Complainant is Tiara Hotels & Resorts LLC of Dubai, United Arab Emirates, represented by Cedar White Bradley of Dubai, United Arab Emirates.
Respondent is John Pepin of Woking, Surrey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <essque.com> (the “Domain Name”) is registered with DNS:NET Internet Service GmbH, of Berlin, Germany (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2009. On January 14, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2009, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint and the proceedings commenced on January 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009. The Response was filed with the Center on February 10, 2009.
The Center appointed David H. Bernstein as the sole panelist in this matter on February 24, 2009. 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.
A number of procedural issues have arisen in this case, including disputes over the applicability of the Supplemental Rules, whether the case should be suspended pending conclusion of a recently-filed trademark application, and whether the panel should accept supplemental materials. In addition, after the Panel was appointed, the Panel was notified that Respondent may have initiated a legal proceeding related to the Domain Name in court in Berlin, Germany, which raises the question of whether the Panel should terminate this proceeding. The Panel addresses these procedural matters, below.
A. The Applicability of the Supplemental Rules
By email dated January 28, 2009, the Respondent indicated that he would not agree to be bound by the Supplemental Rules. In particular, Respondent stated:
“I do not wish to accept the Supplementary Rules of WIPO, most notably I do not wish to accept rule 12 by which you seek to absolve WIPO of all legal responsibility. I do not accept that such rules are in compliance with the UDRP nor have I entered a contract that agrees to such rules when I registered the domain name.
I therefore formally ask that you write to me within 5 days and inform me that I do not have to agree to such WIPO rules and that even so WIPO will still consider my response to the complaint as valid. If I do not receive such assurance, or receive no reply at all then I shall be proceeding with litigation that will involve WIPO.”
The Center responded on February 2, 2009. The Center informed Respondent that the Supplemental Rules are applicable in UDRP proceedings because they are incorporated by the UDRP, to which Respondent had agreed in his contract with the Registrar. Moreover, Supplemental Rule 12 mirrors Rule 20 of the UDRP itself, which specifically provides that a Provider (such as WIPO) shall not be liable to a party for any act or omission in connection with any administrative proceeding except in the case of deliberate wrongdoing.
Respondent has not articulated to the Panel any claim that WIPO has committed any wrongful act or omission. Obviously, should Respondent pursue any such claim in a court, the court (if it has jurisdiction over the parties and the matter) can address whether any such act or omission has occurred, whether the exclusion of liability of UDRP Rule 20 and WIPO Supplemental Rule 12 is applicable, and whether the act rises to the level of deliberate wrongdoing. In any event, with respect to this proceeding, the Panel confirms that the Supplemental Rules do apply.
B. Request for Suspension
By email dated February 11, 2009, Respondent requested that these proceedings be suspended pending the examination of a trademark application Respondent filed with the UK Trademark Office on January 13, 2009 (one day before the filing of the Complaint). Although the question of whether Respondent has trademark rights in the mark ESSQUE is certainly relevant to these proceedings, the Panel is able to draw preliminary conclusions based on the record submitted. The mere submission of a trademark application (especially when the application is submitted after the dispute has already arisen) is not a basis for suspending a UDRP proceeding; otherwise, every Respondent could cause extensive delay, and in the meantime continue to use the domain name at issue, merely by filing a trademark application. Moreover, the Panel notes that the key issue is whether Respondent had rights or legitimate interests in the Domain Name prior to the initiation of this dispute, not whether Respondent has taken steps to register a mark corresponding to the Domain Name after it was first notified by Complainant of this dispute. Accordingly, Respondent's request for a suspension is denied.
C. Supplemental Submissions
Complainant submitted a Supplemental Filing on February 19, 2009 (which, in part, addressed the Respondent's evidence that it had submitted a trademark application with the UK Trademark Office). The same day, Respondent submitted an email stating that, if the supplemental submission of Complainant is accepted, Respondent would request 20 days to submit a sur-reply.
