The Complainants are Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. of Singapore, Singapore, represented by Amica Law LLC, Singapore. (collectively “the Complainant”)
The Respondents are DomainWorks Inc./ PARKROYAL.COM c/o Whois IDentity Shield / Vertical Axis, Inc. (collectively “the Respondent”) of Vancouver, Canada, Vancouver, Canada and Worthing Christ Church, Barbados represented by Ari Goldberger, Esq, ESQwire.com PC, United States of America.
The disputed domain name <parkroyal.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2008. On November 14, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On November 19, 2009, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2008. The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced December 12, 2008. In accordance with the Rules, paragraph 5(a), the extended due date for Response was January 21, 2009. The Response was filed with the Center on January 21, 2009.
The Center appointed Nasser A. Khasawneh, Tony Willoughby and David E. Sorkin as panelists in this matter on March 4, 2009. The Panel finds that it was properly constituted. Each member of 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.
On February 9, 2009, prior to the Panel's appointment, the Center confirmed receipt of a supplemental filing from the Complainant which will be discussed further below. In this case the Panel has decided to consider the supplemental filing from the Complainant. The Panel believes that the powers enumerated under paragraph 10 and paragraph 15 of the Rules permit them to consider this submission. In light of the Pane's overall findings below, the Panel did not require a rebuttal to the Complainant's supplemental filing from the Respondent.
One of the Complainants in this case is a publicly listed company operating under the laws of Singapore and is engaged in the hotel, property and investment business. The Complainant originally acquired the PARKROYAL trademark from Six Continent Hotels, Inc. in 2002 and currently has the right to use this trademark in both Singapore and 58 other countries around the world.
As evidenced by the accompanying Annexes, the Complainant is also the beneficial owner of 47 trademark registrations for PARKROYAL in 15 different countries around the world.
The Respondent in this case is an entity holding a number of domain names, including <parkroyal.com> which is registered with Nameview, Inc. According to a WhoIs database search, the disputed domain name was initially registered on June 9, 1997.
In arguing its case under paragraph 4(a) of the Policy, the Complainant first avers that the disputed domain name is identical to and wholly incorporates the Complainant's PARKROYAL trademark. The Complainant notes that when a domain name incorporates a distinctive mark in its entirety, it creates a sufficient case to establish that the trademark and the domain name are confusingly similar. Additionally, the suffix of “.com” is to be disregarded as an irrelevant distinction that does not change the likelihood of confusion between the Complainant's trademark and the disputed domain name.
In addition to the above, the Complainant alleges that, since any reasonable person would naturally construe the disputed domain name to be associated with or related to the official website of the Complainant or the Complainant's business, the domain name should be cancelled. The Complainant goes on to state that the Respondent's use of the disputed domain name has the effect of deceiving and confusing Internet users into mistakenly believing that the Respondent's services and products originate, have been approved or endorsed by, or are derived from the Complainant. The Respondent's use of online travel websites is particularly emphasized as problematic.
The Complainant notes that at a minimum, the existence of <parkroyal.com> has the effect of diverting (sometimes permanently) potential customers to the Complainant's website. The Complainant alleges that the results of this are huge losses to the Complainant's revenue in the event that the consumers become distracted and subsequently give up their search. The Complainant also notes that the further use of the disputed domain name will likely erode the distinctiveness of the PARKROYAL trademark and could possibly lead to the tarnishing of the trademark's reputation.
In arguing the second element under paragraph 4(a) of the Policy, the Complainant notes that since PARKROYAL is a distinctive and well-known trademark, the adoption and use of the disputed domain name by the Respondent, in the absence of any contrary evidence, would not be construed as legitimate. Due to the distinctiveness of the PARKROYAL trademark, the Complainant contends that the Respondent could make no legitimate use of the mark.
The Complainant further notes that the Respondent is not a licensee of the Complainant or authorized to use the Complainant's trademark. The Complainant argues that the Respondent had no basis for choosing the disputed domain name and had no preexisting rights to any of the products or services associated with the PARKROYAL trademark.
Furthermore, the Complainant avers that the Respondent has made no use or legitimate preparations to use the disputed domain name and as a result the Respondent has no justifiable rights or legitimate interest in the disputed domain name. The Complainant contends that the Respondent's present use of redirecting Internet users to other websites is not a bona fide offering of goods and services and cannot give rise to a legitimate interest in the domain name. Such a use is alleged to have been designed to usurp potential business opportunities from the Complainant.
