The Complainant is Mandarin Oriental Limited, Hong Kong, SAR of China, represented by Baker & McKenzie, Hong Kong, SAR of China.
The Respondent is Fiona Lui, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <mandarinorientalhotels.com> is registered with
Namesbeyond.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2005. On March 24, 2005, the Center transmitted by email to Namesbeyond.com a request for registrar verification in connection with the domain name at issue. On March 24, 2005, Namesbeyond.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2005.
The Center appointed Dr. Hong Xue as the Sole Panelist in this matter on May 3, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has not received any further requests from the Complainant or the Respondent regarding other submissions, waivers or extensions of deadlines. There is no need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceeding.
The language of the proceeding is English, as being
the language of the Domain Name Registration and Service Agreement, pursuant
to paragraph 11(a) of the Rules, and also in consideration of the fact that
there is no express agreement to the contrary by the parties. In addition, pursuant
to paragraph 10(b) of the Rules and in consideration of the circumstances of
this administrative Proceeding, the Panel, for the purpose to ensure that each
Party is given a fair opportunity to present its case, takes into account the
evidential materials provided in Chinese.
4. Factual Background
The Complainant has numerous trademark registrations for the mark MANDARIN ORIENTAL in Hong Kong, SAR of China, as well as in other countries and regions. Since 1985, the Complainant opened the majority of its luxury hotels in its hotel chain under the name “MANDARIN ORIENTAL”.
The Respondent registered the disputed domain name
on August 15, 2004.
5. Parties’ Contentions
A. Complainant
The Complainant is part of the prestigious and award-winning international hotel investment and management group, Mandarin Oriental Hotel Group (MOHG). Its first hotel in Hong Kong, known as “The Mandarin” opened in 1963, and developed a reputation as being a world-class hotel. Following success in Hong Kong, MOHG expanded its business through acquisition in 1974, of one of the world’s greatest hotels, The Oriental, in Bangkok. Following restructuring in 1985, MOHG opened the majority of its luxury hotels in its hotel chain under the name “MANDARIN ORIENTAL”. The Complainant’s hotel in Hong Kong is particularly prestigious and well known as it was MOHG’s first hotel.
In six months to June 30, 2004, the combined total revenue of hotels under the management of MOHG was US$304.10 million. As at June 30, 2004, MOHG’s goodwill was listed as US$20.70 million. The Complainant has extensively marketed and promoted its services under the MANDARIN ORIENTAL mark, which has been registered in Hong Kong and many other countries and regions. Annually, the Complainant usually spends in excess of US$4 million, and in 2004, spent almost US$5 million, on promotional activities.
The Complainant also via its website “www.mandarinoriental.com” and “www.mandarin-oriental.com” promotes its hotels. The website contains the promotional information concerning the Complainant’s properties, special accommodation deals, marketing partners, careers and significantly online booking system. In addition to dealing with consumers, the Complainant markets its hotels through travel agents, advertises its services in various publications and maintains special relationship with a number of airlines.
For the purpose of comparison between the Complainant’s mark and the disputed domain name, the “.com” can be disregarded because it is generic. In addition, the word “hotel” is a generic word, which is entirely descriptive when used in relation to the business of the Complainant or the Respondent. Therefore the word “hotel” in the disputed domain name should also be disregarded. The mere addition of the generic word “hotel” to the Complainant’s well-known mark is clearly insufficient to avoid confusion with the Complainant’s registered trademark. This is especially the case here where the additional terms are often used in conjunction with the Complainant’s mark. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark MANDARIN ORIENTAL.
The Respondent has no legitimate interest in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the mark MANDARIN ORIENTAL in a domain name or in any other manner. The type of activities carried out at the website gives no justification for the Respondent’s use and registration of the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. The website established at the disputed domain name contains a table of “popular links”, including “Mandarin Oriental Hotel” and “Mandarin Oriental”, which shows that the Respondent is aware of the Complainant’s trademark MANDARIN ORIENTAL. In addition, the Respondent resides in a building that is directly across the street from the Complainant’s Mandarin Oriental Hotel in Hong Kong.
The sponsored links on the Respondent’s website at the disputed domain name provide information and online hotel booking services in relation to hotels in general, not only to the Complainant’s hotels. The website is simply used as a means to direct users to sponsored links, including to the Complainant’s competitors. The Respondent’s misappropriation of the disputed domain name was no accident but to ride on the Complainant’s reputation in order to attract customers to its website for its own commercial gains.
The Complainant requests the Panel to transfer the registration of the disputed domain name from the Respondent to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In line with such provision, the Complainant must prove two aspects, i.e. it enjoys the trademark right; and the disputed domain name is identical with or similar to its trademark or service mark.
