WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Millennium & Copthorne Hotels plc, Millennium & Copthorne International Limited v. Kenneth Lim

Case No. D2018-0422

1. The Parties

The Complainants are Millennium & Copthorne Hotels plc of Horley, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Millennium & Copthorne International Limited of Singapore, Singapore represented by Amica Law LLC, Singapore.

The Respondent is Kenneth Lim of San Francisco, California, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <myanmarmillenniumhotel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2018, 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 March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. The Response was filed with the Center on March 26, 2018.

The Center appointed Adam Taylor as the sole panelist in this matter on April 5, 2018. 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.

4. Factual Background

The Complainants are collectively referred to below as “the Complainant”, unless it is necessary to refer to them separately.

The Complainant is part of the Millennium & Copthorne hotel group, which has been trading under the name “Millennium” since around 1997 and whose turnover was approximately GBP 925 million in 2016.

The Complainant owns and operates 131 hotels in 25 countries, some 57 of which include the term “Millennium” in their name and, of these, 14 are located in Asia. The other hotels have different names but are still associated with the parent “Millennium” brand.

The Complainant’s website is located at “www.millenniumhotels.com”. In 2016, the Complainant spent USD 17 million on operation and promotion of its official website and advancement of its internet presence.

The Complainant owns some 160 registered trade marks which comprise or include the word “Millennium” in more than 40 countries including, by way of example, European Union trade mark no. 310623 for MILLENNIUM, filed July 31, 1996, and registered September 24, 1998, in classes 35 and 42.

The disputed domain name was registered on December 11, 2012.

On September 5, 2016 a cease and desist letter was sent to the Respondent by the Complainant. The Respondent replied on September 6, 2016, stating: “My client told me that there is an ongoing talk with you in Myanmar. They told me to refer you back to them”. A follow-up communication was sent to the Respondent on September 12, 2016.

As at the date of filing the Complaint, there was no website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The Complainant is recognised as an industry leader in the hospitality industry. It has won many industry awards and has attracted significant attention in the international press.

The Complainant partners with some of the world’s most prominent airlines via frequent flyer programmes.

The disputed domain name is confusingly similar to the Complainant’s mark as it incorporates the word “Millennium” in its entirety. The addition of geographical or descriptive terms does not prevent a finding of confusing similarity.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not a licensee of the Complainant or otherwise authorised to use its marks.

The disputed domain name resolves to a blank page and the Respondent does not conduct any business through it. Such use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

The word mark MILLENNIUM is a distinctive and well-known trade mark. In the absence of any contrary evidence, the adoption and use of such a mark leads to a conclusion that the Respondent’s interest in and choice of the name were illegitimate. It could only have been acquired to capitalise on a high volume of visits by Internet users seeking the Complainant. Intentional infringement cannot constitute a legitimate interest.

In view of the Complainant’s numerous trade mark registrations, the Respondent must or should have known that, when acquiring the disputed domain name, it could not claim any rights or legitimate interests.

There is no evidence that the Respondent is commonly known by the disputed domain name.

The disputed domain name was registered and used in bad faith.

The Respondent’s use of the disputed domain name for a blank website constitutes passive holding in bad faith.

Through widespread use and substantial advertising/promotional efforts, the Complainant’s mark is well known and its use as a domain name indicates that the Respondent was aware of the Complainant’s mark.

The Complainant’s rights pre-date registration of the disputed domain name by over 15 years.

The overwhelming probability is that the Respondent selected the disputed domain name because it reflects the name of an acclaimed and prominent hotelier and using the mark would (erroneously) indicate to consumers that its website was the Burmese arm of the Complainant’s business, and/or that the Respondent was the Complainant’s’ Burmese licensee.

At a minimum, the disputed domain name diverts or distracts potential customers away from the Complainant’s website to a blank website.

The Respondent’s refusal to respond in substance to the cease and desist letter sent by the Complainant’s solicitors is further evidence of bad faith.

B. Respondent

A summary of the Respondent’s contentions is as follows:

The Respondent was asked to register the disputed domain name by its client, “Millennium Hotel of Myanmar”, a local family-run hotel that began construction in 2011 and became operational in 2013. The hotel operates under licence from the Ministry of Hotel and Tourism of Myanmar.

The hotel’s logo is trade marked under number 4/10139/2013.

There was no “Millennium” brand in Myanmar prior to the establishment of this hotel.

The owner of the hotel had no knowledge of the international brand or its owners. The owner picked the name based on the dictionary look up of the Burmese word .

The Complainant does not operate a business under this name in Myanmar.

There is no doubt that the Complainant “holds the crown” but the disputed domain name accurately reflects the business of the Respondent and the Complainant seems to be bullying a family business.

There was previously a website at the disputed domain name but it was removed following the Complainant’s request last year. However, email addresses associated with the disputed domain name are still in use.

As it has been operating for five years, the hotel is now well known in Myanmar. The main patrons are Thai citizens as the hotel is next to a famous pagoda, highly regarded by Thai people.