As panels long have recognized, the Policy and the Rules demonstrate a strong preference for single submissions – that is, the Complaint and the Response. Parfums Christian Dior S.A. v. Jadore,
WIPO Case No. D2000-0938; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus,
WIPO Case No. D2000-0166. Although panels do, on occasion, request supplemental submissions pursuant to paragraph 12 of the Rules, (e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237), most panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of new evidence, issuance of new statutes or case decisions, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Parfums Christian Dior S.A., supra; Plaza Operating Partners, Ltd., supra; Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES,
WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662. Even then, if the new material is unlikely to have any effect on the outcome of the proceeding, allowing supplemental submissions will serve only to increase the cost and delay of the proceeding, with no commensurate benefit to the parties.
The Panel has reviewed Complainant's supplemental submission to determine whether it includes any facts or argument that justifies a second round of submissions. The supplemental submission largely addresses the facts and arguments advanced in the Response; it does not cite any new facts or law that has not yet been presented to the Panel. Although some of the facts in the Response may have been new to the Complainant (including that Respondent filed a trademark application for ESSQUE in the United Kingdom the day before the Complaint was filed) and others were not fully addressed in the Complaint (including the entire history of emails and telephone calls between Complainant and Respondent), none of the new facts in the Response rises to the level of a fact that has the potential to effect the outcome of this proceeding and as to which Complainant should be given an opportunity to reply. Similarly, although Complainant has responded to several of Respondent's legal arguments, the Panel is capable of assessing Respondent's and Complainant's respective arguments without the assistance of additional submissions. Accordingly, the Panel concludes that a further round of submissions is unwarranted, and therefore the Panel will disregard Complainant's supplemental submission.
Because the Panel has decided to disregard the Complainant's supplemental submission, Respondent's request for leave to submit a sur-reply is moot.
D. The German Court Case
By email dated February 26, 2009, Dr. Bernhard Knies of Knies & Albrecht, Munich, Germany, informed the Center that he represents Respondent and has filed a lawsuit against Complainant in court in Berlin, Germany. According to Dr. Knies, the complaint seeks a declaration that Complainant has no rights to the Domain Name. Dr. Knies included as an attachment to his email an unstamped copy of the complaint (in German; Respondent did not include an English translation). Respondent has not submitted a copy stamped as having been actually filed with the Court, nor has Respondent notified the Center of the official Court filing number for the complaint. Nevertheless, for purposes of this proceeding, the Panel assumes that the complaint has, in fact, been filed with the Court.
Although neither party has made any request that the Panel terminate or suspend this proceeding, the Panel is cognizant of paragraph 18(a) of the Rules, which provides that, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. Accordingly, the Panel has considered whether suspension or termination is appropriate, or whether it should proceed to decision.
If the complaint has been filed, and if the Court (which appears to be a court of mutual jurisdiction) accepts jurisdiction, then it appears that any decision of this Panel would be stayed pending either a settlement between the parties, dismissal or withdrawal of the Court action, or an order from the Court. Policy, paragraph 4(k). That is not, however, reason to automatically terminate or suspend this proceeding.
First, if the Court does reach the merits of this dispute, the Panel acknowledges that its decision will not be binding on the Court. In fact, the Court would not even review this decision in an appellate capacity but instead would decide, de novo, under appropriate national laws, which party is entitled to registration of the Domain Name. Nevertheless, the Court may find this Panel's views helpful. Especially since the parties have already submitted this dispute to the Panel for decision, and in this case the Panel already had reviewed the file and reached its conclusions prior to being informed of the newly-filed Court case, it seems both appropriate and efficient for the Panel to render its decision, and allow the Court to decide whether the decision adds anything to its determination.
