Forte (UK) Limited v. Eugenio Ceschel
[Indexed as: Forte v. Ceschel]
[Indexed as: fortehotels.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0283
Commenced: 17 April 2000
Judgement: 31 May 2000
Presiding Panelist: Geert Glas
Domain name - Domain name dispute resolution - Registered trademark - Well-known mark - Confusingly similar - Consumer confusion - No legitimate rights or interests - Knowledgeable choice - Bad faith registration - Constructive knowledge.
Complainant owns a trademark for FORTE for use in its hotel operations, and has developed and marketed their business under this trademark. Complainant registered the domain name "forte-hotels.com". The domain in question is "fortehotels.com" registered by Respondent. Respondent claims to be involved in the tourism sector, but is not a licensee of Complainant.
Held, Name Transferred to Complainant
Domain name is confusingly similar to Complainant's registered trademark. Complainant holds trademark for FORTE, which is well-known for hotel services. Consumers could be confused and think that the domain name in question is associated with Complainant and its registered trademark.
Respondent has no legitimate interests or rights in the domain name. Respondent is not a licensee of Complainant. Furthermore, Respondent did not submit any evidence to show that they had a legitimate interest or rights in the domain name. Respondent's claim of being involved in tourist industry does not entail a legitimate interest or right.
Finally, the domain name was done in bad faith. Domain name is not associated with a real on-line commercial or non-commercial presence. In addition, Respondent has registered other domain names involving names and trademarks of other well-known banks and tour operators in Italy. Respondent has been involved in the tourist industry for more than 10 years, so it should have known of Complainant's registered trademark at the time of registration of the domain name in question.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
Glas, Panelist: -
1. The Parties
Complainant is Forte (UK) Limited, 166 High Holborn, London, WC1V 6TT, United Kingdom. Respondent is Eugenio Ceschel, Via Fedele Lampertico, 12, 00191 Roma, Italy.
2. Domain Name and Registrar
The domain name at issue is "fortehotels.com"; hereinafter referred to as the "Domain Name". The registrar is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint on April 17, 2000 (hard copy and exhibits). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 26, 2000.
On April 19, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On April 20, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutions' Verification Response, confirming that the registrant is Eugenio Ceschel and that the contact for both administrative and billing purposes is Oznic.com.
Having verified that the complaint satisfied the formal requirements of the
Policy and the Rules, the Center transmitted on April 26, 2000, to email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by May 15, 2000. On the same day, the Center transmitted via air mail copies of the foregoing documents to:
· Mr. Eugenio Ceschel (registrant)
Via Fedele Lampertico 12
· OZNIC.COM (administrative, technical, zone and billing contact)
PO Box 761
Sunburry, Vic 3429
On May 15, 2000, the Respondent filed a Response to the Complaint, which the Center acknowledged to the parties on the same day.
On May 15, 2000, in view of the Complainant's designation of a single panelist the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received on May 16, 2000, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was May 31, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The complaint is based upon the trademark FORTE registered by Complainant in 64 countries for classes which include class 42: hotel services.
Complainant states that Forte is "one of the worlds leading hotel companies with over 200 hotels throughout the world" and that it has "invested substantial sums of money in developing and marketing their hotel services under the FORTE trade mark and brand and (that) there is considerable goodwill in the trade mark in respect of the hotel business."
Complainant registered the domain name "forte-hotels.com" on August 29, 1995.
Fortehotels.com was registered on February 10, 1999. It appears from Network Solutions' Verification Response that Eugenio Ceschel, Respondent, is the registrant of "fortehotels.com". There is no relation between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant's mark.
The Domain Name does not resolve to an active web site.
Respondent, in his Response identified himself as an entrepreneur in the tourism sector and member of several tourism companies, real-estate managements and tour operators. Respondent has also registered a number of domain names consisting of the names of well known Italian banks (e.g. bancoambrosianoveneto.com) and tour operators. In his Response, Respondent indicates that he registers domain names "for the purpose of giving them as a gift or friendly dealing". All of these domain names are still in the possession of Respondent.
