Millennium & Copthorne International Ltd.
[Indexed as: Millennium & Copthorne International Ltd. v. McGovern]
[Indexed as: MILLENNIUMHOTELS.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0318
Commenced: 21 April 2000
Judgement: 8 June 2000
Presiding Panelist: Nick Gardner
Domain name - International Service marks - International Trademarks - Famous mark - Identical - Confusingly similar - Bad faith registration - Offer to sell - Reason for registration is resale for profit - Respondent owning other domain names and soliciting offers to sell.
Complainant owns and operates at least 117 hotels worldwide. Complainant owns 60 trademark registrations worldwide for "millennium" and "millennium hotels and resorts" and its derivatives in the field of hotel services. Complainant enjoys a widespread international reputation and goodwill. Respondent registered the domain name millenniumhotels.com.
Held, Name Transferred to Complainant
No Response was filed. Respondent has no legitimate basis to register the domain name which is confusingly similar to the mark of the Complainant. Respondent owns at least 21 other domain names, none of which are active sites, and has solicited offers of $150,000 for some of these names. Respondent's lawyer offered to sell domain name. Panel concludes that primary reason for registration was to sell to Complainant for consideration in excess of out-of-pocket expenses of Respondent. Registration for the purpose of selling the domain name for consideration is bad faith registration and use.
Policies referred to
ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Gardner, Panelist: -
1.1 The Parties
The Complainant is Millennium & Copthorne International, Ltd., whose registered office is at 36 Robinson Road, #04-01, City House, Singapore 068877. The Respondent is Blanche McGovern, 3100 Lorna Road, Suite 306, Birmingham, Alabama 35216, with an alternative address located at P.O. Box 360837, Birmingham, Alabama 35236.
2. The Domain Name(s) and Registrar(s)
2.1 The domain name in issue is "millenniumhotels.com". The Registrar is Network Solutions, Inc.
3. Procedural History
3.1 The Complaint was dated April 19, 2000, and received by the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2000.
3.2 No response to the Complaint has been filed. Notice of the proceedings was served on the Respondent in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy"). Notice was also served on the law firm of Bode and Beckman, which had previously represented "the owners" of the domain name (see below). Notification of
Respondent Default was served on May 24, 2000. A Panel was constituted on May 26, 2000, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.
3.3 The date scheduled for the Panel to render its decision is June 8, 2000.
3.4 The Complainant is represented by Peter L. Simmons, Esq. and Pauline L. Wen, of the firm of Fried, Frank, Harris, Shriver & Jacobson, One New York Plaza, New York, New York 10004-1980. The Respondent is not represented in this proceeding.
4. Factual Background
4.1 The Complainant owns and operates a number of luxury international hotels. The Complainant either directly or through associated companies owns, control and/or manages a substantial portfolio of at least 117 hotels with over 30,000 rooms worldwide, including the Millenium Hilton and Millennium Broadway in New York, New York, the Millennium Gloucester, the Millennium Bailey's, the Millennium Britannia Mayfair, and the Millennium Chelsea Knightsbridge Hotels in London; and the Millennium Opera Paris (formerly, the Millennium Commodore) in Paris. Extensive further evidence appears in the Complaint and material annexed thereto as to the widespread development of this business by the Complainant.
4.2 The evidence establishes the widespread international reputation enjoyed by the Complainant's hotels.
4.3 The Complainant's use of the name Millennium in this regard dates back to 1992 when it (or its predecessors) commenced operation of what was then called the Hotel Millenium (spelt with a single "n") in New York.
4.4 The Complainant or its associated companies have been granted sixteen trademark registrations by, and have five trademark applications pending before, the United States Patent and Trademark Office for the mark millennium and its variations in the fields of hotel services and related restaurant and business services and goods. These include:
* Millennium Hotels and Resorts
* The Hotel Millenium
4.5 The Complainant has also registered trademarks for millennium and its derivations in the field of hotel services in the United Kingdom, France, Germany, Japan, Hong Kong, and eleven other countries, and applications for additional such registrations pending in the United Kingdom, France, Germany, Japan, Hong Kong, Canada, Denmark, the European Community, and
seventeen other countries. The Complainant and/or its affiliates own at least 60 trademark registrations for millennium, millennium hotels and their variations in at least seventeen countries, with additional pending trademark applications in numerous other countries.
