25th Mar 2015
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
First Hotels AS v. Klaudia Kruzicevic
Case No. D2013-1004
1. The Parties
The Complainant is First Hotels AS of Oslo, Norway, represented by Domain and Intellectual Property Consultants, Dipcon AB, Sweden.
The Respondent is Klaudia Kruzicevic of Split, Croatia, represented by ESQwire.com, P. C., United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <firsthotel.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2013, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 10, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was on June 30, 2013. The Response was filed with the Center on June 30, 2013.
The Center appointed Brigitte Joppich, Petter Rindforth and The Hon Neil Brown Q.C. as panelists in this matter on August 13, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant was established in 1993 and operates several hotels centrally located at selected destinations throughout Scandinavia.
The Complainant is registered owner of trademark registrations for FIRST HOTEL and FIRST HOTELS, namely Norwegian trademark registration no. 214709 FIRST HOTEL and device, applied for on February 7, 2001 and registered on June 20, 2002 in connection with services in classes 35, 36, 37, 39, 41 and 42; Norwegian trademark registration no. 214715 FIRST HOTEL, applied for on May 22, 2001 and registered on June 20, 2002 in connection with services in classes 35, 36, 37, 39, 41 and 42; and International trademark registration no. 949263 FIRST HOTELS, registered on November 1, 2007 in connection with services in classes 35, 36, 37, 39, 41 and 42 (the “Complainant’s Marks”).
The Respondent and her husband started building an Internet based travel business in 1999 and have operated many travel related websites over the years, such as “www.cheaprooms.com”, “www.cheaphotel.com”, and “www.cheaphotels.com”. The disputed domain name was acquired by the Respondent’s husband from its prior owner on December 4, 2005 and was transferred to the Respondent’s control after her husband’s death in 2009. The disputed domain name is used to forward Internet users to the Respondent’s website available at “www.cheaprooms.com”.
The Complainant sent a cease and desist letter to the Respondent on April 18, 2013, which remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the Complainant’s Marks as it is identical to such marks and as the addition of a top level domain is irrelevant with regard to the assessment of confusing similarity between a trademark and a domain name.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as she has no rights or legitimate interests in the Complainant’s Marks, as she is not a licensee of the Complainant, as the Complainant has not given the Respondent any permission to register the Complainant’s Marks as a domain name, as the website available at the disputed domain name redirects Internet users to the website at “www.cheaprooms.com” promoting and renting out rooms for competing hotels throughout the world, including Scandinavia, and as the Respondent has neither been commonly known by the disputed domain name nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
(3) The Complainant states that the disputed domain name was registered and is being used in bad faith. It argues that the disputed domain name is redirected to a website which is promoting services of the Complainant’s competitors, that there is a high probability that consumers searching for services provided by the Complainant under its registered trademarks will end up at the Respondent’s website instead, believing that there is a connection between the Complainant and the Respondent, and that the Respondent takes unfair advantage of the Complainant’s Marks, which clearly indicates that the disputed domain name was registered with the Complainant’s Marks in mind. The Complainant further contends that the Respondent took over the disputed domain name in October 2009 several years after the Complainant’s Marks were registered. The Complainant argues that the circumstances indicate that the disputed domain name was registered and is being used primarily to prevent the Complainant from being able to register and use the disputed domain name and to disrupt the Complainant’s business and therefore in bad faith.
The Respondent denies the Complainant’s contentions.
She argues that the words “First Hotel” are generic and that the Complainant does not have exclusive trademark rights in the term “First Hotel”. She states that a Google search for “First Hotel” yielded 1,010,000,000 results with the first two pages of results showing at least six third party hotels using the term “First Hotel”. The Respondent further states that she has an incontestable right to the disputed domain name and has used the disputed domain name legitimately and in good faith. She argues that the UDRP and established trademark law support a “common sense” approach to the treatment, use, and protection of descriptive terms, which precludes the Complainant’s claim that the Respondent is not entitled to own the disputed domain name.
The Respondent contends that the disputed domain name was purchased in good faith from its prior owner solely because it included the generic term “hotel”, preceded by the laudatory term “first” and that the Complainant has set forth no evidence demonstrating otherwise or that it was targeted. She further argues that it is well-established under the Policy that the use and registration of descriptive domain names is an extremely common and permissible business practice. She states that the disputed domain name had three prior owners before the Respondent purchased it in 2005, i.e. almost eight years before the filing of the Complaint, and contends that this significant delay and the fact that the disputed domain name changed ownership three times raises the inference that the Complainant did not genuinely believe that Respondent engaged in abusive domain name registration or use. She further states that this immense gap in time and the inaction by the Complainant further raises the question of whether the Complaint should be barred pursuant to the doctrine of laches.
With regard to the elements specified in paragraph 4(a) of the Policy, the Respondent states that she did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website and that she was not aware of the Complainant and did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark. Furthermore, the Respondent states that the original registration date of the disputed domain name predates the Complainant’s first trademark registration, that the Complainant’s International Registration was registered two years after the Respondent purchased the disputed domain name from its prior owner and that there is neither evidence that the Complainant was or is now known outside of Norway nor that the Respondent or the disputed domain name’s prior owner knew of or targeted the Complainant. She finally argues that her legitimate interest is bolstered by the fact she uses the disputed domain name in connection with the provision of related hotel booking services, which is in connection with a legitimate business and is a legitimate use under the Policy.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s trademark FIRST HOTEL and is identical to such mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark FIRST HOTELS as well, as the difference between a plural or singular form is negligible (cf. IG Group Limited v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-0177; Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
With regard to bad faith registration, having carefully considered the facts contained in the case file, the Panel finds that the Complainant has not provided sufficient evidence as to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the Respondent became the registered owner of the disputed domain name and that, therefore, the Complainant failed to meet its burden of proof in this regard.
First of all, the Panel is convinced that the term “First Hotel” is not distinctive enough to identify only one company, user or services, but is rather generic and descriptive and seems to be concerned with the first quality or first value of hotel reservations.
Based on the facts and evidence provided by the Complainant, the Respondent must not necessarily have been aware of the Complainant. In this regard, the Panel especially takes into account that the Respondent is based in Croatia and that the Complainant’s business activities are limited to Scandinavia, that the Complainant has registered trademark rights in Norway, Denmark, Sweden and Germany only, that the disputed domain name consists of the singular “First Hotel” while the Complainant seems to use only the plural “First Hotels” in commerce, that the Respondent and her husband, who was the prior owner of the disputed domain name, have been in the hotel reservations business since 1999, and that the website available at the disputed domain name has absolutely nothing in common with the Complainant’s website at “www.firsthotels.com”.
Under these circumstances, the Panel considers it more likely than not that the Respondent was in fact not aware of the Complainant and its rights in “First Hotel” and “First Hotels” at the time she became registered owner of the disputed domain name after her husband died and that the Respondent’s use of the disputed domain name is not targeting or chasing the name or trademarks of the Complainant.
Consequently, the Panel concludes that the third element of the Policy has not been met on the present record in these Policy proceedings and that the Complaint must be denied.
In the light of the Panel’s finding above (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard.
For all the foregoing reasons, the Complaint is denied.
The Hon. Neil Brown Q.C.