National Arbitration Forum
DECISION
Renaissance Hotel Holdings,
Inc. v. The Renaissance Cochin
Claim Number: FA0703000932344
PARTIES
Complainant is Renaissance Hotel Holdings, Inc. (“Complainant”), represented by Paul
F. Kilmer, of Holland & Knight LLP, 2099 Pennsylvania Ave., NW, Suite 100,
Washington, DC
20006-6801. Respondent is The Renaissance Cochin (“Respondent”), represented by Bovan
Cherian Varkey, 1st Floor, G-
148, Marks & Rights, Panampilly Nagar, Kochi
982-036, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <renaissancecochin.com>,
which was registered with Direct Information Pvt Ltd d/b/a
Publicdomainregistry.com
(“Direct Information”) on November 17, 1997.
It is hereafter referred to as “the
disputed domain name.”
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on March 2, 2007;
the Forum received a hard copy of the Complaint on March 5, 2007.
On March 6, 2007, Direct Information confirmed by e-mail to the
Forum that the disputed domain name was registered with it and that the Respondent was the current registrant of the name. Direct Information has verified that Respondent
is bound by its registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 2, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@renaissancecochin.com by e-mail.
The Forum received a copy of the Response electronically before the
deadline for Response of April 2, 2007, but it
did not receive a hard copy until after the deadline. As a result, the Forum has determined that
the Response is deficient according to Supplemental Rule 5(a).
A Reply to Respondent’s Response (“Additional Submission”) was received
by the Forum electronically on April 9, 2007 and the Forum deemed it to be
timely and in compliance with Supplemental Rule 7.
On April 9, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed
Mr. David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant filed a Complaint;
an Affidavit from Mr. Kevin M.
Kimball, its Vice President; and Annexes and Exhibits measuring 1¼ inches in
depth. These hundreds of pages contain the following
facts, allegations and contentions:
·
Complainant
is the owner of the internationally well known and famous service mark
RENAISSANCE for, inter alia, hotel
services, resort services, health spa services, health club services, golf club
services, restaurant services, catering services, nightclub, bar and lounge
services, providing facilities for social functions, banquets, business
meetings, conferences and exhibitions, hotel reservation services, hotel
concierge services, ground transportation services, and travel tour, travel
booking, travel guide and travel information services.
It has used this name and mark in
connection with lodging and hospitality services continuously since 1981. It currently operates 137 hotel and resort
properties under the RENAISSANCE brand, 68 of which are in the United
States and 69 outside of the U.S., inter
alia, in India, Aruba, Austria, Belgium, Brazil, Canada, China, Czech
Republic, Dominican Republic, Egypt, France, Germany, Israel, Italy, Japan,
Kazakhstan, Malaysia, Netherlands, Puerto Rico, Russia, South Korea, Spain,
Switzerland, Tunisia, Turkey, United Arab Emirates, United Kingdom and Vietnam. The names of many of these properties consist of the name RENAISSANCE together with the hotel’s geographic
location (e.g.,
the RENAISSANCE MUMBAI HOTEL AND CONVENTION CENTER). A copy of Complainant's 2006 hotel
directory listing all these properties was annexed to the Complaint.
·
Complainant has used the name and mark RENAISSANCE in India continuously since 1990,
which is well prior to November 17, 1997, the date upon which Respondent registered the disputed domain name. Its
first RENAISSANCE branded hotel in India
was the RENAISSANCE GOA HOTEL which opened in 1990 in the city of Goa.
However, that hotel is no longer a
RENAISSANCE branded property. Complainant's RENAISSANCE
MUMBAI HOTEL AND CONVENTION CENTRE in Mumbai is the largest convention center in India with 2,300,000 sq. ft.
of indoor and outdoor meeting space, 15 meeting rooms, over 270 rooms and a wide variety of restaurants and lounges, including the CLUB RENAISSANCE.
·
Complainant's
RENAISSANCE branded lodging and hospitality services are extensively advertised
in the print media, including newspapers and magazines which have circulation
in India,
on television and via the Internet. Approximately US$25 million is spent
annually to advertise and to promote
consumer awareness and recognition of the
RENAISSANCE name and mark on a worldwide basis, including India. In addition, travelers to and
from India have become familiar with the RENAISSANCE name and mark through overseas stays, attendance at meetings
and conferences held at RENAISSANCE properties, recommendations and bookings
provided by travel agents, and reviews and advertisements in in-flight
magazines and travel magazines.
·
Complainant is a subsidiary of Marriott International, Inc. and Complainant participates in Marriott's MARRIOTT
REWARDS program, the world's largest multi-brand frequent guest program. MARRIOTT
REWARDS offers members the opportunity to
earn and redeem points at nine different hotel brands, including RENAISSANCE branded hotels. MARRIOTT
REWARDS members frequently receive
publications promoting Complainant's
RENAISSANCE hotel brand and there are currently over 27,616 MARRIOTT
REWARDS program members residing in India. Marriott’s
Group Sales
Agents market RENAISSANCE branded
hotel and resort services through offices located in Bangalore, Mumbai, and
New Delhi. There are also toll-free
telephone reservations lines in dozens of countries throughout the world,
including India,
through which guests can make reservations at any of Complainant's RENAISSANCE branded hotels.
·
In 1997, the year during which the
Respondent registered the disputed domain name, the annual revenues generated
by lodging and
hospitality services offered under Complainant's RENAISSANCE mark, including
services rendered in India,
totaled US$965,090,000. By 2005 the total had climbed to US$2,691,025,000.
·
Complainant
has registered the word RENAISSANCE as a trademark and service mark in India,
where Respondent is located, in 87 other individual countries, and in the
European Union. In India, Complainant is the owner of two
Registrations for the mark RENAISSANCE –
No. 610,567 for
"printed matter, periodicals, publications, books, stationary, manuals,
magazines, instructional and teaching materials, and office requisites" in
International 16, and No. 1,241,271 for the "hotel, restaurant, catering, bar and cocktail lounge services;
provision of facilities for meetings, conferences and exhibitions; reservation
services for hotel accommodation"
in International in Class 42. Registration
No. 610,567 was filed on October 28,
1993 and registered on December 22, 2005.
It only became possible to register a
trademark in India
for services as from September 15, 2003, so Registration No. 1,241,271, which covers services, was filed on
October 1, 2003 and registered on November 18, 2005.
·
Complainant
owns and uses the domain name <renaissancehotels.com>
and at least 74 additional domain names which combine the RENAISSANCE brand
name with geographic place names that identify the locations of Complainant's
hotels and resorts, including the domain name <renaissancemumbai.com>.
A complete listing of these domain names
appeared in the Affidavit from Mr.
Kevin M. Kimball.
·
Respondent
is the operator of a hotel located in Cochin, India. And annexed
to the Complaint was a printout of portions of Respondent's website located at
the disputed domain name. This domain name appropriates Complainant's
name and mark RENAISSANCE with the addition of the geographic place name which
identifies the location of Respondent's hotel plus the generic top-level domain
name “.com.” It is therefore confusingly
similar to Complainant's RENAISSANCE
mark, and Complainant referred to the case of Marriott Int’l, Inc. v. MCM
Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005), in which
confusing similarity was found to exist between the complainant's MARRIOTT mark
for hotel services and the domain name <arubamarriott.com> ("In
the Panelist's opinion the
addition of a geographically descriptive term and a generic top-level domain
does not distinguish the domain name from the Complainant’s mark."); also, in Radisson Hotels Int’l,
Inc, v. Raddison Suites, FA 98235 (Nat. Arb. Forum Aug. 27, 2001)
confusing similarity was found to exist between the complainant's RADISSON mark
for hotel services and the domain name <raddisonguyana.com>.