The Panel finds that the Complainant successfully
proves these two aspects. Firstly, the Complainant enjoys the trademark right
over “MANDARIN ORIENTAL” through both various trademark registrations
and extensive use of the mark. Secondly, the disputed domain name, which consists
of “mandarin”, “oriental”, “hotels” and
“.com”, is confusingly similar to the Complainant’s trademark
“MANDARIN ORIENTAL”. Except for the generic top-level domain designation
“.com”, the disputed domain name is in the composition of “mandarinoriental”
plus “hotels”. It has been well established by numerous cases that
incorporation of the entirety of the complainant’s trademark into the
dispute domain name may be sufficient to constitute confusing similarity for
the purpose of the UDRP. In the present case, the addition of the word “hotels”
to the Complainant’s mark “MANDARIN ORIENTAL” exacerbates,
rather than avoids, confusion since the Complainant is well known for providing
hotel services under that mark (See America Online Inc. v. Kandl Co. Ltd.,
WIPO Case No. D2000-1695 [needicq.com],
“the intention of the Respondent in preceding the word “ICQ”
with the verb “need” and registering the resulting domain name was
to increase the impact of the “ICQ” part of the domain name”,
and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO
Case No. D2003-0888 [porsche-autoparts.com], “The fact that the word
‘autoparts’ is added to Complainant’s trademark”…“even
adds to the confusion by leading users to believe that Complainant operates
the web site associated to the disputed domain name and therefore sells certified
Porsche car parts through this web site” ).
The Panel therefore holds that the Complainant fulfills the condition provided in paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name, and the Respondent provides no information asserting any rights or legitimate interests thereto.
A number of panels have held that the burden on a complainant regarding the
second element is necessarily light, because the nature of the registrant’s
rights or interests, if any, in the domain name lies most directly within the
registrant’s knowledge (see Packaging World Inc. v. Zynpak Packaging
Products Inc., DeC Case No. AF-0233; Education Testing Service v. TOEFL,
WIPO Case No. D2000-0044; Grove Broadcasting
Co. Ltd. v. Telesystems Communications Ltd., WIPO
Case No. D2000-0703). Other panels have held that once the complainant makes
a prima facie showing that the registrant does not have rights or legitimate
interests in the domain name, the evidentiary burden shifts to the registrant
to rebut the showing by providing evidence of its rights or interests in the
domain name (See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,
WIPO Case No. D2000-1415; Inter-Continental
Hotels Corporation v. Khaled Ali Soussi, WIPO
Case No. D2000-0252; Electronic Commerce Media Inc. v. Taos Mountain,
NAF Claim No. FA0008000095344).
Where, as here, the Complainant has raised a prima facie presumption of the Respondent's lack of such right or interest, and Respondent has failed to rebut that presumption, the Panel is entitled to accept Complainant's assertion. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from the Respondent’s default, as it considers appropriate.
The Panel therefore finds that Complaint fulfills the condition provided in Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A non-exhaustive list of what constitutes bad faith registration and use is set out in Paragraph 4(b) of the Policy, including the circumstances indicating that the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his/its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/its website or location or of a product or service on his/its website or location.
Based on the Complainant’s submissions, the Respondent is using the disputed
domain name <mandarinorientalhotels.com> for an online directory of various
businesses, including hotels, airlines, car rental, etc. The Complainant’s
trademark “MANDARIN ORIENTAL” is prominently shown in both the “Popular
Links” and “Popular Categories” on the Respondent’s
website at the disputed domain name. Given that the disputed domain name is
confusingly similar to the Complainant’s trademark and that the Complainant
is promoting and offering on the Internet its hotel services under its reputable
trademark, the users are highly likely confused as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website with the Complainant’s
mark. Although the Internet users would become aware that the Respondent’s
website is not sponsored by Complainant after actually accessing it, commercial
benefit may well accrue to Respondent if the products/services it offers for
sale (directly and indirectly) are purchased by those visitors under the disputed
domain name’s initially confusing effect, and commercial harm may well
be suffered by Complainant if the Internet users are diverted to its competitors
listed on the Respondent’s website and abandon their efforts to reach
the Complainant’s site (See Yahoo! Inc. v. M & A Enterprises,
WIPO Case No. D2000-0748).
The fact that the Respondent resides in Jardine House, which is just opposite the Complainant’s MANDARIN ORIENTAL HOTEL in Hong Kong further evidences the Respondent’s knowledge of the Complainant’s trademark and the attempt of capitalizing the mark’s reputation for its own commercial gain.
Based on the above finding, the Panel rules that the
Respondent has registered and is using the domain name in bad faith pursuant
to Paragraph 4(b)(iv) of the Policy and thus the Complainant fulfills the condition
provided in paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <mandarinorientalhotels.com> be transferred to the Complainant.
Hong Xue
Sole Panelist
Dated: May 17, 2005
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