt the Complainant's business. The Respondent has registered and used the Domain Name in good faith.
The Complainant owns trade marks for BUGATTI. Its BUGATTI red oval logo is registered for, inter alia, automobiles across the world including Canada with use going back to the early 20th Century (albeit with a hiatus between the 1940s and the 1980s). Since May 2010, Complainant also owns registrations filed at that time for BUGATTI-HOTEL in relation to hotel services in many countries, although not in Canada where the Respondent is based.
The Domain Name was registered two months after the Complainant applied for its BUGATI-HOTEL marks in July 2010 and in 2011 the Respondent incorporated entities in Samoa and the Seychelles and used these entities to make various applications for registration of BUGATTI for hotel services including in Canada and the US. The Respondent has produced some undated construction reports and some very recent press reports from September and October 2013 mentioning new developments being advertised under the BUGATTI name in Thailand. The Domain Name has pictures of exotic places and the wording "Bugatti Hotels & Resorts COMING SOON" and a circular logo. When the site was first attached to the Domain Name the site bore an exact copy of the Complainant's red oval BUGATTI logo. The Respondent says its web designer did this without direction from the Respondent and this logo has now been removed.
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."
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.
As such, in view of the use of the Complainant's BUGATTI red oval logo trade mark on the Respondent's web site, the panel finds that the Respondent has not used the Domain Name in connection with a bona fide offering of goods and services and has no rights or legitimate interests in the Domain Name.
In view of the finding of fact that the Respondent targeted the Complainant by the use of the Complainant's BUGATTI red oval logo on the Respondent's web site, the panel finds that the Domain Name was registered and used in bad faith. See Pfizer Inc. v. Suger D2002-0187 (finding that because the link between the Complainant's mark and content on the web site was obvious the Respondent must have known about the Complainant's mark when it registered the subject domain name). See also AM Online Inc v. Miles FA 105890. The use of the Complainant's red oval BUGATTI logo shows knowledge of the Complainant's rights and an intention to capitalize on them. The Respondent has used the Domain Name which is confusingly similar to a mark in which the Complainant has rights to intentionally attempt to attract for commercial gain Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation of the Respondent's web site or services offered thereon.
In view of the above findings the Respondent's contention of reverse domain name hijacking is rejected by the panel.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bugattihotels.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 20, 2013
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