WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Raffles International Limited v. Top Business Names

Case No. D2013-1880

1. The Parties

The Complainant is Raffles International Limited of Singapore represented by Amica Law LLC, Singapore.

The Respondent is Top Business Names of George Town, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <myraffles.com> is registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2013.

The Center appointed William R. Towns as the sole panelist in this matter on December 27, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant, founded in 1989 and incorporated under the laws of Singapore, individually and in conjunction with its group of companies¹ provides luxury hotel services under the RAFFLES brand. The Complainant’s flagship property, the Raffles Hotel Singapore, was established in 1887, and designated as a national monument by the Singapore government in 1987. The Complainant also operates RAFFLES hotels and resorts in a number of locations around the world, and has secured registrations for RAFFLES or RAFFLES-formative marks in more than thirty (30) countries.² The Complainant maintains an official website at “www.raffles.com” and owns a number of other domain names incorporating the RAFFLE mark. At least one UDRP panel has held the Complainant’s mark to be famous in respect of hotel and related services. Raffles International Limited v. Vincent Chye Ltd, WIPO Case No. D2011-1392 (<rafflesspa.com>).

The Respondent registered the disputed domain name on April 19, 2006. The Complainant contends that prior to the filing of the Complaint, the disputed domain name resolved to a landing page (“www.myraffles.com”) featuring links to third-party websites related to hotels, travel, and vacations. The Respondent has been a party in several prior UDRP proceedings. See TheAmerican Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business, WIPO Case No. D2010-0319 (<aaaautobrokers.com>, <aaacarmovers.com>, <aaafinancialservices.com>, <aaaholidayhomes.com>, <aaawashington.com>, <aaawebtravel.com>); Investment AB Kinnevik v. Top Business Names, WIPO Case No. D2010-0549 (<kinnevik.com>); SusieCakes, LLC v. Top Business Names, WIPO Case No. D2010-2253 (<susiecakes.com>); Hunkemoller B.B. v Top Business Names, WIPO Case No. D2011-0362 (<hunkmoeller.com>) Factorie Pty Ltd v. Top Business Names I Domain Administrator, WIPO Case No. D2012-1892 (<factorie.com>); The American Automobile Association. Inc v. Top Business Names, WIPO Case No. D2012-2295 (<aaaautoglass.com>).

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its RAFFLES mark, as the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant maintains that the inclusion of the common dictionary word “my” does not serve to overcome such confusing similarity. The Complainant explains that it operates luxury hotels and resorts in numerous countries in Europe, Asia and other regions, and draw visitors for all around the world. The Complaint asserts that significant good will has been developed in the RAFFLES mark, and that the RAFFLES mark is highly distinctive, non-descriptive, and is a well-known or famous mark in relation to the Complainant’s hospitality services.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has no basis for relying on any of the grounds set out in paragraph 4(c) of the Policy. The Complainant submits that absent any explanation from the Respondent, it must be presumed that the Respondent was aware of the Complainant’s rights when registering the disputed domain name. The Complainant avers that the Respondent has not been licensed or authorized by the Complainant to use the RAFFLESmark; nor has the Respondent approached the Complainant for any license to use the mark. To the contrary, the Complainant submits that the Respondent has misappropriated the goodwill and reputation of the RAFFLES mark to unfairly derive income. The Complainant maintains that the Respondent is not making a bona fide use of the disputed domain name inasmuch as the disputed domain name is “bait” to attract Internet users for commercial gain to its pay-per-click website.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, its RAFFLES mark has acquired an extensive and worldwide reputation and may be regarded as a well-known mark, such that the Respondent knew or should have known of the RAFFLES mark prior to registering the disputed domain name. The Complainant submits that the Respondent‘s registration and use of the Disputed Domain Name in the circumstances at hand gives rise to the inference that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website based on the confusion derived from the similarity existing between the disputed domain name and the Complainant’s well-known RAFFLESmark. The Complainant further notes that the Respondent’s pay-per-click website contains links to entities providing products and services related to those of the Complainant. In addition, the Complainant argues that the Respondent has a history of abusively registering domain names that infringe trademark rights of third parties.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <myraffles.com> is confusingly similar to the Complainant’s RAFFLES mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy stands essentially as a standing requirement.³ The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety, and the Panel finds that the addition of the common dictionary word “my” is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g., PayPal, Inc. v. Daniel Benel, WIPO Case No. D2013-0621 (<mypaypal.com>).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Complainant’s RAFFLES mark is highly distinctive in relation to the Complainant’s hotel and hospitality services. The Complainant contends that the Respondent registered and has used the disputed domain name with a pay-per-click website featuring links to related products and services.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s RAFFLES mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel infers that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion, in order to divert traffic to the Respondent’s pay-per-click website. Internet users could easily expect the disputed domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent most likely was aware of the Complainant and the Complainant’s RAFFLES mark when registering the disputed domain name. The record is convincing that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The Panel is of the view that the Respondent most likely registered and has used the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

The fact that the disputed domain name is currently inactive does not change the Panel’s findings.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <myraffles.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: January 5, 2014

¹ Members of this group, Fairmont Raffles Hotels International, own or manage luxury hotels, resorts, spas and food & beverage establishments operating under the RAFFLES, RAFFLES HOTELS & RESORTS, FAIRMONT, FAIRMONT HOTELS & RESORTS, SWISSOTEL and SWISSOTEL HOTELS & RESORTS names and marks.

² The Complainant also asserts common law rights in the RAFFLES mark.

³ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.