Second, the Policy contemplates situations under which a Panel decision may be implemented even after a Court action has been filed, including if the Court action is later dismissed or if Respondent fails to provide a file-stamped copy of the complaint to the Registrar within ten days. Policy, paragraph 4(k). Accordingly, to ensure that the parties have a Panel decision to implement should any of those circumstances transpire, it would be appropriate for the Panel to issue its decision.
Third, issuance of a decision may help facilitate settlement. If this dispute is headed to court, there is no reason that the parties cannot continue to search for alternative methods of resolving their dispute. One popular form of alternative dispute resolution is early neutral evaluation; this decision may be able to serve that function and provide the parties with the opportunity to see how one neutral party reacts to their various claims and defenses.
Finally, as a matter of the equities, it seems appropriate to issue a decision here. The lawsuit in this case was filed long after the UDRP proceeding was initiated. In fact, Respondent even participated in the proceeding, filed a Response, elected to have the Complaint decided by a single-member Panel, and filed various additional submissions with WIPO. In this situation, where Respondent has expressly participated in and taken advantage of the UDRP process and has filed suit only after the Panel was appointed, it would be inequitable for the Panel to suspend its deliberations and terminate the proceeding. Instead, the Panel determines that it is appropriate for the Panel to issue its decision notwithstanding the apparent litigation that Respondent has filed in Berlin.
4. Factual Background
Complainant, Tiara Hotels & Resorts LLC, is a company organized under the laws of the United Arab Emirates, with a principal place of business in Dubai, UAE. The Complainant is a subsidiary of Zabeel Investments.
The Complainant received a tourism license from the UAE government on November 11, 2006 and develops and operates hotel and resort projects.
On July 8, 2008, Complainant registered the domain name <essquehotels.com>. The complainant now operates a website in relation to its hotel and resort business at “essquehotels.com”.
On July 22, 2008, the Complainant filed a trademark application for the mark ESSQUE in Lebanon. In September 2008, the Complainant filed additional trademark applications in the UAE, Australia, and the European Union claiming priority based on the Lebanese application. The Lebanese application has since matured into a registration.
On November 6, 2008, Zabeel Investments announced that it was re-branding Complainant as “Essque Hotels”.
The Respondent is John Pepin. He is a citizen of the United Kingdom. Respondent registered the Domain Name on November 16, 2008. The Respondent operates a website at “www.essque.com” which advertises an electronics retail operation.
On November 17, 2008, someone purportedly named Duaij Al Rumaihi contacted Complainant by email offering to sell the Domain Name for $4,750.
On January 6, 2009, Complainant's representative contacted Respondent and notified him of Complainant's belief that Respondent had no legitimate interest in the disputed Domain Name and that Respondent had registered the Domain Name in bad faith. Complainant requested Respondent transfer the Domain Name and offered to cover reasonable expenses up to $1,000.
On January, 13, 2009, Respondent filed a trademark application for the mark ESSQUE with the United Kingdom Intellectual Property Office under Class 35: electronic shopping retail services connected with computer equipment.
5. Parties' Contentions
A. Complainant
Complainant argues that the Domain Name is identical or confusingly similar to its trademark. Because the top level domain (here, “.com”) is customarily disregarded when judging the similarity of a domain name to a mark, the Domain Name is identical to the mark ESSQUE, in which Complainant claims to have registered trademark rights.
Complainant argues that Respondent has no rights or legitimate interests with respect to the Domain Name because there is no evidence that Respondent is using the Domain Name for a legitimate purpose. Complainant notes that the website at “www.essque.com” consists of a single page containing several images of electronic products under the name “Essque Electronics” and gives no address or contact details other than an email address. Complainant notes that a search of the United Kingdom's Companies House register did not identify any company or business operating under the name “Essque Electronics”. Complainant contends that the website was created solely to thwart any legal claims against Respondent's ownership of the Domain Name by giving the impression that the Domain Name was being used for a legitimate business purpose.
