The Complainant is Aman Group Sarl of Baar, Switzerland, internally represented.
The Respondent is Phuong Tran of London, Alabama, United States of America.
The disputed domain name <amankyoto.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2019. On February 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 25, 2019. 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 Complainant, Aman Group Sarl, is a multinational luxury hotel group providing various services in the hospitality industry such as accommodation at luxury resorts, wellness, dining and skincare. The Complainant was founded in 1988 and operates 34 resorts, hotels, and private residences in 21 countries around the world. Among others, the Complainants operates city resorts such as Aman Tokyo and Aman Venice. In February 2019, the Complainant announced that it will open a new resort in Kyoto, Japan, under the name of Aman Kyoto which is scheduled to open in November 2019.
The Complainant is the holder of a multitude of trade mark registrations across various jurisdictions throughout the world, including the United States, where the Respondent is located, for the mark AMAN, which it uses in connection with its hospitality business. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- AMAN, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 2,828,188 on March 30, 2004 in class 42;
- AMAN, international word mark registered with the World Intellectual Property Organization (“WIPO”) under No. 953150 on August 24, 2007 in classes 3, 9, 16, 36, 39, 41, 43 and 44 in numerous jurisdictions;
- AMAN, word mark registered with the USPTO under No. 3,341,763 on November 20, 2007 in class 36;
- AMAN, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 005892757 on March 4, 2008 in classes 3, 36, 43 and 44.
The Disputed Domain Name <amankyoto.com> was registered by the Respondent on July 22, 2015. The Disputed Domain Name currently does not resolve to an active webpage. Instead, the Disputed Domain Name resolves to a standard parking page operated by the Registrar. The parking page advertises domain name registration services offered by the Registrar.
On February 12, 2019, the Complainant sent a cease and desist letter to the Respondent via the email address provided in the WhoIs information connected to the Disputed Domain Name. The Complainant claims that the cease and desist letter could not be delivered since the email was returned with an error message stating that the email address did not exist.
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent has registered the Disputed Domain Name primarily to attract for commercial gain Internet users to the Respondent’s website 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 the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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 in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s AMAN mark has been registered and used in connection to the Complainant’s hospitality business.
The Disputed Domain Name <amankyoto.com> reproduces the Complainant’s AMAN trademark in its entirety, simply adding the geographic term “kyoto”. The Panel is of the opinion that the mere addition of geographic text to a complainant’s trademark does not avoiding a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; see also section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s AMAN trademark.
Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and provided no evidence to support that it has acquired trademark or service mark rights. The WhoIs information connected to the Disputed Domain Name indicates that the Respondent’s name is “phuong tran”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name. The Disputed Domain Name does not seem to be comprised of or refer to a dictionary word or phrase. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s AMAN trademark in its entirety with the addition of the geographic term “kyoto”, which, taken together, is similar to other city resorts that the Complainant operates such as Aman Tokyo and Aman Venice. Considering the established reputation of the Complainant’s trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel considers it likely that the Respondent registered the Disputed Domain Name in anticipation of the Complainant opening a hotel in Kyoto with a view to prevent the Complainant from reflecting the mark in a corresponding domain name or to sell, rent, or otherwise transfer the Disputed Domain Name registration to the Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name.
The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a wellknown mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
The Respondent is not presently using the Disputed Domain Name other than in connection with a parking page provided by the Registrar. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent’s concealing its identity or use of false contact details (see section 3.3 of WIPO Overview 3.0).
In the present case, the Panel is of the opinion that the Complainant’s AMAN trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. Furthermore, considering that the Complainant’s contention that the cease and desist letter sent to the Respondent’s email address was returned with the message that the email address did not exist remains unrebutted and that the Respondent’s postal address in the WhoIs information connected to the Disputed Domain Name does not appear legitimate, the Panel finds that the Respondent has used false contact details to register the Disputed Domain Name.
Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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 Name <amankyoto.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: April 5, 2019