·
In
significant use for over twenty-five years, Complainant's RENAISSANCE name and
mark has become internationally well known and famous as the source of
Complainant's lodging and hospitality services, and this was well prior to
November 17, 1997 when the disputed domain name was registered.
Complainant, moreover, used its name and mark RENAISSANCE in connection
with hotel services in India,
for six years prior to this date. Complainant has not
licensed or otherwise authorized Respondent to use the name RENAISSANCE
in connection with the offering of any goods or services, or to use or register
the disputed domain name.
There is no
connection between Complainant and Respondent.
Therefore Respondent has no rights or legitimate interests in respect of the
disputed domain name.
·
Respondent's
knowledge of Complainant's rights in Complainant's name and mark RENAISSANCE
prior to date upon which the disputed domain name was registered may be
inferred from the international fame of the RENAISSANCE mark, and from
Complainant's prior use thereof in India.
In this context, Complainant refers to
the case of Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) in
which it was found that the respondent had actual and constructive knowledge of
the complainant's EXXON mark given the worldwide prominence of the mark. To the best
of Complainant's knowledge, Respondent did not use or register the marks or names
RENAISSANCE, RENAISSANCE COCHIN, or any variation thereof, prior to the date
upon which the disputed domain name was registered. Neither does it appear that Respondent was
commonly known by the names RENAISSANCE, RENAISSANCE COCHIN, or any variation thereof,
prior to the domain name registration date. Complainant alleges that the disputed domain
name was registered with the plain intention of trading on the fame of
Complainant's well known name and mark RENAISSANCE.
·
Respondent
made no use of the disputed domain name from the date of its registration until
April 20, 1999, when Respondent commenced commercial use of it in connection
with the offering of competing hotel services under name THE RENAISSANCE COCHIN. As proof
thereof, Complainant annexed a printout of archived content posted to the
website at the disputed domain name on April 20, 1999.
·
Complainant
notified Respondent of its objections to the latter’s use of the marks and
names RENAISSANCE and THE RENAISSANCE COCHIN and the domain name <renaissancecochin.com>
on December 19, 2001. On February 22, 2005, when Respondent had failed
to voluntarily cease and desist its use of Complainant's name and mark,
Complainant filed a civil action against Respondent in the District Court at Ernakulam, India. That civil
action, C.S.
No. 5 of 2005, is still pending and
a copy of it was annexed to the Complaint.
·
Complainant
has also filed oppositions before the Indian Registrar of Trademarks against
Respondent’s application in India No.
733,730 for the trademark THE RENAISSANCE COCHIN and design for "protein
drinks, milk and milk products and all good included in Class 29" in
International Class 29, and application No.
1,239,275 for the trademark THE RENAISSANCE COCHIN and design for
"providing of food, beverages, board and lodging" in International
Class 42. The oppositions are still pending. Complainant
contends that under the Policy these trademark application filings do not
confer rights or legitimate interests in the domain name or in the mark
reflected in the domain name.
·
Respondent’s use of the disputed domain name to offer
hotel services in Cochin in competition with Complainant's RENAISSANCE branded
hotel services does not amount to a bona
fide offering of goods or services within the meaning of the Policy and
Complainant referred to Ciccone v. Parisi, D2000-0847 (WIPO Oct. 16, 2000) as
proof that "use which intentionally trades on the fame of another cannot
constitute a ‘bona fide’ offering of goods or services."
Complainant also referred to Radisson
Hotels Int’l, Inc, v. Raddison
Suites, FA 98235 (Nat. Arb.
Forum Aug. 27, 2001), in which it was held that use of the domain name
<raddisonguyana.com> to offer
hotel services in Guyana in competition with Complainant’s RADISSON branded
hotel services “does not amount to a bona
fide offering of goods or services within the meaning of paragraph 4(c)(i) of
the Policy.”
·
The
domain name should be considered as having been registered and being used in
bad faith for the following reasons:
o [i.]
Complainant's RENAISSANCE name and mark was well known and famous long before
Respondent’s registration and use of the disputed domain name which
incorporates the mark. It
was held in the Marriott case referred to above that Respondent’s
"belated registration and use of the
domain name incorporating Complainant’s well known and famous mark in
connection with the marketing of competing services readily establishes
Respondent’s bad faith." Complainant
also referred to the case of The Caravan Club v Mrgsale, FA95314
(Nat. Arb. Forum Aug. 30, 2000), in which it was held that the respondent’s
registration of domain name incorporating Complainant’s well known mark “reveals bad faith,” and Cho Yong Pil v.
Sinwoo Yoon, D2000-0310
(WIPO June 22, 2000), in which bad faith was found because Complainant’s name
was famous at the time of domain name registration.
o [ii.] By
using the disputed domain name, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s website by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website. Respondent
is using the disputed domain name to profit by attracting Internet users
seeking accommodations at Complainant's
internationally well known and famous RENAISSANCE branded hotels and resorts to
Respondent's website offering competing hotel
services under the infringing marks and names RENAISSANCE and THE RENAISSANCE
COCHIN, and as proof thereof Complainant annexed copies of a printout of
portions of Respondent's website located at the disputed domain name. Respondent
has intentionally created this attraction by selecting and using a domain name
that is both confusingly similar to Complainant's well known and famous RENAISSANCE mark and which resembles
Complainant's many domain names, as listed in the Affidavit of Mr. Kevin M.
Kimball, which combine the name RENAISSANCE with geographic place names that
identify the locations of Complainant's hotels and resorts. Complainant's
RENAISSANCE name and mark is
prominently displayed on Respondent's website without any disclaimer of source,
sponsorship or affiliation with Complainant.
·
Respondent's
offering of competing hotel services
under the infringing marks and names RENAISSANCE and THE RENAISSANCE COCHIN has
even resulted in actual confusion as to source, as evidenced by the text of the
following e-mail communication which was sent to Complainant by a consumer
located in Mumbai, India on
February 20, 2004:
“I would like to inform you that in Kochi, India
there is a hotel-which claims to be a 5 star property and its called
Renaissance. It's a very misleading name as I confused it
with your group hotel and regretted staying there. This hotel is not worth being declared a 3
star property also, leave aside being called a part of the Marriott Group.
I think you must do something to get the
name changed of this hotel, since it affect your group image. My
permanent address is Mumbai and hence I know that your group has other good properties
but there are hundreds of potential customers will permanently refrain from
staying at Renaissance hotels worldwide after they experience this Cochin hotel.”
B. Respondent
The Response filed by Respondent contains the following facts, allegations
and contentions:
·
Respondent is the owner of the well-known mark
“THE RENAISSANCE COCHIN” which was invented and arbitrarily adopted in 1995. Respondent
has been providing food and
beverages and offering boarding and lodging under this trademark in India
continuously since 1996. Annexed to the Response was a copy of a Partnership Deed dated
April 1995 signed by 4 individuals as proof that the name THE RENAISSANCE COCHIN was adopted in
April 1995. At that time neither Complainant nor any third
party was offering hospitality services under the mark RENAISSANCE or any
similar mark in India.
·
Complainant has only claimed to have used the
mark RENAISSANCE in India
since October 1, 2003, as is evident from Trade Mark registration certificate
No. 466,228 for Trade Mark registration No. 1,241,271 in Class 42, but
Respondent contends that even this claim is not based on the true facts and is bogus.
·
Complainant has not used the mark RENAISSANCE
MUMBAI HOTEL AND CONVENTION CENTRE prior to 1996, when Respondent started using
the mark THE RENAISSANCE COCHIN. In fact it was Respondent who first used the
descriptive word RENAISSANCE with a geographical location.
