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Amanresorts Limited v. WWW Enterprise, Inc. [2005] GENDND 1062 (20 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amanresorts Limited v. WWW Enterprise, Inc.

Case No. D2005-0384

1. The Parties

The Complainant is Amanresorts Limited, Hong Kong, SAR of China, represented by Wilkinson & Grist, Hong Kong, SAR of China.

The Respondent is WWW Enterprise, Inc., Los Angeles, United States of America.

2. The Domain Names and Registrar

The disputed domain names <amanresorts.net>, and <amanresorts.org> are registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2005. On April 19, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On April 19, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on April 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Kevin C. Trock as the Sole Panelist in this matter on June 6, 2005. 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 domain names at issue are <amanresorts.net> and <amanresorts.org>. The disputed domain names were registered to the Respondent, WWW Enterprises, Inc., on July 13, 2004.

The Complainant is Amanresorts Limited. The Complainant claims ownership of trademark registrations in numerous countries throughout the world for the mark AMANRESORTS, dating back as early as March 2, 1992, for use with hotels, motels, guest house and accommodation services, among other things. The Complainant also claims ownership of the registration for the domain name <amanresorts.com>, registered on December 19, 1996.

The Complainant seeks transfer of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has been using the trade name Amanresorts since July 1989 in connection with the operation of a chain of luxury resort hotels. Complainant contends that it has registered the trademark AMANRESORTS for use with hotels, motels, guest house and accommodation services, among other things, at least as early as March 1992 in Hong Kong SAR of China, and has registered the mark thereafter in countries such as Australia, Thailand, Cambodia, Mexico, Japan and the United States of America.

Complainant further contends that it has been acclaimed in many international periodicals and journals to be the operator of some of the world’s best resort hotels. Complainant also claims that it is well known in the travel industry and the public as AMANRESORTS. Complainant operates a website for its business at the domain name <amanresorts.com>, which was registered in December 1996.

Complainant alleges that Respondent is not an authorized agent of the Complainant nor does it have permission from the Complainant to use the trade name Amanresorts. Complainant further alleges that Respondent is not known by the name Amanresorts and that Respondent’s websites do not contain any reference to or commercial use of the name Amanresorts, except for the domain names.

Complainant alleges that Respondent’s websites are merely a directory search engine providing further links/sponsored links to websites of other traders which offer a variety of services including travel agency, travel packages and hotel booking services, some of which compete with the business of the Complainant. Complainant also alleges that Respondent is engaged in a pattern of registering domain names based on well known marks of third parties, including, inter alia, the domain names <googlw.net>, <auyahoo.net>, and <askzeeves.com>.

Complainant apparently attempted to contact Respondent on several occasions by mail, facsimile and email, but failed to receive any response.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must prove the following three elements: (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

The Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant has been using the trade name Amanresorts since July 1989 in connection with the operation of a chain of luxury resort hotels. Complainant has registered the trademark AMANRESORTS for use with hotels, motels, guest house and accommodation services, among other things, at least as early as March 1992 in Hong Kong, and has registered the mark thereafter in countries such as Australia, Thailand, Cambodia, Mexico, Japan and the United States of America.

Complainant has been noted in international periodicals and journals as an operator of some of the world’s best resort hotels, and Complainant is well known in the travel industry and to the public as AMANRESORTS. Complainant also operates a website for its business at the domain name <amanresorts.com>, which was registered in December 1996.

Accordingly, we find that the Complainant has rights in the mark AMANRESORTS.

The disputed domain names <amanresorts.net> and <amanresorts.org> are identical to the Complainant’s mark AMANRESORTS. The generic top level domains of “.net” and “.org” can not distinguish Respondent’s domain names from the Complaint’s mark. Accordingly, we conclude that the domain names <amanresorts.net> and <amanresorts.org> are confusingly similar to the Complainant’s mark AMANRESORTS.

B. Rights or Legitimate Interests

Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent’s rights or legitimate interests in the disputed domain names.

