Kerzner International Limited v. Wanderlust Holidays
Claim Number: FA2103001937637
Complainant is Kerzner International Limited (“Complainant”), represented by Kristin H. Altoff of Morgan, Lewis & Bockius LLP, District of Columbia, USA. Respondent is Wanderlust Holidays (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oneandonlyreethirahresort.com>, registered with Godaddy.Com, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2021; the Forum received payment on March 23, 2021.
On March 23, 2021, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <oneandonlyreethirahresort.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oneandonlyreethirahresort.com. Also on March 29, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading international developer and operator of destination and luxury resorts, luxury hotels and residences, and innovative entertainment and gaming experiences, including a resort called Reethi Rah in the Maldives. Complainant has rights in the trademark ONE & ONLY through its use in commerce since 2002 and its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2011. Respondent’s <oneandonlyreethirahresort.com> domain name, registered on April 14, 2020, is confusingly similar to Complainant’s ONE & ONLY mark. Respondent copies Complainant’s mark in its entirety and adds the generic words “Reethi Rah resort” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <oneandonlyreethirahresort.com> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the ONE & ONLY mark in any way.
Respondent registered and used the <oneandonlyreethirahresort.com> domain name in bad faith as Respondent attempts to confuse internet users into believing that Respondent is affiliated with Complainant by resolving to a webpage that offers and displays content related to Complainant’s mark and by sending fraudulent emails to consumers impersonating Complainant. Respondent registered and used the disputed domain name with actual knowledge of Complainant’s rights in the ONE & ONLY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the ONE & ONLY mark based on its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with screenshots from the USPTO website displaying the particulars of a number of registrations for its ONE & ONLY mark. From this, the Panel concludes that Complainant has established rights in the mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <oneandonlyreethirahresort.com> domain name is confusingly similar to the ONE & ONLY mark. Registration of a domain name that contains a mark in its entirety and adds a generic term and gTLD typically does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent copies Complainant’s mark in its entirety and adds the highly relevant words “Reethi Rah resort” along with the “.com” gTLD. Based on this combination of the ONE & ONLY mark with generic words that are highly relevant to Complainant’s business, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interest in the <oneandonlyreethirahresort.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the ONE & ONLY mark or to register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that Respondent has no rights or legitimate interests in a disputed domain name where the Complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Wanderlust Holidays” and there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the ONE & ONLY mark. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant does not address Policy ¶¶ 4(c)(i) or (iii) and its section addressing Policy ¶ 4(a)(ii) focuses on the statement “(1) the Domain Name oneandonlyreethirahresort.com incorporates Kerzner’s federally registered ONE & ONLY Mark in its entirety; (2) Kerzner owns longstanding prior rights in the ONE & ONLY Mark; and (3) Kerzner does not have a business relationship with Respondent.” Despite the lack of any assertions specifically mentioning Policy ¶¶ 4(c)(i) or (iii), the evidence submitted and statements in other portions of the Complaint do provide sufficient grounds upon which the Panel can assess the merits of these two Policy sub-sections. Complainant asserts that Respondent’s website seeks to impersonate and pass itself off as originating from Complainant. Such activity has been held not to be a bona fide offering or goods or services nor a legitimate noncommercial or fair use of a disputed domain name without intent for commercial gain. See Associated Newspapers Limited v. Anne Millburn, FA 1937024 (Forum Apr. 14, 2021) (“Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Name previously resolved to Respondent’s web site which impersonated and competed with Complainant”). Complainant asserts that the <oneandonlyreethirahresort.com> “[w]ebsite has been created to mimic the look and feel of Kerzner’s website for its ONE & ONLY resorts in an effort to confuse and deceive consumers”. It “features a logo that mimics Kerzner’s ONE & ONLY trademark and logo and images directly copied from Kerzner’s website and encourages consumers to book accommodations at a resort that consumers believe is Respondent’s ONE & ONLY resort in the Maldives.” Complainant submits screenshots of the website and the Panel finds that they do support Complainant’s assertions. Respondent has filed no response or made any other submission in this case to rebut Complainant’s prima facie case and so the Panel concludes that Respondent’s actions, with respect to the disputed domain name, do not meet the criteria of Policy ¶¶ 4(c)(i) or (iii) nor do they otherwise demonstrate that Respondent has gained any rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent had knowledge of Complainant’s rights in the ONE & ONLY mark at the time of registering the <oneandonlyreethirahresort.com> domain name. Actual knowledge of a complainant’s trademark can create a solid foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) It is asserted that the ONE & ONLY mark has gained such notoriety that it has become famous and that “it is inconceivable that Respondent could have registered the Domain Name without actual knowledge of Kerzner’s trademark rights”. It has been held that the fame of an asserted trademark may support a finding of a respondent’s actual knowledge of the mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). However, no evidence is submitted to demonstrate the scope and reputation of Complainant’s mark (a trademark registration is evidence of trademark rights but not the scope or reputation of that mark)[i]. Further, small and low-resolution images of certain pages from Complainant’s own <oneandonlyresorts.com> website are submitted as an attachment to a demand letter that was sent to the Respondent but these also do little to inform the Panel of what reputation Complainant’s mark has with the consuming public. Thus, the Panel is unable to conclude that Respondent knew or should have known of the ONE & ONLY mark based upon its reputation alone. However, the screenshots of Respondent’s website show that it does display Complainant’s ONE & ONLY graphic logo as well as photographs and other content that were copied from Complainant’s own site. Such use does make it a near certainty that Respondent had actual knowledge of Complainant and its mark at the time it registered the disputed domain name and Respondent has not rebutted this.
Next, Complainant argues that Respondent registered and used the <oneandonlyreethirahresort.com> domain name in bad faith as Respondent attempts to confuse internet users into believing that Respondent’s website originates from or is affiliated with Complainant by resolving to a webpage that displays content and offers related to Complainant’s mark and services. Use of a disputed domain name to confuse internet users that a website is associated with the complainant can be evidence of bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screenshots showing that Respondent’s domain name resolves to a webpage that claims to offer resort services at Complainant’s Reethi Rah property. As noted in a pre-complaint demand letter that was sent to Respondent, the website copies a number of photographs and other content from Complainant’s own site and displays links titled “Book Now” thus impersonating and seeking to pass itself off as one of Complainant’s own promotion and booking sites.[ii] Respondent has not participated in this case and so does not seek to explain its actions or otherwise rebut Complainant’s arguments or evidence. Therefore, based upon a preponderance of the available evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv) by seeking to pass itself off as Complainant and seek commercial gain from the booking of resort stays by visitors to the site.
Finally, Complainant claims that Respondent’s use of a privacy service in registration of the domain name signals bad faith. A respondent's use of a privacy registration service in an attempt to conceal its identity, though not itself dispositive, can be a further indication of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant provides a copy of the public WHOIS record for the disputed domain name and this displays the Registrant Name as “Registration Private / Domains By Proxy, LLC”. Considering all of the circumstances of this case, the Panel finds that Respondent’s use of a privacy service provides supporting evidence that it registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oneandonlyreethirahresort.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 26, 2021
[i] Dean & Simmons, Sŕrl and Heintz Van Landewyck S.ŕ.r.l. v. Domain Capital / Moniker Privacy Services, D2015-0080 (WIPO Mar. 27, 2015) (“Few things are more settled, or more fundamental under the Policy and Rules, than the requirement that material factual allegations must be proven, not simply alleged.”)
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