Complainant seems to have imitated this
idea of Respondent internationally.
·
Complainant’s claim that it has been using the
mark RENAISSANCE in connection with
lodging and hospitality services continuously since 1990 in India is false and is disputed.
·
The claims made by Complainant regarding its
reputation and goodwill are false and are denied by Respondent. Complainant
has not attained any reputation or goodwill in India
and in fact it is Respondent’s mark which combines the descriptive words ‘The
Renaissance’ with the Geographical name ‘Cochin’
that has attained reputation and goodwill in India.
·
Complainant cannot claim monopoly rights in the
word “Renaissance,” which is a common descriptive word with a dictionary
meaning. The word “Renaissance” is descriptive and
means a “revival of interest in a particular topic.” In addition, the “Renaissance” was the period
in Europe in the 14th, 15th and 16th centuries
A.D., during which there was a great revival of interest in art, literature and
learning. When Respondent adopted the mark “The
Renaissance Cochin” in 1996, the term was neither known as being a mark
belonging to Complainant nor as a prominent term other than for its literary
significance. This term cannot be monopolized by Complainant. Descriptive
words are only granted a minimal level of protection, unless an applicant can
establish that they have acquired secondary significance as the result of
substantial use for a continuous period of time.
Complainant has no such claim in India.
·
Complainant’s registration of its trademarks in
India have been secured by misleading the Registrar with a wrong appreciation
of the facts, and Respondent has initiated – or will be initiating –
appropriate legal action to rectify the said registrations. Respondent filed an application to register
THE RENAISSANCE COCHIN as a trademark prior to that of Complainant in Class 42,
and annexed to the Response was a copy of a provisionally numbered application
form for this mark which is in Class 42, dated September 24, 2003, and numbered
1,239,275. This application is still
pending before the Registrar of Trademarks and registration has been delayed
only because of the Opposition filed against it by Complainant. Complainant
has also initiated a passing off action against Respondent before the District
Court at Ernakulam in Kerala
State. As part of
the said suit, Complainant has preferred an Interlocutory Application No. 526/2005 to restrain Respondent from continuing
with the use of the mark and Respondent annexed to the Response a copy of this
application. Respondent contends that this application was
decided in its favour so Complainant has no right to deny Respondent from
enjoying the rights it has acquired in relation to the mark “The Renaissance
Cochin.” Evidentiary proceedings are still
proceeding in the case and the matter is still pending a final adjudication.
·
Complainant’s claim to have 74 additional domain
names is not correct. Respondent contends that Complainant’s
Annexure 1 proves that Complainant has registered only 64 and that some of
these domain names are still available.
The majority of these domains were
created only in 2005 and 2006. Respondent however registered the disputed
domain name in 1997 which was at a period when businesses began going online,
whereas Complainant only created its first domain name in India, i.e. <renaissancemumbai.com>, on January 2, 2007.
·
Respondent annexed to the Response a copy of a
letter dated December 4, 2001, from Mr.
Peter J. Dernbach of M/s Arent Fox on
behalf of Complainant stating that the disputed domain name is registered in
bad faith and that it is likely to mislead the customers trying to avail themselves
of the services of Marriott, Inc through its domain name <renaissancehotel.com>. Also annexed was a copy of the reply to this
letter from Respondent’s consultant dated December 18, 2001, denying the bad
faith allegations and explaining that there is no chance of any customer
confusion. Thereafter this matter was
left aside. It was after this that Complainant filed its
suit C. S.
No.5 of 2005 in the District Court
in Ernakulam on February 21, 2005, praying for an order for a perpetual
injunction restraining Respondent from passing off its business by the use of
the mark “RENAISSANCE” or any other confusingly similar mark or including the
use of “RENAISSANCE” on the Internet in any manner, including, but not limited
to, use of “RENAISSANCE” in the domain name <renaissancecochin.com> and on the associated website, and
transferring the domain name <renaissancecochin.com>
and any other domain names containing “RENAISSANCE.”
·
Alongside the said suit, Complainant has preferred
Interlocutory Application No.
526/2005 to restrain Respondent from continuing with the use of the mark. This
application was considered by the Court in favour of Respondent, as it was not
convinced by Complainant’s contentions in the application.
So, while the matter is still pending
before a competent court, Complainant is not legally entitled to approach
another forum seeking the same relief, especially in circumstances where it has
failed to get a favorable order. Complainant is legally barred by the principle
of res judicata from initiating this
complaint and, Respondent contends, has opted to do so only with malicious
intent. Respondent created the disputed domain name in
1997, and it contends that:
Complainant has created the same only in 2007 with an intention to move
this authority only. This is evident from their conduct in the
matter. At the first stage the complainant caused
legal notices. After getting the reply they kept silent. In the
meantime they moved the District Court for the same grievances. Now instead
of awaiting the adjudication of the District Court the Complainant has
approached this authority.
·
At the time Respondent adopted the mark “Renaissance”
in 1996, Complainant did not have any significant reputation in the mark or any
exclusive claim over it. The change in the brand image of Complainant’s
Goa concern very well points to the lack of reputation
and distinctiveness of the mark which Complainant claims to enjoy. The term
was not at all popular or known nor was it identified with Complainant or any
other third party in relation to hospitality services in 1996. Thus
Respondent has honestly adopted the mark “The Renaissance Cochin” in the year
1996 and has continued to use it ever since.
·
Complainant’s claim that the mark RENAISSANCE is
well known and famous in the hotel industry is specifically denied by
Respondent. The law relating to trademarks is territorial
in nature. According to the Indian Trade Marks Act, it is
the prior user who has more chance of getting a mark registered in his favour. Respondent
contends that Complainant was only able to register the trademark RENAISSANCE “through the back door, by misleading the
Registry,” and so it has initiated an action to get the register corrected
by rectifying Complainant’s so called registration.
With regard to the concept of “well
known trade marks,” mere advertisement through magazines and web bookings and
travel by tourists cannot create trans-border reputation.
This can only be acquired by using the
mark in relation to quality goods and services internationally for a long and
continuous period of time. The mark also must have acquired an additional
distinctive character over and above ordinary marks so that even use of the
mark for entirely different categories of goods and services will lead to
customer confusion. Complainant has not met any of the
requirements of the Trademarks Act for acquiring well known status in India
for the trademark RENAISSANCE as, according to their application, they claim use
only from October 1, 2003. Furthermore there is no evidence that
Complainant had an office in India
at the time of making the application and it had to rely on their Agent’s
address to make the application. Respondent contends that it has been using its
name prior to Complainant.
·
The contention that Respondent has not used the
word prior to registering the disputed domain name is not correct. Respondent
filed applications before the Registrar of Trade Marks in India to register the
mark THE RENAISSANCE COCHIN in
Classes 16 and 29 under application Nos.
733,730 and 733,731 as early as on January 10, 1997, and annexed to the
Response were copies of the provisionally numbered application forms for these
names along with the acknowledgement thereof from the Registrar of Trade Marks.
·
Respondent had no knowledge of Complainant or of
its business before the adoption of the mark THE RENAISSANCE COCHIN.
·
The contention that Respondent has not used the
site at the disputed domain name is not true.
During 1997 the Internet business scene
in India
was at an infant stage. The speed of Internet connections was so slow
that even people in the computer industry relied on writing and sending CDs via
mail/courier.
·
Respondent has been using the domain name as an online store to sell its services. Therefore Respondent has made a bona fide offering of his services. Respondent also
has a legitimate right to the disputed domain name.
Simply because
an applicant has a registered trade or service mark does not mean that another
person with a legitimate reason for registering a domain name and using it in
good faith must give it up. Registration of domain names is on a first
come first serve basis. This is evident from the Prince Sports case in
which Prince Sports tried in vain to have the domain <prince.com>
transferred from Prince Computers in the UK.