In establishing bad faith registration and use on behalf of the Respondent, the Complainant contends that when such a trademark is so obviously connected with a well-known product or service, bad faith can be inferred. The Complainant argues that the PARKROYAL trademark is such a trademark. Additionally the Complainant argues that since the links on the disputed domain name refer to the Complainant, knowledge can be implied on the part of the Respondent.
As the Respondent has no connection to the PARKROYAL mark, and the mark is so widely known, the Complainant contends that the use of the disputed domain name to link Internet users to other travel sites would be considered bad faith. The Complainant also contends that additional damage is incurred due to the fact that the Complainant is being associated with other online travel websites and that the resulting confusion is taking customers away.
As noted above, the Panel has decided to consider the Complainant's supplemental filing with respect to the Respondent's arguments below. In its supplemental filing, the Complainant has evidenced that the disputed domain name contained links to hotels and resorts, including those of competitors of the Complainant. Additionally, the Complainant further argues that the content of the Respondent's website has nothing to do with Park Royal in London and any such claim to this type of use is merely an afterthought.
In terms of the pay-per-click aspect, the Complainant contends that as the links are based on the trademark value of a particular trademark and the Respondent had no prior association to that mark, the use would be considered as cybersquatting. The Complainant further notes that since the Respondent had used the Complainant's PARKROYAL mark to attract Internet users and to divert them to the Complainant's competitors, such a use would not be legitimate. The Complainant also argues that if the Respondent had conducted a meaningful search, that such a search would have revealed information pertaining to the Complainant. In that respect, the Respondent cannot rely on such ignorance to protect it from a finding of bad faith.
The Respondent contends that it acquired the disputed domain name due to the fact it incorporates the geographic term “Park Royal” (a large industrial area in West London, United Kingdom) and as a result assumed that no party could claim exclusive rights to it. The Respondent argues that it did not acquire the disputed domain name with the Complainant in mind and had no knowledge of the Complainant, its business or its trademark.
In arguing its case under the first element of paragraph 4(a) of the Policy, the Respondent notes that it takes no position as to whether the disputed domain name was identical or confusingly similar to a mark in which the Complainant had rights.
In arguing the next element concerning whether the Respondent has a right or legitimate interest to the disputed domain name, the Respondent contends that as “Park Royal” is a common geographic term and has multiple third party users, it can be used by the Respondent provided that it was registered in good faith and without an intent to target the Complainant's trademark. Accordingly, in this instance, the Respondent's legitimate interest “crystallized upon acquisition”.
As evidenced by the fact that the Respondent has registered a number of other domain names incorporating the word “park”, the Respondent contends that they had no knowledge of the Complainant's mark and were not trying to infringe upon any right of the Complainant to their respective trademarks. The Respondent further notes that since the terms “park royal” are subject to substantial third party use and are not exclusively associated with the Complainant's business, that the Respondent had a legitimate interest in the disputed domain name provided that it was not infringing upon the Complainant's rights.
The Respondent further contends that as the disputed domain name is being used to post advertising links related to “parks”, the use would be considered legitimate as a number of previous panels have ruled that pay-per-click advertising can constitute a bona fide offering of goods or services. The Respondent further avers that numerous other UDRP panels have held their actual business to be legitimate in the face of similar infringement claims.
In rebutting the Complainant's final argument under paragraph 4(a) of the Policy, the Respondent notes that since “Park Royal” is a geographic term and is the equivalent to a “common word” under the Policy, the Complainant must provide direct evidence of bad faith registration and use of the disputed domain name. The Respondent alleges that absent any direct proof that the disputed domain name was registered for the purpose of profiting from the Complainant's trademark rights, there can be no finding of bad faith registration or use.
In this case, the Respondent argues that the Complainant has not provided any direct evidence of bad faith, but is merely basing its argument on the inference that since the PARKROYAL trademark was so well-known, that Respondent surely was aware of their existence. The Respondent also contends that where substantial third party use of such a term exists, bad faith cannot be inferred.
As far as the direct evidence, the Respondent argues that no evidence of any travel-related pay-per-click links on the disputed domain name have been provided, whether relating to the Complainant or otherwise. The Respondent notes that the links on the landing page relate to the travel related term “parks” and were selected automatically through various software applications. Furthermore, the Respondent notes that even if this use were considered in bad faith, there is no evidence of bad faith registration in this case.