Complainant contends that the Respondent registered the Domain Name in bad faith because the Complainant received an offer to sell the Domain Name for $4,750 from the Respondent, using the identity “Duaij Rumaihi”, the day after Respondent registered the Domain Name. Complainant argues Duaij Rumaihi is Respondent's alias because the website “www.blast-proof-doors.com”, which is registered to Rumaihi, contains the contact address [email protected] and the domain name <blastdoors.co.uk> is registered to Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
B. Respondent
Respondent contends that Complainant's trademark rights are limited to the use of ESSQUEHOTELS in the UAE and Lebanon, whereas Respondent has rights to the use the trademark ESSQUE in the United Kingdom. Respondent claims Complainant has not used the mark ESSQUE on its own (that is, without “HOTELS”) and that Respondent's mark ESSQUE is distinct from Complainant's domain name “ESSQUEHOTELS”. Respondent notes that the Complainant uses the domain name <essquehotels.com> in relation to its principal business while the domain names <essque.net> and <essque.org>, which it also owns, are only used for pay-per-click advertising. Respondent claims that these facts show that the relevant comparison should be between the mark ESSQUEHOTELS and the mark ESSQUE.
Respondent claims that he has a legitimate interest in the ESSQUE mark as demonstrated by the website located at “www.essque.com” and by his pending trademark application. Respondent further claims that Complainant's interest in purchasing the Domain Name is proof that Complainant concedes Respondent has a legitimate interest in the Domain Name.
Respondent claims that the Domain Name was registered in good faith. Respondent claims to be in the business of researching expired domain names and registering them once they are available. Respondent claims that, in or around December 2007, he noticed that the domain name <essque.co.uk> was set to expire in November 2008. He also noticed that the registrant of this domain name also owned the Domain Name <essque.com>. Respondent claims that he monitored the availability of the <essque.com> Domain Name and that, when it became available, he entered a competitive auction through a company named “Snapfish” and won the rights to register the Domain Name. Respondent claims that the Domain Name is being used to promote Essque Electronics and not for anything related to Essque Hotels. Respondent further asserts that, to assess the issue of bad faith registration, one must look at the original registration of the Domain Name, not the date on which the registration was transferred to Respondent after the Snapfish auction.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has shown that it owns a trademark registration in Lebanon for ESSQUE, and that it owns applications pending in numerous other countries for the same mark. Complainant has thus sustained its burden of proving that it owns trademark rights in the mark ESSQUE.
The Domain Name <essque.com> is identical to Complainant's trademark. As Complainant notes, the top level domain is generally disregarded for purposes of comparing the similarity of a trademark and domain name. The remaining part of the Domain Name, “essque”, is identical to Complainant's trademark.
Respondent nevertheless contends that the Domain Name is not confusingly similar to Complainant's trademark because Complainant uses only ESSQUEHOTELS, and not ESSQUE. Respondent also contends that trademarks are territorial and that the UDRP was intended to protect only world-famous marks, like GUCCI and MICROSOFT, not Lebanese trademarks like ESSQUE. These arguments are without merit. The first factor of the UDRP requires that Complainant have trademark rights; it does not require that the mark be registered in any particular country or have achieved any degree of notoriety. Here, even if Complainant uses the domain name <essquehotels.com>, that does not limit its rights in the ESSQUE mark, which is the mark that is registered in Lebanon and covered by other pending trademark applications. Furthermore, and in any event, even if Complainant's mark were ESSQUEHOTELS for hotel services, the Domain Name would still be confusingly similar to that mark because it is identical to the distinctive element of the mark, ESSQUE. See Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Hong Yunju,
WIPO Case No. D2007-1764 (finding that the domain name <sheratonhotel.com> was confusingly similar to the mark SHERATON).
B. Rights or Legitimate Interests
Although Respondent claims that he has rights and legitimate interests in the Domain Name <essque.com>, on the record submitted to this Panel, that claim is not credible. Respondent states that he uses the Domain Name for a business that sells electronics, yet he submitted no evidence whatsoever of any sales of electronics, or even any interest in the electronics business by Respondent prior to his registration of this Domain Name. Moreover, as Complainant notes, there is no company in the United Kingdom for Essque Electronics, an assertion that Respondent does not contest.