·
Complainant’s submission that Respondent cannot
show a legitimate interest in the domain name because it has not made
demonstrable preparations to use the domain name for a bona fide business purpose is just an attempt to bully a legitimate registrant out of its
domain name and is nothing less than Reverse Domain Name Hijacking.
·
Respondent has not taken any business from
Complainant as a result of its operation of the website at the disputed domain
name. Complainant’s customers are of different grade
to those of Respondent. Since 1997, consumers have logged on to
Respondent’s website only with knowledge of the specific web address and with
the specific need of services and not to awaken themselves to the existence of
Complainant or its services. Respondent’s website is different and distinct
from that of Complainant which specifically states that it is a part of Marriott
International Inc. It does not contain a single word to suggest,
nor do the get up or design suggest, that Respondent is any way related to
Complainant. It only contains details
of Respondent’s business activities.
Moreover the prefix ‘The’ and the suffix
‘Cochin’ are
in themselves features that make the name distinctively different from
Complainant’s mark which consists of the word Renaissance simpliciter.
·
Since its inception in 1996, Respondent has
grown to become one of the largest and most respected names in the business,
known for its high standards of food and service, reliability, consistency,
professionalism and innovation in catering, food and hospitality services. Respondent’s
tradition and concrete business structure and its guided vision towards
customer satisfaction, convenience and ease have been duly translated into
enormous success. The goods and services offered by Respondent
under the trademark/service mark “THE RENAISSANCE COCHIN” are extensively manufactured, marketed, sold and provided around
the globe and various countries with tremendous sales. Respondent
has genuine proprietary rights over the mark THE RENAISSANCE COCHIN and it has
a legitimate interest in the domain name.
·
When Complainant’s trademark was adopted,
neither Complainant nor any third party was offering hospitality services under
the mark RENAISSANCE or any similar mark in India.
Respondent’s use of the mark “The
Renaissance Cochin” is not likely to cause confusion amongst consumers,
particularly in the premium hospitality industry where customers are well
informed and wise enough to distinguish between the services of different
proprietors.
·
Respondent contends that it registered the
disputed domain name much earlier than Complainant and that it has honestly
adopted the mark and has been using the mark for the past 10 years without any
injury or loss to any third party. The logo and style of depiction of
Respondent’s mark is entirely different to that of Complainant. Consumers who are likely to avail themselves
of the services of Respondent and Complainant are well informed and easily able
to identify and distinguish the different source from which the services are
emanating. Thus no question of customer confusion has
arisen to date in the matter. A simple perusal of the depiction of
Respondent’s mark “The Renaissance Cochin” on its website will indicate the
source of services as being those of Respondent.
·
Respondent has registered only one domain name, namely the disputed domain name and
it has done so in good faith. None of Complainant’s contentions or
documentation proves any mala fide
intention on behalf of Respondent. Respondent’s defence of all of the actions
initiated by Complainant in itself shows its bona fides. Paragraph 4 of the Policy states that
the registrant is "required to
submit to a mandatory administrative proceeding" for certain types of
disputes. Anyone capable of completing the submission
process required to register a domain name should be capable of submitting a
response. In short, there is substantial motivation for
a good faith registrant to file a response and no readily apparent excuse not
to respond. Indeed, the Policy implies that a good faith
registrant has a duty to respond, since it is "required" to submit to
the Policy. Under these circumstances,
the failure to participate in the proceeding is suggestive of bad faith and a
lack of legitimate interest in the mark.
In the instant case Respondent has taken
every opportunity to defend its case.
·
Complainant
has not and cannot prove any of the following primary ingredients of bad faith
– (i) circumstances indicating that Respondent has registered or has
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to Complainant who is the
owner of the trademark or service mark or to a competitor of that Complainant,
for valuable consideration in excess of documented out-of-pocket costs directly
related to the domain name; or (ii) Respondent has registered the domain name
in order to prevent Complainant from reflecting the mark in a corresponding domain
name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting
the business of Complainant; or (iv) by using the domain name, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
web site or other on-line location, by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of your web site or location or of a product or service on web site or location.
·
In
conclusion, Respondent contends that Complainant has no case either in this
Complaint or in the case filed by them before the District Court at Ernakulam.
C. Additional Submissions
In Complainant’s Additional Submission it makes the following comments
in response to Respondent’s various contentions and allegations:
[1.] Complainant
does have rights in the service mark RENAISSANCE for hotel services.
[a.]. The RENAISSANCE service mark is not descriptive of hotel
services. Respondent has alleged that the word
RENAISSANCE is descriptive of hotel services because it can be found in the
dictionary and it also identifies a period in history.
But Complainant contends that it does
not identify or describe any feature or characteristic of hotel services. In fact, in
its Response, Respondent itself asserts that THE RENAISSANCE COCHIN is "coined and arbitrarily adopted by the
respondent." However, since the definite article
"the" and the geographically descriptive term "Cochin" are
neither coined or arbitrary, this leaves only the designation RENAISSANCE as
being that portion of Respondent's mark that is "coined and arbitrarily adopted."
Respondent has not offered any evidence
that the term "renaissance" is subject to common third party use in
connection with hotel services. Thus, Complainant contends, there is no
factual or legal merit to Respondent's allegation that Complainant's
RENAISSANCE service mark is descriptive of hotel services.
[b.] Complainant's
rights in its RENAISSANCE service mark are superior to Respondent's rights in
the service mark THE RENAISSANCE COCHIN, in India. Respondent has alleged that its rights in the
service mark THE RENAISSANCE COCHIN, for hotel services, are superior to
Complainant's rights in its RENAISSANCE service mark in India, because
Respondent was formed as a partnership under the name "The
Renaissance" in 1995 for the operation of a hotel, and because Respondent
commenced use of the mark THE RENAISSANCE COCHIN for hotel services in 1996.
However,
Complainant points out that in its Complaint it proved that it has continuously
used the RENAISSANCE service mark for hotel services in India since 1990; also, that it owns a valid and
subsisting registration for RENAISSANCE for hotel services in India.
Respondent
has alleged that the date of this registration – October 1, 2003 – is in fact
the date of Complainant's first use of the mark for hotel services in India. However, October 1, 2003 is the effective date
of the registration, not Complainant's date of first use in India. Complainant
actually commenced use of its service mark RENAISSANCE for hotel
services in India five years prior to the date upon which Respondent elected to
adopt that name in connection with its hotel business venture, but it was only
registered in 2003 and Complainant annexed a copy of a book entitled “Trademarks
Throughout The World” by Anne-Laure Covin, et
al. as proof that this was the
earliest date upon which marks could be registered for services in India.
Respondent also alleges that it has filed an
action to cancel Complainant's registration for RENAISSANCE for hotel
services in India
but, to the best of Complainant's knowledge, this registration is not the subject of any cancellation action and
Respondent has offered no proof to support its bald assertion.
There is no
factual or legal merit to Respondent's allegation that its rights in THE
RENAISSANCE COCHIN for hotel services are superior to Complainant's rights in
its RENAISSANCE service mark for hotel services in India because under the laws of India, Complainant's prior
unregistered use of its service mark RENAISSANCE for hotel services
created a common law action for passing off against Respondent. In addition,
Complainant's RENAISSANCE registration for hotel services in India establishes Complainant's sole ownership
of and exclusive right to use that registered mark for hotel services in India. As proof of
both of these contentions, Complainant again referred to the book “Trademarks Throughout The World.”
[2.] Respondent does not have rights or legitimate interests in respect of
the disputed domain name.
