Minor International PCL. v. Hassan Sham
Claim Number: FA1811001818486
Complainant is Minor International PCL. (“Complainant”), represented by Ploynapa Julagasigorn, Thailand. Respondent is Hassan Sham (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <anantara-kihavah.com> and <niyamaprivateislands.com>, registered with Name.com, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2018; the Forum received payment on November 29, 2018.
On November 29, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <anantara-kihavah.com> and <niyamaprivateislands.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 November 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2018 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@anantara-kihavah.com, postmaster@niyamaprivateislands.com. Also on November 29, 2018, 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. Respondent did however send e-mails to the Forum, see below.
On December 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is one of the largest hospitality and leisure companies in the Asia Pacific region, with an extensive brand portfolio. Complainant owns a majority stake in 40 hotels and has established 30 hotels under joint-venture agreements. It has properties in Cambodia, China, Indonesia, Maldives, Mozambique, Oman, Portugal, Qatar, Sri Lanka, Thailand, United Arab Emirates, Vietnam and Zambia. Complainant registered the NIYAMA MALDIVES mark in the Maldives in 2013. Complainant registered the ANANTARA mark on April 27, 2017.
Complainant alleges that the <anantara-kihavah.com> domain name is confusingly similar to its ANANTARA mark as it features the mark in its entirety and adds a hyphen, the geographic term “kihavah,” and the “.com” generic top-level domain (“gTLD”). The <niyamaprivateislands.com> domain name is confusingly similar to Complainant’s NIYAMA MALDIVES mark as it contains the dominant portion of Complainant’s mark and adds the generic term “private islands” and the “.com” gTLD.
According to Complainant, Respondent has not rights or legitimate interests in the <anantara-kihavah.com> and <niyamaprivateislands.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks mark for any purpose. Further, Respondent does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has failed to place any content on the resolving webpage for the <anantara-kihavah.com> domain name. Respondent uses the <niyamaprivateislands.com> domain name to mimic Complainant’s website to create a false association between Complainant and Respondent.
Further, says Complainant, Respondent registered and uses the <anantara-kihavah.com> and <niyamaprivateislands.com> domain names in bad faith. Respondent has engaged in a pattern of bad faith registration by registering two domain names confusingly similar to Complainant’s marks. Further, Respondent’s use of the <niyamaprivateislands.com> domain name to mimic Complainant’s own website disrupts Complainant’s business by trading off the goodwill associated with Complainant’s mark for commercial gain. Additionally, Respondent does not display any content on the resolving webpage for the <anantara-kihavah.com> domain name. Moreover, given Respondent’s use of the <niyamaprivateislands.com> domain name to mimic Complainant’s website, Respondent clearly had actual knowledge of Complainant’s rights in the NIYAMA MALDIVES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its e-mails to the Forum, Respondent states, verbatim (emphasis added):
There is no way you could take the domain “Niyama Private Islands” .com, since we are the legal registered the trade mark and the business name “Niyama Private Islands”
However we are ready to give back the anantar-kihavah.com.
Niyama Private Islands domain and it’s business name and trade mark will not be given back, only way is going for a business deal which will help us to establish a new business on a new name.
Price can be negotiated. Even if you take the domain name .com, the business name and trademark is registered under our company. Therefore the resort itself is operating in Maldives and it would be easy for us to go for a court process.
Please advise, i am fully prepared to share the registration documents if required.
And:
Niyama Maldives is your registered trademark however your marketing name is “Niyama Private Islands” its a registered trademark and business name registered under Pure Destination that’s our company.
Basically the domain “niyamaprivateislands.com” is ours. Even if you claim the domain through this process will be filing the case to maldives court, for miss using our trademark and our business name in various ways “Niyama Private Islands”
We will certainly remove the resort website. Domain will only be sold on a business deal if your party is agreed with domain name, business name, trademark.
We are ready to sell it. But this cannot be taken from us since we are legal owners of “niyama private islands”
Please advise!
We are also ready provide further proof documents that we are legally registered to use “Niyama Private Islands”, for miss using our legal name we could file a case.
Thank you we are ready to go for a solution!
On December 24, 2018, approximately five hours after the Forum had transmitted the case file to the Panel and notified the parties of the nomination of the Panel, Respondent sent an additional e-mail with two attachments. Those attachments purport to show that an entity called Pure Destinations was granted a trademark for NIYAMA PRIVATE ISLANDS on 4 June 2018 and a business name registration for NIYAMA PRIVATE ISLANDS on 21 May 2018.
For the reasons set forth below, the Panel will not make any findings of fact for the <anantara-kihavah.com> domain name.
Complainant owns the mark NIYAMA MALDIVES and uses to market a luxury resort
Complainant’s rights in its marks date back to at least 2013.
The <niyamaprivateislands.com> domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The <niyamaprivateislands.com> domain name resolved to a website that featured the dominant portion of Complainant’s mark, its logo, and that mimicked Complainant’s website. It currently resolves to a website that offers competing products. Respondent appears to offer the disputed domain name for sale for an amount in excess of out of pocket costs.
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 for the <niyamaprivateislands.com> domain name on the basis of Complainant's undisputed representations 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 allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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."