4.6 The Respondent's registration of the "millenniumhotels.com" domain name occurred on January 30, 1999.
4.7 With effect from January 2000, representatives of the Complainant endeavored to contact the Respondent. These approaches did not result in any response from the listed Respondent but did result in a telephone call from a representative of greatdomains.com, who described this organization as a clearinghouse for URLs, and who stated that it understood that an approach had been made to one of its clients. Greatdomains.com appears to be an Internet site which advertises itself as the Number One domain name marketplace and appears to provide an online exchange to buy, sell, and appraise registered domain names. A request was made by the Complainant's
representative to speak with the owner of the domain name, and a subsequent telephone call was received from a "Mike" who, in response to an offer on behalf of the Complainant of $2,000, indicated that it would cost the Complainant at least $25,000 to pay for an attorney.
4.8 The complainant has produced evidence that the Respondent, Blanche McGovern owns at least twenty-one domain name registrations, none of which are active websites, and has solicited offers of $150,000 for some of these domain names. One of these is a "ufofiles.com" domain name. The Complainant points out that the domain name registration for "ufofiles.com" identifies a Mike Avant as the registrant and provides the same contact facsimile number and Post Office Box address as for the "millenniumhotels.com" domain name registration.
4.9 On February 24, 2000, the Complainant, through its attorneys, sent a letter to Ms. McGovern demanding immediate cessation of the use of the millennium marks together with abandonment of the domain name in dispute. On March 7, 2000, William H. Bode, Esq. of Bode & Beckman LLP sent a letter in response. In his letter, Mr. Bode, stated he represents the "owners of the Internet domain name millenniumhotels.com'". He did not identify who those owners were. He went on to request that Complainant suggest a proposal for the purchase of the "millenniumhotels.com" domain name. No amount was suggested. Mr. Bode did not describe any legitimate reason for his clients' registration of the domain name. Further correspondence with Mr. Bode proved inconclusive.
4.10 The Respondent has recently changed her address to refer to a Post Office Box Number instead of a street address. The Respondent also fails to list a telephone number and instead lists facsimile numbers in the domain name registration.
5. The Claimants Contentions
5.1 These are set out at length in the Complaint but may be summarized as follows:
- The domain name at issue is directly associated with the world-famous Millennium Hotels which Complainant and its related entities own.
- The domain name "millenniumhotels.com " is identical, or at a minimum, confusingly similar to the Complainant's name and marks.
- The Complainant owns at least 60 trademark registrations around the world relating to hotel services incorporating the word "Millennium", including a trademark registration for the word mark millennium.
- The Respondent has no legitimate reason to register or maintain the domain name "millenniumhotels.com" and has failed to articulate any rights in or legitimate reason for registering the domain name.
- The domain name "millenniumhotels.com" is unrelated to the Respondent and if she tried to associate "Millennium" with hotel services, it would violate Complainant's worldwide trademarks.
- The Respondent appears to have registered the domain name "millenniumhotels.com" primarily for resale.
5.2 The Respondent has not provided any submissions to this Panel.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material this Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the ICANN Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements and also have been communicated to the law firm which has acted for the Respondent (or her associate).
6.3 The domain name millenniumhotels.com is confusingly similar to various of the Complainant's registered trademarks.
6.4 The Complainant has a substantial reputation and goodwill in the mark Millennium Hotels and variations thereof and its activities predate those of the Respondent.
6.5 There is no evidence to show that the Respondent had any legitimate basis to register the domain name or any intent to use it in any manner unconnected with the Complainant's business. Absent such evidence the Panel concludes that the Complainant is correct and that the name was registered with the intention of reselling it to the Claimant. The events which took place when the Complainant sought to make contact with the Respondent, as described above, clearly support this conclusion.
7.1 In the light of the above findings, the Panel's decision is as set out below.
7.2 The domain name is confusingly similar to the Complainant's trademarks (see paragraph 4(a)(i) of the Policy).
7.3 The Respondent has no rights or legitimate interests in the domain name (see paragraph 4(a)(ii) of the Policy).
7.4 The domain name was registered and is being used in bad faith (see paragraph 4(a)(iii) of the Policy). In particular it was registered primarily for the purpose of selling it to the Complainant for
consideration in excess of the Respondent's out-of-pocket costs (see paragraph 4(b)(i) of the Policy).
7.5 This Panel directs that the domain name be transferred to the Complainant.
Dated: June 8, 2000
Domain Name Transferred