Respondent
has alleged that it has rights or a legitimate interest in respect of the
disputed domain name because it adopted the service mark reflected by the
domain name RENAISSANCE COCHIN without knowledge of Complainant's RENAISSANCE
service mark for hotel services; and because it used that service
mark in connection with the bona fide
offering of hotel services prior to notice of this dispute; and because it was
the first to use the descriptive term
RENAISSANCE in conjunction with a geographical location.
However, Complainant has proved in
its Complaint that its name and mark
RENAISSANCE became internationally well known and famous as a symbol of the
source and quality of Complainant's hotel services well prior to 1995. During that
period Complainant frequently combined its RENAISSANCE brand name with
geographic place names to identify its hotel and resort properties, and Complainant referred to the copies of its
1993 and 1994 Hotel & Resort Directories which were filed with the
Complaint. From these it can be seen that in 1993, for
example, Complainant advertised the following RENAISSANCE branded hotel and
resort properties located in Asia and the Pacific Rim:
GOA
RENAISSANCE RESORT (located in Goa,
India),
KARACHI
RENAISSANCE HOTEL (located in Karachi,
Pakistan),
LAHORE
RENAISSANCE HOTEL (located in Lahore Pakistan),
COLOMBO
RENAISSANCE HOTEL (located in Colombo,
Sri Lanka),
MALACCA
RENAISSANCE HOTEL (located in Malacca,
Malaysia),
SANDAKAN RENAISSANCE HOTEL (located near Sandakan, Malaysia),
BANGKOK
RENAISSANCE HOTEL (located in Bangkok,
Thailand),
SYDNEY
RENAISSANCE HOTEL (located in Sydney,
Australia),
HONG
KONG RENAISSANCE HOTEL (located in Hong
Kong, China),
OKINAWA
RENAISSANCE RESORT (located in Okinawa,
Japan),
TOKYO
RENAISSANCE HOTEL (located in Tokyo,
Japan),
SEOUL
RENAISSANCE HOTEL (located in Seoul,
South Korea)
and
ANTALYA
RENAISSANCE RESORT (located near Antalya,
Turkey).
Complainant's GOA
RENAISSANCE RESORT was opened in Goa, India in 1990, which is five years prior to the date upon which Respondent is
alleged to have adopted the name THE RENAISSANCE COCHIN for hotel services.
In addition, and following on from this
long-established practice, which was adopted in order to indicate to consumers
where a particular hotel is located, Complainant has registered numerous domain
names consisting of the word RENAISSANCE combined with a geographic designation. Respondent
has admitted that at least 64 such domain names belong to Complainant.
It is well settled
that Respondent's knowledge of
Complainant's rights in Complainant's RENAISSANCE mark and name may be inferred
from the international fame of Complainant's RENAISSANCE mark and Complainant
again referred to the Exxon Mobil case referred to above.
Respondent's
decision to adopt the confusingly similar service mark THE RENAISSANCE COCHIN
for use in connection with hotel services offered in Cochin five years after
Complainant opened its GOA RENAISSANCE RESORT in Goa indicates that Respondent
had actual knowledge of Complainant's
well-known and famous RENAISSANCE mark, that Respondent had actual
knowledge of Complainant's practice of
combining its RENAISSANCE brand name with geographic place names to identify
its hotel and resort properties, and that Respondent intended to trade upon the
reputation of Complainant's RENAISSANCE mark. Respondent's contrary explanation to the
effect that it “first coined the descriptive term RENAISSANCE with a
geographical location" is demonstrably false.
Complainant urges the Panel to conclude
that Respondent's allegation that Respondent adopted the name THE RENAISSANCE
COCHIN for hotel services without knowledge of Complainant's well-known and
famous name RENAISSANCE is also untrue.
Respondent's use
of the RENAISSANCE COCHIN service mark reflected by the domain name in
connection with hotel services is not a bona
fide offering of services, because the facts and circumstances of this case
indicate that Respondent adopted it with intent to trade upon the reputation of
Complainant's well-known and famous RENAISSANCE
mark and name for hotel services.
Respondent cannot rely upon its intentional
infringement of Complainant's well-known and famous RENAISSANCE mark and name to establish
rights or legitimate interests in the disputed domain name under the Policy,
and Respondent has alleged no other rights or legitimate interests therein. Complainant
therefore urges the Panel to conclude that Respondent has no rights or legitimate interests in respect of the
domain name accordingly.
[3.] Respondent has asserted that
Complainant has failed to establish that Respondent
has
used and registered the domain name in bad faith.
Respondent has
denied Complainant's allegations of bad faith on the grounds that Complainant's
RENAISSANCE mark is not well known or famous; and that confusion is unlikely
because THE RENAISSANCE COCHIN logo displayed on Respondent's website differs
from Complainant's RENAISSANCE logo and no actual confusion has resulted from
Respondent's use of the domain name in connection with the offering of hotel
services.
However,
Respondent’s assertion is based on the false and misleading representation that
Complainant first used Complainant's RENAISSANCE mark in India on
October 1, 2003, subsequent to Respondent's registration and use of the domain
name. As previously discussed, October 1, 2003 is the effective date
of Complainant's registration for its RENAISSANCE mark for hotel services in
India, not Complainant's date of first use of Complainant's mark in India. Complainant
has continuously used Complainant's RENAISSANCE service mark for hotel services
rendered in India
since 1990, well prior to the date upon which Respondent registered or used the
domain name. Complainant has also proved that its
RENAISSANCE name and mark have become
internationally well known and famous as a symbol of the source and quality of
Complainant's hotel services well prior to the date upon which
Respondent registered or used the domain name. In
addition, the evidence filed
with the Complaint demonstrates that Complainant has extensively advertised and
promoted Complainant's hotel services under Complainant's RENAISSANCE
service mark in India.
Respondent’s registration and use of
the disputed domain name, which incorporates Complainant’s well known
RENAISSANCE mark and name in connection with the marketing of competing services,
plainly reveals Respondent's bad faith, and suffices to establish Respondent's
bad faith for purposes of the Policy and Complainant referred to The Caravan Club and Marriott cases which are mentioned above.
Despite
Respondent's assertion to the contrary, the THE RENAISSANCE COCHIN logo
displayed on Respondent's website is sufficiently similar to Complainant's
RENAISSANCE logo that Internet users may reasonably believe, in error, that the
hotel services offered on Respondent's website are Complainant's well-known
RENAISSANCE branded hotel services. Complainant's well-known RENAISSANCE brand
name comprises the dominant portion of both Respondent's RENAISSANCE COCHIN
logo and Complainant's RENAISSANCE logo.
In addition, Respondent has elected to display its THE RENAISSANCE COCHIN
logo in a rust color which is highly similar to that in which Complainant's
RENAISSANCE logo is displayed.
Respondent's appropriation of Complainant's well-known
RENAISSANCE brand name for use as the dominant portion in its THE RENAISSANCE
COCHIN logo on its website indicates Respondent's intent to profit from actual
confusion as to the source of Respondent's hotel services.
Respondent's assertion that there has
been no actual confusion is demonstrably false, for at least one documented
incident of actual confusion has occurred, suggesting that numerous incidents
of confusion have gone unreported. Complainant therefore urges the Panel to
conclude that as a result Respondent has registered and used the domain name in
bad faith.
[4.] Respondent
has alleged that Complainant is engaged in reverse domain name
hijacking.
For a
claim of reverse domain name hijacking to prevail, Respondent must either show
that Complainant knew of Respondent's unassailable right or legitimate interest
in the disputed domain name, or that Complainant knew of Respondent's clear
lack of bad faith registration and use, and nevertheless brought the Complaint
in bad faith. See Louis
Vuitton Malletier v.- J.N. Prade, D2000-1115 (WIPO Oct. 13, 2000). In this case, Respondent has alleged
that Complainant is engaged in reverse domain name hijacking on grounds that
Respondent has rights or legitimate interests in the domain name demonstrated
by Respondent's "demonstrable
preparation to use the domain name for a bona fide business purpose."
