Oberoi Hotels Pvt. Ltd. v. Arun Jose
[Indexed as: Obreoi v. Arun]
[Indexed as: Tridenthotels.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0263
Commence: 4 April, 2000
Judgement: 7 June, 2000
Panel Member: James Bridgeman
Domain name-Domain name resolution policy-Cybersquatting-Bad faith-Rights and legitimate interests-Diversion of business-Late response submission-Exceptional circumstances-Generic terms.
Complainant is a limited company engaged in the business of owning and managing hotels internationally. Complainant has used the name "Trident" since 1988. Complainant is registered proprietor of several Indian registered trademarks including "Trident hotels logo" and "The Trident". Complainant is proprietor of "Trident Hotels" hotel chain. Respondent has registered domain name "tridenthotels.com". Respondent claims to have several businesses in the USA including a real estate business. Respondent has submitted no evidence to that effect.
Held: Domain name transferred to Complainant
Complainant has established that it has protectable goodwill in the USA established by means of its New York office, international booking service and reservation phone lines. As a result any attempt by Respondent to establish a hotel chain using Complainant's name, "tridenthotels.com" would be actionable in passing off. Respondent has not provided any indication as to how he came to choose the name "tridenthotels.com". Respondent has not produced any evidence of any preparations to use this name. As a result Respondent has no rights or legitimate interests in the domain name "tridenthotels.com".
"Trident" is used by a number of enterprises worldwide. However Complainant has used the words "Trident" and "Trident Hotels" over many years to distinguish its goods and services and actively promoted them throughout the world in that time. Respondent could conceivably have planned to establish a single hotel known as "The Trident" or "The Trident Hotel". However, Respondent's use of the plural in the domain name signifies that it would have been used for a chain of hotels. This clear similarity to Complainant's trademark indicates that Respondent registered domain name in bad faith. The failure of the Respondent to activate a www site under the disputed registered domain name is also prima facie evidence of registration and use in bad faith.
Policies referred to:
Uniform Domain Name Resolution Policy Adopted August 6, 1999
Statutes referred to:
Rules for Uniform Domain Name Resolution Policy
World Intellectual Property Organization Supplemental Rules for Domain Name Dispute Resolution Policy
Cases referred to:
Mary-Lynn Mondich and American Vintage Wine Biscuits Inc v. Shane Brown d/b/a Big Daddy's Antiques, WIPO Case No. D2000-0004
Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003
1. The Parties
The Complainant is Oberoi Hotels Pvt. Ltd. having its registered office at 4, Mangoe Lane, Calcutta, India. The Respondent is Mr. Arun Jose, of 8737 Lumina Ct., Jenision, MI 49428, USA.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name <tridenthotels.com>. The Registrar with which the domain name is registered is Network Solutions Inc., P.O. Box 525, Herndon, Virginia - 20170, USA.
3. Procedural History
On April 4, 2000, these Administrative Proceedings were commenced by the Complainant pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999, (hereinafter " the Policy"). On that date the Complainant submitted a Complaint to the WIPO Arbitration and Mediation Center (hereinafter the "Center") by e-mail and the hard copy of same was received by the Center on April 6, 2000.
On April 14, 2000, the Center acknowledged receipt of the said Complaint.
On April 20, 2000, having determined that the said Complaint complied with the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") in accordance with paragraph 4(a) of the Rules, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent in his capacity as Registrant and in his capacity as Administrative Contact, Billing Contact of the said domain name. Said Notification was sent by courier with enclosures and by e-mail. Copies of said Notification were sent by e-mail , without attachments, on the same day to the authorized representative of the Complainant, to ICANN and to the Registrar.
Said Notification advised the Respondent inter alia that in accordance with the Rules, the formal date for commencement of these Administrative Proceedings was April 25, 2000 and that the Respondent was required to submit a Response to the Complaint within 20 calendar days from the date of receipt of the said Notification.
The last day for sending a Response was May 15, 2000. The Respondent was also advised that if the Response was not sent by that date, the Respondent would be considered in default and the Center would proceed to appoint an Administrative Panel to decide the case.
On May 17, 2000, the Respondent having failed to send a Response to the Center, the Center sent a Notification of Respondent Default to the Respondent. The Respondent sent an e-mail reply the same day and explained that he had misunderstood the procedure and sent a Response to ICANN and to the Complainant on May 13. The Respondent attached a copy of his Response to said e-mail and was advised by the Center that the said Response would be sent to the Administrative Panel who would have the discretion as to the sole discretion whether to take it into account.
On May 29, 2000, the Center appointed James Bridgeman to be the single member Administrative Panel in these Administrative Proceedings, having received a Statement of Acceptance and Declaration of Impartiality and Independence from him in accordance with the Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules).
