The Complainants are CTF BM Operations Limited d/b/a Baha Mar and Perfect Luck Assets Limited of Nassau, Bahamas, represented by Mayer Brown LLP, United States of America (“United States”).
The Respondent is Shami Khokhar, Integrity Net Solution & Services of Batangas City, the Philippines.
The disputed domain name <baha-mar.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 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 July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2018.
The Center appointed Linda Chang as the sole panelist in this matter on August 24, 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.
In accordance with the Rules, paragraph 12, the Panel issued Procedural Order No. 1 seeking clarification from the Complainant CTF BM Operations Limited d/b/a Baha Mar on September 17, 2018. On September 19, 2018, a supplementary statement was received from the Complainant CTF BM Operations Limited d/b/a Baha Mar. The Respondent did not submit any comments. Due to an administrative oversight, on September 27, 2018, the Panel issued Procedural Order No. 2, ordering that the Center to forward the Notification of Complaint and subsequent Complainant submissions to the email address “[…]@lukslofts.com” that resolves from the hyperlink “@reservations” displayed on the website under the Domain Name, allowing an additional five days for the Respondent to indicate whether it wished to participate in these proceedings. Having received no communications from the Respondent, the Panel proceeded to render its decision.
The Complainant CTF BM Operations Limited d/b/a Baha Mar, a Bahamian company, is the owner of a luxury resort named “Baha Mar” officially opened in May 2017 in the Bahamas. The Complainant Perfect Luck Assets Limited is the owner of several BAHA MAR and BOND AT BAHA MAR trademark registrations around the world, including the United States trademark registration No. 5401802 BAHA MAR as of February 13, 2018. Both Complainants are under common ownership and control of a Hong Kong entity Chow Tai Fook Enterprises Limited.
The Domain Name was registered on April 24, 2018, and is currently redirected to “www.google.com.ph”. The Domain Name used to be connected with a website offering hotel reservation services.
The Complainants have made the following contentions:
The Complainants are the owner of the BAHA MAR trademark around the world. The Domain Name incorporates the BAHA MAR trademark in its entirety and is identical to the BAHA MAR trademark to which the Complainants have rights. The inclusion of a dash between “baha” and “mar” does nothing to change the impression.
The Respondent has never been authorized by the Complainants to use the BAHA MAR trademark in the Domain Name, nor has been commonly known by the Domain Name. The Respondent has taken unfair advantage of the Complainants in order to capitalize on the Complainants’ goodwill and reputation, which cannot amount to any right or legitimate interest. The Respondent thus has no rights or legitimate interests in the Domain Name.
Due to the wide recognition of the BAHA MAR trademark, it is inconceivable that the Respondent was not aware of the BAHA MAR trademark at the time it registered the Domain Name, particularly since the Respondent was purporting to sell reservations at the Baha Mar resort. The Domain Name has been registered for the purpose of intentionally attempting to attract users to the website in order for the Respondent to increase sales. The Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The original Complaint was filed by the Complainant CTF BM Operations Limited d/b/a Baha Mar, who has submitted a supplemental filing upon the Panel’s Procedural Order No. 1 to clarify its rights on the BAHA MAR trademark. Now Perfect Luck Assets Limited has been added as the Complainant and the present Complaint has been filed by multiple complainants.
On this subject, UDRP panels have articulated principles on whether a complaint may be brought against one respondent by multiple complainants. It is well established that a single complaint may be brought under the Policy by multiple complainants where the multiple complainants have a common grievance against the respondent.
One circumstance of a common grievance is where the complainants share a common legal interest in trademarks allegedly affected by the respondent’s registration of the disputed domain name. Multiple complainants may establish a common legal interest if the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./Official Tickets Ltd, WIPO Case No. D2009-0331.
The Complainants have established that they both belong to Chow Tai Fook Enterprises Limited. The Complainant Perfect Luck Assets Limited is the owner of the BAHA MAR trademark on which the Complaint is based, while the Complainant CTF BM Operations Limited d/b/a Baha Mar is the actual operator of the Baha Mar resort. The Complainants therefore have a specific common grievance against the Respondent.
Meanwhile, the Respondent did not respond to the Complaint and the supplemental filing. The Panel thus determines that the above circumstances entitle the Complainants to bring this Complaint against the Respondent.
The Panel is satisfied that the Complainants have registered trademark rights in the BAHA MAR mark.
The Panel agrees that the Top-Level Domain (“TLD”) in a domain name is a standard registration requirement and as such TLD should be disregarded under the confusing similarity test. After removing “.info”, the Domain Name consists of “baha-mar”, which is identical to the Complainants’ trademark BAHA MAR. The Panel finds that the insertion of a dash between “baha” and “mar” does not serve to negate the visual and phonetic identity with the BAHA MAR trademark, and cannot differentiate the Domain Name from the same in any way.
As such the Panel determines the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is identical to the Complainants’ BAHA MAR trademark.
It is well established that a complainant only needs to make a prima facie showing that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is established, the burden shifts to the respondent to produce evidence of its rights or legitimate interests in the disputed domain name. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
In the present case, the Complainants have asserted trademark registrations and that they have not authorized the Respondent to use their BAHA MAR trademark in the Domain Name. The Complainants further submitted evidence showing that the Respondent was attempting to capitalize on the fame of the Complainants through the Domain Name in order to attract Internet visitors to its website for commercial gain. Indeed, the primary intent of the Respondent appears to have been to drive Internet traffic seeking the Complainant’s to competing hotel services. The Panel determines that such use of the Domain Name is not a bona fide offering of goods or services and cannot be the basis of rights or legitimate interests in a domain name.
For these reasons, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
The Domain Name was registered in April 2018, which fell after the Complainants opened its Baha Mar resort in 2017 and acquired its BAHA MAR trademark in February 2018. In view of the Complainants’ prior BAHA MAR trademark and the Respondent’s use of the Domain Name after the registration, the Panel finds that the Respondent must be well aware of the Complainants’ trademark at the time of registering the Domain Name, and such awareness suggests opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
Though the website at the Domain Name is currently redirecting to a Google search page, evidence submitted by the Complainants shows that the Respondent was once using the Domain Name to offer hotel reservation services including both at the Complainants’ Baha Mar resort as well as at hotels and resorts in competition with the Complainants. The website was taken down after the Complainants issued a cease and desist letter to the Registrar. By incorporating the BAHA MAR trademark in the Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Bad faith is established by the Respondent’s use of the Domain Name to attract Internet users to a for-profit online hotel reservation site.
Moreover, the Respondent has chosen not to respond to the cease and desist letter sent by the Complainants, nor to the Complaint, which is further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”
In light of the above, the Panel determines that the Complainants have satisfied this element and the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <baha-mar.info> be transferred to the Complainants.
Linda Chang
Sole Panelist
Date: October 3, 2018