According to the Complainant, the Respondent is not an authorized booking agent of the Complaint’s resort hotels nor does it have any relationship with the Complaint. The Respondent has no permission to use the Complainant’s trade name. The Complainant also contends that the Respondent is not known by the name Amanresorts.

Complainant acknowledges that Respondent’s websites located at “www.amanresorts.net” and “www.amanresorts.org” feature links to other websites, but argues that the websites are merely a directory search engine providing further links/sponsored links to websites of other traders which offer a variety of services including travel agency, travel packages and hotel booking services some of which compete with the business of the Complainant. The Respondents’ websites do not contain any reference to a commercial use of AMANRESORTS in the course of trade, except for the domain names.

The Panel is persuaded and finds that Respondent has no rights or legitimate interests in the domain names <amanresorts.net> and <amanresorts.org>.

C. Registered and Used in Bad Faith

Complainant contends that the Respondent registered the disputed domain names in bad faith and deliberately chose domain names that are identical to the Complainant’s mark, AMANRESORTS, in an effort to create confusion and to trade off of the Complainant’s reputation and to divert traffic from Complainant’s website operating at “www.amanresorts.com”.

Complainant has been using the mark AMANRESORTS in connection with resort and hotel services since at least 1989 and has registered the mark since at least 1992, as noted above. Complainant had also registered the domain name <amanresorts.com> in 1996 and operates a website for its business at that address.

Respondent did not register the disputed domain names until July 2004.

The Respondent’s websites operating at “www.amanresorts.org” and “www.amanresorts.net” are sponsored links to other websites providing travel agency, travel packages, hotel booking and other services that compete with the Complainant’s business. The Respondent is not using the mark AMANRESORTS on its websites, except for the domain names. Thus, it appears that Respondent has intentionally attempted to divert Internet users from Complainant’s website for its own commercial gain by creating a likelihood of confusion with the Complainant’s mark AMANRESORTS and Complainant’s website located at “www.amanresorts.com”.

Complainant, in attempting to contact Respondent concerning this dispute, discovered that the facsimile number provided by the Respondent when registering the disputed domain names may have been falsified, because the fax number was not a valid number and was not in service.

The Policy states that evidence of registration and use of a domain name in bad faith can be shown “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. Policy, paragraph 4(b).

Here, the conduct of Respondent strongly suggests a deliberate attempt to divert traffic from Complainant’s website for the Respondent’s commercial gain and to the detriment of the Complainant by creating just such a likelihood of confusion. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

Complainant contends that Respondent has engaged in a pattern of conduct by registering domain names that are similar to well-known Internet search engines. For example, Complainant contends that Respondent is the registrant of the domain names <googlw.net>, <auyahoo.net>, and <askzeeves.com>, which appear to be similar to the Internet search engines <google.com>, <yahoo.com> and <askjeeves.com>.

Complainant also points out that Respondent has been involved in other domain name disputes where panels have ordered the transfer of domain names it had registered. These cases include Deutsche Telekom AG v. WWW Enter., Inc., WIPO Case No. D2004-1078 (domain name <tmobile.net> transferred); Air Austral v. WWW Enter., Inc., WIPO Case No. D2004-0765 (domain name <airastral.net> transferred); Wyndham IP Corp. v. WWW Enter., Inc., FA411811 (National Arbitration Forum March 18, 2005) (domain names <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com> and <wyndhamhotels.org> transferred); Summerfield Hotel Co., L.P. v. WWW Enter., Inc., FA411803 (National Arbitration Forum March 21, 2005) (domain name <summerfieldsuite.net> transferred).

Previous panels have held that registration of multiple domain names that are similar to known trademarks can establish a pattern of bad faith conduct. Such conduct is persuasive evidence of bad faith. See Telstra Corp. Ltd. v. Ozurls, WIPO Case No. D2001-0046. Accordingly, the record contains more than sufficient evidence to establish that the Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

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

Kevin C. Trock
Sole Panelist

Dated: June 20, 2005