The disputed domain name and email addresses have been widely publicised in flyers, pamphlets, and newspaper ads.

The disputed domain name was acquired to host the hotel’s actual site and did so for three years, from 2013 to 2016. It was not registered to disrupt the Complainant’s brand.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark MILLENNIUM by virtue of its many registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the domain name and, accordingly, the addition of the geographic or descriptive terms, “Myanmar” and “hotel” respectively, is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent maintains that it registered the disputed domain name on behalf of its client, the operator of the “Millennium Hotel of Myanmar”, and the Panel has no reason to disbelieve this. Accordingly, unless otherwise stated, references below to the “Respondent” include the ultimate owner of the disputed domain name.

As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of three circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services as of the date of filing of the Complaint.

There is evidence that the disputed domain name was formerly used as a hotel website. Section 2.11 of the WIPO Overview 3.0 explains that panels tend to assess claimed respondent rights or legitimate interests in the present but that panels will often consider evidence of claimed previous legitimate use under the third UDRP element. Accordingly, the Panel will discuss this aspect further in section 6C below.

Paragraph 4(c)(ii) of the Policy applies where a respondent has been commonly known by the relevant domain name. For reasons explained in section 6C below, the Panel has not been convinced that the Respondent adopted the name “Millennium Hotel of Myanmar” in a legitimate manner, independently of the Complainant.

Paragraph 4(c)(iii) of the Policy is inapplicable as the Respondent is open about the fact that it registered the disputed domain name for commercial purposes.

For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

First, the Panel will consider the likelihood that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.

The Respondent claims that the disputed domain name was registered (in 2012) to reflect the name of the “Millennium Hotel of Myanmar”, which began construction in 2011 and started trading in 2013.

The Respondent has produced documents which indicate that a hotel of that name does indeed exist and is trading in Myanmar. The Panel has verified this by carrying out some Google searches in accordance with section 4.8 of the WIPO Overview 3.0.

The Respondent asserts that the hotel used the disputed domain name for a website between 2013 and 2016, when it was removed following the Complainant’s communication. While the Respondent has provided only an undated archive screenshot, the Panel has visited www.archive.org, which broadly supports the Respondent’s claim as it indicates that such a website was in place – at least between November 2014 and March 2016. The Panel has no reason to doubt that this website was genuine.

The Respondent does not, however, dispute that the Complainant’s MILLENNIUM mark has garnered an extensive worldwide reputation in the hotel sector, including significant operations in Asia, or that the Complainant has been trading under this name for some 15 years before the Respondent registered the disputed domain name. Indeed, the Respondent frankly accepts that the Complainant “holds the crown”.

The Respondent claims that it had “no knowledge” of the Complainant or its brand when registering the disputed domain name but the Panel thinks it unlikely that the Respondent, itself a hotel operator, could have been unware of the Complainant’s mark – notwithstanding that the Complainant was not trading in Myanmar at the time.

The Respondent says that it picked the name based on the dictionary look up of the Burmese word . Presumably, this word means “millennium” or “one thousand years” in English. But the Respondent has still not explained how it alighted on the term in the first place. In the Panel’s view, the word “Millennium” is a far from obvious name to choose for a hotel and the Panel is not convinced by the Respondent’s brief explanation.

The Panel also notes that the Respondent did not reply substantively to the Complainant’s cease and desist letter, protesting its innocence, which one might have expected if the Respondent had a clear conscience. Instead the Respondent simply referred to alleged “ongoing talk” with the Complainant, details of which have not been provided. The Respondent also admits to having removed its website in response to a communication from the Complainant, which again indicates that the Respondent lacked confidence in its legal position.

The Panel pauses at this point to note that the Complaint is based on “passive holding”, making no mention of the Respondent’s hotel business. If the Respondent did in fact remove the website in response to the Complainant’s cease and desist letter (in September 2016), then one would have expected that the Complainant would have been aware of the Respondent’s website and business and to have addressed it in the Complaint. However, the cease and desist letters also make no mention of the Respondent’s website and the latest archive version of the website is dated March 2016. So, it may have been removed earlier. Or possibly the Complainant did not visit the Respondent’s site. In any case, the evidence before the Panel does not enable it to draw any conclusion about the Complainant’s awareness of the Respondent’s business. (Even if it was so aware, that would not have affected the Panel’s conclusions.)

In addition, the Panel notes that, in the circumstances of this case, the fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith. The Panel considers that the former hotel website suffices to constitute use of the disputed domain name in bad faith for the purpose of the Policy as does the continuing use for email, which the Respondent admits. The Panel therefore thinks it unnecessary to have recourse to the principles of “passive holding”, which are explained in section 3.3 of the WIPO Overview 3.0.

For the reasons set out above, the Panel considers that the Respondent registered and used the disputed domain name in order to capitalise unfairly on the Complainant’s famous MILLENNIUM mark. In accordance with paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 name <myanmarmillenniumhotel.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: April 19, 2018