Respondent has in fact used the domain name for the purpose of marketing
hotel services in competition with Complainant. However, as previously discussed,
Respondent's offering of competing
hotel services under the confusingly similar mark reflected in the domain name
for the purpose of trading upon the reputation of Complainant's previously
well-established and well-known mark is not a bona fide service offering for purposes of establishing rights or
legitimate interests under the Policy. Respondent has failed to allege any facts or
circumstances which suggest that Complainant has brought its Complaint in bad
faith.
[5.] Respondent has requested
that the Panel dismiss the Complaint due to the
existence
of other legal proceedings between the parties and/or to suspend it pending the
outcome of those other legal proceedings.
In addition, the
Civil Action will not be decided under the UDRP, but rather under the laws
which govern acts of trademark infringement and unfair competition occurring
within the territory
of India. Complainant
has used and/or registered its trademark in at least 88 counties and
jurisdictions, and Respondent's website identified by the domain name is
available to Internet users worldwide.
Because Respondent has agreed to be bound by the UDRP, and the dispute
between Complainant and Respondent as to Respondent's registration and use of
the domain name is extra-territorial in nature, an early decision under the
UDRP is appropriate thereto.
Also,
Complainant's Complaint, Respondent's Response to Complainant's Complaint and
Complainant's Reply to Respondent's Response are of record in this proceeding,
and all documents necessary to proceed to decision in this matter are presently
before the Panel.
Respondent's
request that the Panel dismiss this proceeding is premised upon the false and
bad faith assertion that Complainant failed to disclose the nature or existence
of other legal proceedings between the parties in Complainant's Complaint. As noted
above, a copy of the complaint filed
in the Civil Action, including Complainant's prayer for relief therein, was
submitted with the Complaint filed in this proceeding.
Complainant
therefore requests that the Panel, in accord with the discretion granted it
under Rule ¶ 18(a), (1) deny Respondent's requests to dismiss or suspend this
proceeding and (2) consider the filings and proceed to decision.
FINDINGS
Complainant is part of the Marriott Group of
companies, all of whom operate and manage hotels, resorts, health spas, golf
clubs, restaurants, and convention centres etc.
all over the world. Complainant itself operates 137 hotel and
resort properties under the name RENAISSANCE.
These are principally in the USA but 69 of them are situated in various
countries outside the US. Many of
them use the name RENAISSANCE followed or preceded by the geographical name
where they are situated. Complainant has over 60 domain names
consisting of the word “renaissance” followed by a geographical name.
Complainant has been using its name and
trademark RENAISSANCE for 25 years but only since 1990 in India, where Respondent is situated, when it
opened a “Renaissance” hotel in Goa. This hotel
is no longer part of the RENAISSANCE Group and Complainant now operates in India
principally through a large hotel and convention centre in Mumbai.
The name RENAISSANCE has been used,
advertised, and promoted by Complainant extensively throughout the world. Complainant
claims that it is a well-known trademark.
In India, Complainant has two
trademark registrations for RENAISSANCE, one in Class 16 dating from 1993 and
the other in Class 42 for services, which was filed on October 1, 2005 only a
few weeks after it became possible to register trademarks for services in India, and
registered on November 18, 2005.
Respondent was formed in 1995 with the aim of
operating a hotel in Cochin, Kerala, India
under the “Renaissance” name and THE RENAISSANCE COCHIN hotel was opened in
1996.
It filed a trademark application in India for THE
RENAISSANCE COCHIN for services in Class 42 on September 24, 2003 (i.e. a
week before Complainant’s application in the same class) and this application
has been opposed by Complainant.
Respondent is also contesting an action filed
in the local District Court in Ernakulam, Kerala,
India by
Complainant alleging infringement and passing off of the name RENAISSANCE.
DISCUSSION
The Panel has set
out the facts in this case at length and in some detail.
Its Decision is similarly detailed. This is because
the indications are that Respondent and its advisers are less familiar with the
workings of the UDRP than is Complainant and, for that matter, the Panel. The Panel
therefore wishes to be seen as treating both parties as equitably as possible.
Preliminary Issues
There are several
preliminary issues to be decided before proceeding to a Decision in this case.
1. Legal
Proceedings
The first issue
which must be decided is fundamental – should the Panel proceed with a Decision
in the light of the fact that the parties are already locked in a legal battle
regarding Respondent’s use of the name RENAISSANCE.
Complainant argues that the UDRP case
must proceed regardless of this, but Respondent states that it is not
appropriate, under the principles of res
judicata, for Complainant to seek relief in this proceeding for the same
issues which it is currently litigating in court in India.
The facts are that
two years ago, on February 22, 2005, Complainant filed a civil action, C.S. No 5
of 2005, against Respondent in the District Court at Ernakulam, India seeking a
perpetual and a temporary injunction to restrain Respondent from passing off by
using the mark RENAISSANCE. This action is as yet unresolved. In
accordance with paragraphs 3(b)(xi) and 5(b)(vi) of the Rules for Uniform Domain Name Dispute Resolution
Policy (“the Rules”), both parties have drawn the Panel’s attention to
this action, and both parties filed documentation from the Complaint.
Complainant has also
filed oppositions to Respondent’s trademark applications in Classes 29 and 42
for THE RENAISSANCE COCHIN in India,
while Respondent has filed, or threatens to file, rectification actions against
Complaint’s two Indian trademark registrations for RENAISSANCE.
The present
dispute is of course mandatory upon Respondent by virtue of the dispute
resolution provision in its registration agreement, a copy of which was annexed
to Complainant’s Additional Submission.
Also, under paragraph 4(k) of the Policy
either party has the option, at its sole discretion, of “submitting the dispute to a court of competent jurisdiction for
independent resolution before such mandatory proceedings is commenced or after
such proceeding is concluded.”
The question of
whether or not to abort a UDRP Complaint because the matter was already being
litigated was reviewed extensively in AmeriPlan Corp. v. Gilbert,
FA 105737 (Nat. Arb. Forum Apr. 22, 2002) in which there was a
civil action in progress between the parties, and the Panel declined to decide
the case, saying:
The pivotal issue in
this UDRP dispute is whether or not there has been a breach of the contract
between the Complainant and the Respondent. It would be impossible for this Panel, with
the sparse and conflicting statements before us, to make that decision without
considerable improper speculation. There are numerous evidentiary issues that
could only be resolved by testing of evidence through full disclosure and
cross-examination. We are not prepared to so speculate, nor need
we do this because the issues are already before another forum in California.
Rendering a decision on the merits
when there is already a court action pending does violence to the one function
of the UDRP - to reduce the cost and effort required to resolve domain name
disputes issues by offering a simplified mechanism in lieu of litigation. Instead of minimizing the amount of effort
(time and money) needed to resolve a dispute, filing a UDRP proceeding when the
parties' dispute is already in front of a court, adds to that effort.
Likewise, in Lutton
Invs., Inc. v.
Darkhorse Distrib., Inc., FA
154142 (Nat. Arb. Forum June 4, 2003), the complaint was dismissed without prejudice
because, it was said, that “[t]he pending arbitration between the parties to
this dispute, touching on matters directly relevant to the resolution of a
claim under the UDRP, justifies terminating the present administrative
proceeding.”
However, a Panel
has discretion, under paragraph 18(a) of the Rules, to decide whether to
suspend or terminate the proceedings as a result of any legal proceedings
initiated prior to or during a dispute.