On November 9, 1999, the legal counsel of Complainant sent a cease and desist letter to Respondent. Respondent reacted on November 14, 1999, declaring that as long as a domain name is not used, there is no trademark infringement. He consequently refused to transfer the Domain Name to Complainant.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is confusingly similar to Complainant's FORTE mark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Consequently, Complainant requires the transfer of the registration of the Domain Name to the Complainant.
Respondent argues that the trademark FORTE is a generic name, "in Italian it is a last name and also an adjective of the common language used in different meanings - mostly as a strengthening adjective" and that it cannot be a distinguishing sign or cannot be used to identify a company in the market.
Moreover Respondent states that "domain names are not trademarks and that they cannot be protected by the same rules. In other words, the domain name chosen by a subject that wants to have his own site in Internet is independent from the person who uses it and his distinguishing signs (name or company name, trademark, etc.), being registered only by a simple access code to the service or by an E-mail address."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and used in bad faith.
a. Confusingly Similar
The Domain Name consists of the words FORTE followed by the word HOTEL.
FORTE is a registered trademark of Complainant in 64 countries. These registrations cover in particular hotel services. Complainant registered in 1995 the domain name "forte-hotel.com".
Respondent argues that the "trademark FORTE is a generic name of common use in Italy and that (it) does not distinguish any particular activity and therefore the domain name "Fortehotels" does not constitute a damage for the personal identity of the Complainant. Besides, a domain name does not, for its own definition, identify the subject who uses it (there is no rule that says that a domain name has to be similar to the name of the subject who registers it, or that it should identify the subjects services, products or trademarks) and therefore cannot generate confusion with the distinguishing signs of other subjects."
Complainant claims he has invested substantial sums of money in developing and marketing its hotel services under the FORTE trade mark and brand and there is considerable goodwill in the trade mark in respect of the hotel business.
It can be said that the FORTE mark is a well-known mark with regard to hotel services.
Contrary to Respondent's assertion, it is highly likely that consumers would indeed think that the Domain Name is associated with Complainant whose domain name is only a hyphen different from the Domain Name.
In view of the above, the Administrative Panel finds that the Domain Name is confusingly similar to the FORTE mark of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its FORTE mark or to apply for any domain name incorporating this mark.
Respondent did not submit any evidence which demonstrates that Respondent has rights or legitimate interests in the Domain Name. Respondent merely contends "Mr. Ceschel has been working in the tourism field for more than 10 years and has matured professional skills in this sector, he also and has friendly relations with many directors and owners of major Italian Tour Operators". These circumstances however, do not constitute rights or legitimate interests in the Domain Name.
The Administrative Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
c. Registration and Use in Bad Faith
Respondent indicates in his response that he has not yet associated the Domain Name with a real online commercial or non commercial presence.
The WHOIS record for Respondent shows that Respondent has registered several other domain names which incorporate names (and trademarks) of famous Italian banks and tour operators.
Respondent's justification that he registers domain names "for the purpose of giving them as a gift or for friendly dealing" seems at odds with his refusal upon request, to transfer the Domain Name to Complainant.
It is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the Domain Name and Respondent has never been commonly known by the Domain Name.
Respondent has been working for more than 10 years in the tourism field. Therefore the Panel finds that Respondent knew of or should have known of the Complainant's mark and services at the time Respondent registered the Domain Name given the widespread use of the Complainant's FORTE mark.
In his Response, Respondent indicates that "Fortehotels.com are touristic ideas for groups of small travel agencies and small hotels that do not have the economic possibility to have their own publicity on the web, giving them the opportunity to be united under only one site for all travel agencies and only one site for all of the hotels." While this goal is as such laudatory, Respondent's intention to use the Domain Name for this project will inevitably create a confusion with the Complainant's mark as to the source, sponsorship, affiliation etc. of such web-site. As Respondent is a tourism industry professional, such choice must have been made knowingly.
In view of the above, the Administrative Panel finds that Respondent has registered and is using the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is confusingly similar to Complainant's FORTE mark, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4,i of the Policy, the Administrative Panel requires that the registration of the Domain Name "fortehotels.com" be transferred to Complainant.
Domain Name Transferred