The Respondent notes that the only pattern of disputed domain name registration in this case is based on the value of “park” as a descriptive term and was done in good faith. The other domain name registrations of the Respondent do not indicate that the Respondent was specifically targeting names embodying other entities' trademarks. The Respondent alleges numerous instances where past panels have ruled that such a use does not constitute bad faith registration.
As a result of the above, as well as the lack of evidence in this case, the Respondent contends that the Complaint should be denied.
Paragraph 4(a) of the Policy provides that the Complainant must establish each of the following with respect to the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In support of its obligation under paragraph 4(a)(i), the Complainant has evidenced through their Complaint and the accompanying Annexes that they obtained rights to the PARKROYAL trademark in 2002 from an entity that had been using the trademark in its business since 1992. The Complainant has demonstrated that they have rights to the PARKROYAL trademark both in Singapore and in a number of other locations around the world. Additionally, the Complainant is also the registered owner of the domain name <parkroyalhotels.com>.
In the present case, the Respondent's domain name of <parkroyal.com> wholly incorporates the Complainant's trademark. As a result of this as well as the fact that the Complainant has shown that it has rights to the PARKROYAL trademark, the Panel finds that the disputed domain name of <parkroyal.com> is identical to a trademark in which the Complainant has rights. The Panel also agrees with the Complainant that the use of the “.com” suffix is as an irrelevant distinction that does not alter the likelihood of confusion. VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709. Accordingly, the Panel will disregard the “.com” suffix.
Based on the above facts, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The Complainant is now required to make at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. Once that case has been made by the Complainant, the burden shifts to the Respondent who must demonstrate that it has rights or a legitimate interest in the domain name. Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110.
However, in light of our finding under the next head in relation to the issue of bad faith registration and use, it is unnecessary for the Panel to address this topic.
The final element that the Complainant must evidence is that the domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration; this list is not exhaustive. Additionally, a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant has successfully shown that the Respondent had no prior connection or rights to the PARKROYAL trademark and have not been authorized to use the PARKROYAL trademark by the Complainant. The Panel does not agree with the Respondent's contention that direct evidence that the Respondent was trying to profit from the value of the Complainant's trademark is required; rather, in instances such as this, the Panel is able to look at the various facts and circumstances of the case and make a determination based on how they view the evidence as to whether bad faith registration and use occurred.
In this instance, the Panel does not find that the PARKROYAL trademark was so widely known that the Respondent must have been familiar with it. Additionally, there is no specific evidence of record or in the content of the site at the disputed domain name that would unequivocally lead the Panel to infer that the Respondent knew of the Complainant's existence or the PARKROYAL trademark.
The majority of the current content on the site at the disputed domain name relates to camping and park activities, primarily confined to the United States. The Respondent has registered a large number of other domain names relating to “parks” as a generic and common term. Furthermore, the Respondent asserts that it has registered a number of other domain names based on geographic terms. Upon reviewing the names of these other registrations, there is no evidence that the Respondent has engaged in a pattern of conduct or any other activity in which the objective was to benefit from the Complainant's trademark. The wide nature of those other registrations seems to suggest that the Respondent has sought to benefit from the registration of a wide range of geographical and other generic terms without any clear evidence indicating that the Respondent had targeted the trademarks of others in this effort. In other words, there is no proof here of a pattern of cybersquatting conduct.
Finally, while the arguments presented by the Respondent that the choice of the disputed domain name was linked to a geographical area in London may be plausible and have not been effectively rebutted by the Complainant, the correlation between the Park Royal area in London and the content of the disputed domain name is non-existent. Notwithstanding this, on balance the Panel finds in the circumstances that the evidence presented by the Complainant above, when reviewed in light of the various arguments made by the Respondent, is not enough to support a finding of bad faith registration and use.
Based on the preponderance of the evidence, the Panel is of the opinion that the Complainant has failed to present sufficient evidence under paragraph 4(b) of the Policy or any other evidence to lead the Panel to the conclusion that the Respondent registered and used the disputed domain name in bad faith.
As a result, the Panel is unable to rule that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh | |
Tony Willoughby | David E. Sorkin |
Dated: March 18, 2009