This Administrative Panel is satisfied that it was properly constituted in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a limited company of the Oberoi Group which is engaged inter alia in the business of owning and managing hotels in India and in other jurisdictions under the name and style <THE OBEROI> and <THE TRIDENT>.
In India, the Complainant is the proprietor of hotels called <THE TRIDENT> in Agra, Chennai, Cochin,, Jaipur and Udaipur. The Complainant also owns and manages hotels of the same name in Jeddah and Khamis Mushayat. This hotel chain is referred to collectively as <TRIDENT HOTELS> in the Complainant's promotional and advertising materials.
The Complainant's group has sales offices in New York, London, Sydney, Cairo and Hong Kong. The group also arranges international reservation services through toll free call numbers in the USA, Canada, Belgium, France, Germany, Italy, Netherlands, Sweden, Switzerland, the UK, Australia, Hong Kong, Indonesia, Japan, Malaysia, Singapore, Thailand and other jurisdictions.
The Complainant has used the name <THE TRIDENT> since 1988 when its first hotel by that name was established in Chennai, India. The group also operates in-flight catering services under the name <THE TRIDENT FLIGHT SERVICES>.
The Complainant is the registered proprietor of the following Indian registered trade marks:
Sl. No. Mark Regd. No. Class User Dated
1. Trident Hotels (logo) 481625 16 1/11/87
2. Trident Hotels logo 481626 32 1/11/87
3. Trident hotels logo 481627 33 1/11/87
4. Trident hotels logo 481628 29 1/11/87
5. Trident hotels logo 481629 32 1/11/87
6. The Trident 481630 33 1/11/87
7. The Trident 481631 16 1/11/87
8. The Trident 481632 29 1/11/87
5. Parties' Contentions
In addition to the above referenced Indian registered trade marks the Complainant claims to have common law rights in the name <THE TRIDENT> and <TRIDENT HOTELS> by virtue of its continuous user of the said trade marks in India and other jurisdictions in the hotel and hospitality industry since 1988. During this time it has used the said trade marks on its stationary items and promotional materials. The Complainant has submitted evidence of use of both <THE TRIDENT> and <TRIDENT HOTELS> on various stationary and promotional items and advertisements to support this claim.
As regards the Respondent's rights or legitimate interest in the said domain name, the Complainant argues that because the Respondent has registered a domain name which is identical to the Complainant's trade mark, it follows that the Respondent has misappropriated the said trade mark and has no rights or legitimate interest therein.
The Complainant submits that the Respondent has not activated any www site at the <tridenthotels.com> domain name address. It submits that this is evidence of registration and use of the said domain name in bad faith by the Respondent.
Furthermore, the Complainant submits that because the domain name is identical and confusingly similar to the distinctive trade marks of the Complainant, this indicates that the Respondent registered the said domain name in order to pass off his goods and services as and for those of the Complainant. It further argues that the Respondent has registered said domain name with the aim of diverting the business of the Complainant. The Respondent has not submitted any evidence of this allegations regarding passing off or the alleged intention of the Respondent to divert the Complainant's business and relies on its reputation and its argument that the Respondent could not have any rights or legitimate interest in the said domain name.
In a brief Response, unsupported by any evidence, the Respondent makes the following submissions:
1. The Respondent claims to have several businesses in the USA being computer consulting firms, E-commerce business firms and a real estate business. He intends to establish further enterprises in USA and plans to acquire golf courses and hotels in the future.
2. The Respondent is located in the State of Michigan in USA and there are no <TRIDENT HOTELS> in the state of Michigan or to his knowledge in USA.
3. The Respondent does not carry on any business under the name <TRIDENT HOTELS> in the cities in which the Complainant operates.
4. The registered trade marks that the Complainant claims to own are not registered in the state of Michigan or in any of the states in the USA.
5. The Respondent denies that he is receiving any benefit from the reputation that Complainant has earned.
6. The name <TRIDENT> however is used by other businesses in other states of USA and around the world. This shows that although Trident is not word in dictionary, it is used by several business organizations. It is not exclusive to Trident Hotels in India.
7. The Respondent does not intend to harm, affect, degrade the Complainant, nor does he intend to steal the reputation of the Complainant.
8. The allegation that the Respondent intends to use the said domain name to harm to the Complainant's goodwill and reputation because of the fact that he does not have a www site up and running yet, is baseless, unprofessional and unethical. If the Respondent had any intention to cause harm to the reputation of the Complainant, he would have done so by this time. The very fact that he has not done so by now demonstrates that he has no such intention.
9. The Complainant claims to have the right to use this domain name since he claims to have the right to use this name in USA.