In general, panels have declined to
exercise this discretion, unless the legal proceedings have specifically referred
to the domain name in dispute. See, e.g.,
Cognigen Networks, Inc. v. Pharm. Outcomes Research, D2001-1094 (WIPO
Dec. 18, 2001) (“Moreover, as the Panel reads the Complaint, the relief which
the Complainant seeks, which is predicated on allegations of federal trademark
infringement and unfair competition under federal and state law, does not
specifically include the relief sought through this proceeding; namely,
cancellation of the contested domain name.
… Moreover, since both the Complaint and Response have been filed in this
proceeding, hence providing the Panel with the documents necessary for it to
proceed, the Panel has decided, in accordance with the discretion granted it
under paragraph 18(a) of the Rules to: (a) deny the Respondent’s request to dismiss
the proceeding, and, as such (b) consider these filings and proceed to decision
in this matter.”).
There have been
similar findings in Creative Paradox LLC v. Talk America, FA 155175 (Nat.
Arb. Forum June 23, 2003), BPI
Commc’s, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), and Institute of Certified Mgmt. Accountants v.
Schemmann, FA 245957 (Nat. Arb. Forum May 5, 2004).
It is clear from
the copy of the Complaint filed by Complainant in the Civil Action in India that what
Complainant is principally requesting from the Court is for Respondent to cease
“passing off defendant’s business by use
of the mark ‘RENAISSANCE’ or any other confusingly similar name or in any other
manner whatsoever.” The disputed domain
name is mentioned as an illustration of the use of RENAISSANCE on the Internet
and although its transfer is mentioned this does not appear to be the main
relief being prayed for.
In contrast to the
Ameriplan case quoted from at length
above, the Panel in this case has no need to speculate.
All the facts relating to this disputed
domain name are before it and it has concluded that a Decision in this case is
unlikely to have any bearing on the outcome of the Civil Action in which the
parties are currently engaged in India. The Panel is conscious that civil proceedings
in India
can sometimes drag on interminably. The Civil Action between the parties has
already lasted two years and neither party has indicated that it is likely to
be resolved in the near future.
Consequently, the
Panel has decided, in the circumstances, and in fairness to both parties, not
to exercise its discretion under Paragraph 18(a) of the Rules and to deny
Respondent’s request not to take a decision in this matter, pending disposal of
the suit.
2. Late
Filing of Response
As noted above, the
hard copy of Respondent’s Response should have been filed by April 2, 2007 but
in fact it was not received until April 5, 2007.
Thus the Forum considered it to be not
in compliance with Supplemental Rule 5. The electronic copy of the Response appears to
have been timely filed and the hard copy missed the official deadline by only a
few days. Moreover, this late filing has
not deterred Complainant from filing an 11-page Additional Submission (with 108
pages of Exhibits), so it clearly was not deterred by Respondent’s mistake. The Panel
therefore believes it would be inequitable not to take the Response into
account and it has done so.
3. Reverse Domain Name
Hijacking
Respondent has leveled a charge of reverse domain
name hijacking against Complainant. For example, it claims that Complainant
is trying to “bully” it out of its domain name.
In Mirama Enters. Inc. v.
NJDomains, Abuse Contact: abuse@mail.com,
FA 588486 (Nat. Arb. Forum Jan. 16, 2006), it was found that the complainant
had engaged in reverse domain name hijacking where it had commenced the
proceeding despite possessing knowledge of the respondent’s rights in the
disputed domain name). Also, in
Verkaik v.
Crownonlinemedia.com,
D2001-1502 (WIPO Mar. 19, 2002), it was held that:
To establish reverse domain name
hijacking, Respondent must show knowledge on the part of the Complainant of the
Respondent’s right or legitimate interest in the Domain Name and evidence of
harassment or similar conduct by the Complainant in the fact of such knowledge.
It could be argued that
Complainant is harassing Respondent because it is already proceeding with an
action against Respondent in the courts.
However, the present domain name dispute
is perfectly legitimate, and a better argument is that Complainant has brought it
in good faith, believing that it has rights to the disputed domain name based
on its longstanding rights in the RENAISSANCE mark.
In addition, there is a strong belief on
the part of Complainant that Respondent has no legitimate rights to the
disputed domain name (a contention with which the Panel agrees, see below).
In Watson
Pharms., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum
Dec. 19, 2005), the respondent’s assertion of reverse domain name hijacking was
rejected because there was no evidence that the complainant was using the
Policy other than to declare its rights.
According to the Rules, reverse domain name
hijacking means “using the Policy in bad
faith to attempt to deprive a registered domain-name holder of a domain name.”
There is no evidence in this case of bad faith on the part of Complainant, and
so the Panel dismisses the charge of reverse domain name hijacking.
Decision
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;
(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.
Identical and/or Confusingly
Similar
Respondent has argued that Complainant cannot claim monopoly rights in
the word “Renaissance” because it is a common descriptive word meaning a “revival
of interest in a particular topic.” In
addition, the name is widely recognised as referring to a period in European
history in the 14th, 15th and 16th centuries during which there was a massive
resurgence and development in art, literature, science and religion.
It is true that, under the trademark law of India, descriptive words are not
registrable, but in putting forward this argument Respondent should recall that
for a mark to be refused registration
for this reason it must be descriptive of the goods or services for which
registration is sought. The word “Renaissance” does
nor describe Complainant’s goods in Class 16 or its services in Class 42. Thus,
Complainant’s registration of it in India and elsewhere are, in the
opinion of the Panel, perfectly valid.
Complainant has in fact succeeded in registering the
trademark RENAISSANCE in 87 countries around the world, as well as in the 15
countries of the European Union. In India,
it has two registrations, neither of which pre-date Respondent’s registration
of the disputed domain name <renaissancecochin.com>. Respondent
alleges at one point in its Response that it has filed actions to rectify the
Register by cancelling these two registrations, while at another point it
claims that such actions will be filed.
Complainant asserts that it has no news
of any such action. However, this is irrelevant, because it has been
held in numerous decisions, that under the Policy it is not necessary
that a complainant’s mark be registered in the country in which the respondent
operates, and that it is sufficient that the complainant can demonstrate a mark
in some jurisdiction, for
example, in Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001), and in KCTS Television Inc.
v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001), it was held that it does not matter,
for the purpose of paragraph 4(a)(i) of the Policy, whether the complainant’s
mark is registered in a country other than that of the respondent’s place of
business.
In
any case many of Complainant’s registrations for RENAISSANCE do pre-date
Respondent’s domain name registration, and this is quite sufficient for the
purposes of paragraph 4(a)(i) of the Policy.
Complainant also asserts that it has continuously and extensively used
the RENAISSANCE mark in India
since 1990, which is well before Respondent registered the disputed domain name
in 1997.
Respondent argues that Complainant has only used the RENAISSANCE
trademark in India
since October 2003. But this is the date when one of Complainant’s
Indian trademark registrations was filed and Complainant quite correctly points
out that it does not equate to a date of first use.
An applicant can use a trademark long
before filing it and indeed in the USA – where Complainant is
domiciled – a trademark cannot be registered unless it has first been used.
Complainant alleges that it spends over $25 million annually promoting
the mark around the world, including in India.
Consequently it has almost certainly
established common law rights in the mark in India.
In Artistic Pursuit LLC v. calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007), it was concluded that the complainant
had established common law rights in the trademark ARTISTIC PURSUIT by using
the mark in commerce before Respondent registered the disputed domain name.