Respondent does, however, admit that he is in the business of buying expiring domain names. That business may be legitimate if it involves purchasing domain names based on dictionary words and then using those domain names for generic or merely descriptive purposes, but it is not legitimate if the domain names are purchased for their trademark value and then used in ways designed to capitalize on that value.
That seems to be exactly what is going on here. Respondent acquired this domain name on November 16, 2008, just ten days after Complainant issued a press release announcing that it was rebranding itself as ESSQUE HOTELS. One day later, Complainant received an emailed offering to sell the Domain Name. In light of this chronology, the Panel infers that Respondent sought to acquire this Domain Name because of the value it would have to Complainant and then, either using the alias or working with Mr. Rumaiji, caused an offer to be communicated to Complainant to sell the Domain Name for $4,750, a sum that exceeds the price Respondent paid for the Domain Name. That Mr. Rumaiji is linked to Respondent through the domain name <blastdoors.co.uk> is persuasive proof that Respondent was behind this offer.
All of Respondent's efforts since the Complainant's rejection of that offer – including the posting of a simple webpage that purports to sell electronics, the filing of a UK trademark application, and the Respondent's offer to purchase Complainant's domain name <essque.net> – appear to have been designed to create a pretext of trademark rights, but the Panel finds them unpersuasive. Rather than show some legitimate interest in ESSQUE as a Domain Name for an electronics retailer, these steps (along with Respondent's unsuccessful effort to distance himself from Mr. Rumaiji's effort to sell the Domain Name) reinforce the Panel's view that Respondent is a cybersquatter who has concocted a process to try to extract maximum value from Complainant for this Domain Name while masking his cybersquatting conduct.
If this case proceeds to litigation, Complainant may well have an opportunity to test the bona fides of Respondent's claimed interest. For now, on the record in this proceeding, it appears to the Panel that Respondent's only interest in this Domain Name was to try to sell it to a trademark owner and not to genuinely run an electronics business. Accordingly, the Panel concludes that Complainant has sustained its burden of proving that Respondent lacks rights or a legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
For reasons similar to those discussed above, the Panel finds that Respondent registered and has used the Domain Name in bad faith. Respondent admits that he is in the business of purchasing expiring domain names. He purchased this Domain Name just 10 days after Complainant's press release, and then immediately offered to sell it to Complainant at a price in excess of his acquisition costs. That is the classic definition of cybersquatting. All of Respondent's actions since then – his effort to cover his tracks by posting a pretextual web page, his purported interest in purchasing one of Complainant's domain names, and his repeated efforts to delay the adjudication of this case – are more consistent with the actions of a cybersquatter than they are with the actions of a genuine brand owner. Indeed, if Respondent's behavior is consistent with anything, it is with his own behavior in the earlier case of Abu Dhabi Future Energy Company PJSC v. John Pepin,
WIPO Case No. D2008-1560, where the Panel concluded that the Respondent had “engaged in a pattern of conduct involving the disregard of the trademark rights of others”.
As for the registration of the Domain Name, Respondent's argument that the relevant date is the original registration of the Domain Name in 2003 is without merit. When Respondent acquired the Domain Name after the Snapfish auction, that constituted a new registration of the Domain Name, and it thus is Respondent's knowledge at that time that is relevant to the question of bad faith registration. For all the reasons discussed above, given the suspicious timing of the registration of the Domain Name (just ten days after Complainant's announcement) and the offer to sell the Domain Name (just one day later), the Panel infers that Respondent registered the Domain Name with the bad faith intent to attempt to sell it to Complainant for a price in excess of Respondent's registration costs.
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 Name <essque.com> be transferred to the Complainant.
David H. Bernstein Sole Panelist
Dated: March 10, 2009
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