10 The Respondent argues that the Complainant cannot show that he has done anything to negatively affect its business.
11. In these circumstances, the Respondent claims that the domain name <tridenthotels.com> is his property and that in trying to take the domain name away from him is acting in a bullying, unethical, unfair and unbusinesslike manner
6. Discussion and Findings
The Respondent submitted the Response after the deadline set by the Rules. Paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Administrative Panel shall decide the dispute based upon the Complaint. The Respondent misunderstood the Rules and had sent the Response to the Complainant and to ICANN but not to the Center. This Administrative Panel is satisfied that these are exceptional circumstances and has admitted the Response.
The Complainant has provided evidence that it is the owner of a number of registrations in India for the above referenced registered trade marks viz . <THE TRIDENT> and <TRIDENT HOTELS> and has established a prima facie case that it has common law rights in these marks in other jurisdictions. By comparing the domain name to the Complainant's trade marks, this Administrative Panel is satisfied that the said domain name is identical or confusingly similar to the Complainant's trade marks.
The Complainant has submitted evidence of use of said trade marks in many jurisdictions throughout the world. Of particular interest is the fact that the Complainant has an international sales office in New York, USA which operates via telephone numbers 800-6-oberoi and 1-212-223 8800. The facsimile number of said office is 1-212-223 8500. In addition the Complainant provides an international reservation service with toll free numbers accessible from the USA and Canada at 800-5-oberoi and 800 562 3764.
The Complainant has alleged that the Respondent has no rights or legitimate interest in the domain name. The Respondent claims that he is entitled to use the domain name, because the Complainant has no registered trade marks or reputation in the State of Michigan. This Administrative Panel is satisfied that the Complainant has established a prima facie case that it has a protectable goodwill in the USA, established by means of its New York office, international booking service, and the provision of telephone numbers and toll free reservation phone lines. Furthermore the Respondent has not made any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. It is implicit in the response that the Respondent claims an intention to establish a hotel business in the USA and to use the domain name for the purposes of said hotel business. This may well be so, and the Complainant certainly fears that it is so.
Since the Complainant has satisfied this Administrative Panel that it has an established reputation and goodwill in the USA, it follows that any attempt by the Respondent to establish a hotel chain using this name would be actionable in passing off. The Respondent has not provided any indication as to how he came to choose this name and neither has he produced any evidence of any preparations to use this name. In the circumstances this Administrative Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interest in the said domain name.
The question as to whether the Respondent has registered the domain name and is using the domain name in bad faith has been more difficult to decide.
The Complainant submits that it has a world wide reputation and that its trade marks are distinctive. The word <TRIDENT> is a dictionary word meaning a three pronged fork. This Administrative Panel accepts the Respondent's argument that many undertakings throughout the world have adapted this word to distinguish their goods and services.
Nonetheless it must also be accepted that the Complainant has adapted the words <THE TRIDENT> and <TRIDENT HOTELS> to distinguish its goods and services over many years and has actively promoted its goods and services throughout the world through its sales offices and telephone booking lines in that time.
Furthermore the use of the word <TRIDENT> in combination with the word <HOTELS> has a certain distinctive character as it is indicative in ordinary language of a chain or group of hotels, such as the Complainant's group. It is conceivable that the Respondent may have planned to establish a hotel known as <THE TRIDENT> or <THE TRIDENT HOTEL>, but by his use of the plural in the domain name <tridenthotels.com>, the Respondent is signifying that the domain name would be used for a chain of hotels. This in the view of this Administrative Panel is unlikely and it is indicative of the fact that the Respondent registered the said domain name in bad faith. The Respondent does not give any explanation as to how he came to decide on the domain name.
The fact that the Respondent has registered the domain name and has not activated any www site at that address is prima facie evidence of registration and use in bad faith. The passive holding of a domain name has been held to be use of that domain name in bad faith. [Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000, at page 7, paragraph 7.11] Similarly failure to commercialize a domain name over a substantial period of time has been held to be a factor to be considered in deciding whether a domain name has been registered and used in bad faith. [ Mary-Lynn Mondich and American Vintage Wine Biscuits Inc. v. Shane Brown d/b/a Big Daddy's Antiques, WIPO Case No. D2000-0004, February 16, 2000, at page 3].
In the circumstances outlined above this Administrative Panel concludes that the Respondent has registered and is using the said domain name in bad faith.
This Administrative Panel is satisfied that (a) that the domain name <tridenthotels.com> is identical to Complainant's trade marks (b) that Respondent has no rights or legitimate interest in the said domain name and (c) that Respondent registered and is using the said domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and rule 15 of the Rules, this Panel directs that the domain name <tridenthotels.com> be transferred to the Complainant.
Domain Name Transferred