On the question of similarity, it is
customary, when comparing for similarity a trademark and a domain name, to
ignore a generic suffix such as “.com.” Therefore,
the comparison in this case is between RENAISSANCE on the one hand and
RENAISSANCE COCHIN on the other. Complainant has argued that the mere
addition of the geographic identifier “cochin,” a town in India, to its
RENAISSANCE mark, fails to sufficiently distinguish the <renaissancecochin.com>
domain name from its mark. In addition, Complainant has pointed out that
the names which it gives to its hotels invariably consist of the word
RENAISSANCE followed or preceded by the name of the place where they are
situated, and that “Renaissance Cochin” falls exactly into that category of
name.
Complainant
refers to two Decisions under the Policy in which it was held that this type of
name was similar to a complainant’s trademark, namely Marriott Int’l, Inc.
v. MCM Tours, Inc., FA 444510
(Nat. Arb. Forum May
6, 2005) and Radisson Hotels Int’l, Inc, v.
Raddison Suites, FA 98235 (Nat. Arb. Forum Aug. 27, 2001). But there
were similar findings in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as
“cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, did not overcome a finding of
confusing similarity); and VeriSign, Inc. v.
Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net>
domain names where the respondent added the word “India” to the complainant’s
mark).
The Panel sees no reason why it should depart
from these several precedents and so has little hesitation in finding that
Complainant has rights in the name RENAISSANCE, that the disputed domain name <renaissancecochin.com>
is confusingly similar to this trademark, and that paragraph 4(a)(i) of the
Policy is therefore proved.
Rights or Legitimate Interests
It is well
established that once a complainant has made out a prima facie showing
that a respondent has no rights or legitimate interests in a disputed domain
name, the burden of proof shifts to the respondent to rebut that showing by
providing concrete evidence that it does have rights to or legitimate interests
in the domain name. In this regard, the Panel finds that
Complainant has amply satisfied its requirement in this regard, and so it must
look to see whether Respondent has rebutted Complainant’s case.
Complainant claims, and Respondent confirms, that Respondent has used
the disputed domain name to provide information about a hotel in India called
“The Renaissance Cochin.” There is some
dispute as to when the domain name was first used, but the Panel believes this
is not relevant. Complainant claims that
Respondent’s hotel is in competition with its own RENAISSANCE hotels, and
Respondent confirms this by stating that it is in the premium
hospitality industry, yet at the same time it contrarily claims that its
services are entirely different to that of Complainant.
Respondent also claims that since it
started in business in 1966 it has:
[G]rown to become one of the
largest and most respected names in the business, known for its high
standards of food and service, reliability, consistency, professionalism and
innovation in catering, food and hospitality services.
Respondent’s tradition and concrete business structure and its guided
vision towards customer satisfaction, convenience and ease have been duly
translated into enormous success. The goods and services of offered by
Respondent under the trademark/service mark “THE RENAISSANCE COCHIN” are
extensively manufactured, marketed, sold and provided around the globe and
various countries with tremendous sales.
However, it provides no proof thereof and indeed this claim is hard to
believe, coming as it does from a group of four individuals operating a single
hotel in the provincial town of Cochin
in Kerala.
Respondent also
claims that there has been no confusion between its name and Complainant’s name
and mark, a claim which is denied by Complainant who quotes from an unsolicited
e-mail sent to it by a gentleman who not only was confused but who also
criticised Respondent’s claim to be operating a five-star hotel, saying that it
was not even worth three stars. This would seem to put paid to Respondent’s
claims that its customers are of a different
grade to those of Complainant, that it has not taken any business from Complainant as a result of its
operation of the website at the disputed domain name, that its name is not
likely to cause confusion amongst the consumers, and that it has been using the
mark for the past 10 years without any injury or loss to any third party.
Given the fact that Complainant has operated
a chain of hotels under the name RENAISSANCE for more than 25 years, given the
global spread of its business, (including a hotel in India which opened before
Respondent began to use its name or registered the disputed domain name), and
given the fact that, even in 1995, Indian business men were accustomed to traveling
all over the world on a regular basis, the Panel finds it difficult to credit
Respondent’s claim that it hit upon the name “Renaissance” for its new hotel
venture by chance or honestly.
In Carey Int’l, Inc.
v. Kogan, FA
486191 (Nat. Arb. Forum July 29, 2005), it was held that the
respondent’s use of disputed domain names to market competing limousine
services was not a bona fide offering of goods or services under
paragraph 4(c)(i) of the Policy, as the respondent was appropriating the
complainant’s CAREY mark in order to profit from the mark.
Also, in Florists’ Transworld
Delivery v. Malek, FA 676433 (Nat.
Arb. Forum June 6, 2006), it was held that the respondent’s use of the
<ftdflowers4less.com> domain
name to sell flowers in competition with the complainant did not give rise to
any legitimate interest in the domain name.
In conclusion, the Panel therefore finds that Respondent is not using
the disputed domain name in connection with a bona fide offering of
goods or services or a legitimate noncommercial or fair use. Consequently,
paragraph 4(a)(ii) of the Policy has also been proved.
Registration and Use in Bad Faith
Respondent alleges that the
disputed domain name is comprised of a common dictionary word, “renaissance,”
plus the geographic identifier “cochin,”
which is the city in which Respondent’s hotel is located. If the Panel were to accept these claims,
then Respondent did not register and use the disputed domain name in bad faith
under paragraph 4(a)(iii) of the Policy. For example, it was held in Build-A-Bear Workshop, Inc. v.
Pallone, FA 874279 (Nat. Arb. Forum
Mar. 1, 2007) that “A respondent does not register or use a disputed domain
name in bad faith if the terms of a complainant’s mark are of common usage and
the respondent operates a business that could reasonably be marketed under the
disputed domain name.” Also, in Paigen v. Research & Design, FA 791739 (Nat. Arb.
Forum Oct. 25, 2006), no bad faith registration and use was found of the
<chaco.com> domain name where
the respondent registered it to provide information on the “Chaco Canyon” and
Internet users did not exclusively associate the CHACO mark with the
complainant.
However in this case there is ample
proof that the word “Renaissance” is more than just a dictionary word, and that
consumers do associate the name RENAISSANCE with Complainant. To quote
just one example, there are over 25,000 members of the MARRIOTT REWARDS
programme in India
who regularly receive advertisements for and information about, inter alia, Complainant’s hotels around
the world.
There is also little mileage in
Respondent’s claim that the word “Renaissance” is a common term over which no
one can claim proprietary rights. It does indeed appear in the dictionary and
the term is famous as describing a significant period in European history, but
neither of these descriptions has anything to do with the hotel or hospitality
industry and one only has to look at the quantity and spread of Complainant’s
trademark registrations to appreciate that the mark has not been held to be
descriptive in any of those countries where a trademark that is descriptive
will be refused registration.
Respondent’s hotel is in
competition with those of Complainant and such use has been held to constitute
bad faith under the Policy. See, e.g.,
Jerie v. Burian, FA 795430 (Nat.
Arb. Forum Oct. 23, 2006) in which it was concluded that the respondent
registered and used the <sportlivescore.com>
domain name in order to disrupt the complainant’s business under the LIVESCORE
mark because the respondent was maintaining a website in direct competition
with the complainant. See also Marriott Int’l, Inc. v. MCM Tours, Inc.,
FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a
travel agency and thus operates in the same business as the Complainant. The
parties can therefore be considered as competitors.
The Panel thus finds that the Respondent
registered the domain name primarily for the purpose of disrupting the business
of a competitor, which constitutes evidence of registration and use in bad
faith under Policy 4(b)(iii).”).
The Panel therefore concludes that the
disputed domain name <renaissancecochin.com> has been registered and is being used
in bad faith and that, therefore, paragraph 4(a)(iii)
of the Policy is also proved.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <renaissancecochin.com>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: April 23, 2007
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