In the present case, for the <anantara-kihavah.com> domain name, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Respondent submitted material after the Panel was named. In principle, such tardy submissions cannot be considered. Further, unsolicited submissions can only be considered if they contain material that could not have been submitted in the complaint or response, see 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition; and see Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., D2017-0481 (WIPO May 8, 2017); see also Fashion Design Council of India v. Ashish Pawaskar, Internet Wizards, D2015-2296 (WIPO Feb. 4, 2016). Here, Respondent’s tardy submission contains material that could have been submitted in a response, or, in any case, with Respondent’s prior e-mails. Thus that material cannot be considered.
Further, as discussed below, even that material were considered, it would not affect the outcome of the case.
For the reasons set forth above, the Panel will not analyze this element of the Policy for the <anantara-kihavah.com> domain name.
The <niyamaprivateislands.com> domain name is confusingly similar to Complainant’s NIYAMA MALDIVES mark because it contains the dominant portion of the mark and merely adds the descriptive term “private islands” and the “.com” gTLD. Adding descriptive terms and gTLDs to a complainant’s mark generally fail to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <niyamaprivateislands.com> domain name is confusingly similar to Complainant’s NIYAMA MALDIVES mark under Policy ¶4(a)(i).
For the reasons set forth above, the Panel will not analyze this element of the Policy for the <anantara-kihavah.com> domain name.
Complainant has not authorized Respondent to use its marks in any way. There is no evidence in the record showing that Respondent is commonly known by the <niyamaprivateislands.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS identifies “Hassan Sham” as the registrant. Complainant, in its e-mails, asserts that it has legal rights in the Maldives to the name “Niyama Private Islands,” but it does not provide any evidence to support this allegation. Unsupported allegations are insufficient to establish rights under the Policy. See by analogy Richard Izzo Toughman Enterprises v. TJ Tryon, FA1704001728347 (Forum May 30, 2017) (“While this Panel is willing to give Complainant some leeway because Complainant is pro se, that does not allow Complainant to ignore its burden of proof. A complainant fails to make a prima facie case when it fails to provide any evidence whatsoever of a respondent’s use of a disputed domain name.”); see also Chrome Bones / CB Luxury Brands, LLC v. Laursen, Shawn / Shawn's pasta & bake shop, FA1805001787926 (Forum June 27, 2018) (“Complainant’s evidence of secondary meaning consists only of its unsupported assertion that it has used the mark since 2000. … Respondent’s default in this matter notwithstanding, the evidence before the Panel utterly fails to demonstrate that Complainant’s trademark rights accrued prior to April 2003, when Respondent registered the Domain Name.”) Accordingly, the Panel finds that Respondent is not commonly known by the <niyamaprivateislands.com> domain names under Policy ¶ 4(c)(ii).
As noted above, the Panel will not consider the tardy material submitted by Respondent. However, even if the Panel had considered that material, it would have reached the same conclusion as above, because the material in question purports to show that some rights were acquired by an entity called Pure Destinations in 2018, well after the registration of the disputed domain name. That is, the material does not provide evidence that Pure Destinations was commonly known by the disputed domain name prior to the registration of the disputed domain name, nor does it provide evidence that Respondent is associated with the entity called Pure Destinations (as noted above, mere assertions by the Respondent do not constitute adequate evidence).
Respondent used the <niyamaprivateislands.com> domain name to mimic Complainant’s website to create a false association between Complainant and Respondent. Complainant provides screenshots of both its own website along with Respondent’s, which appears to display substantially similar content and Respondent’s website purports to offer hospitality services at the very same resort island. At present, the <niyamaprivateislands.com> domain name resolves to <http://www.abodeparadise.com/sites/niyamaprivateislands.com/>, which contains links to Abode Paradise Limited, a registered company in Republic of Maldives that purports to be a tour operator registered and licensed from the Ministry of Tourism Arts and Culture; the resolving website contains links that offer services that compete with those of Complainant. Using a confusingly similar domain name to pass off as a complainant and/or to offer competing services can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Accordingly, the Panel finds that Respondent fails to use the <niyamaprivateislands.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, in its e-mails, Respondent appears to offer to sell the <niyamaprivateislands.com> domain name for an amount in excess of out of pocket costs. This does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name.
For all the reasons given above, in particular Respondent’s failure to provide any evidence to support its allegations, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
For the reasons set forth above, the Panel will not analyze this element of the Policy for the <anantara-kihavah.com> domain name.
In its e-mails, Respondent alleges that it has the right to market services under the <niyamaprivateislands.com> domain name, but, as already noted, it does not provide any evidence to support those allegations. Again, unsupported allegations are insufficient to establish rights under the Policy. See by analogy Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent registered the disputed domain name with actual knowledge of Complainant’s NIYAMA MALDIVES mark: it admits as much in its e-mails, and the website at the <niyamaprivateislands.com> domain name displayed the dominant portion of the mark and Complainant’s logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Further, as already noted, Respondent used the <niyamaprivateislands.com> domain name to mimic Complainant’s own website and is now using it to offer services that compete with Complainant. This disrupts Complainant’s business by trading off the goodwill associated with Complainant’s mark for commercial gain. Such use of a disputed domain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum February 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent registered and is using the <niyamaprivateislands.com> domain name in bad faith in the sense of Policy ¶¶ 4(b)(iii) & (iv).
Finally, as noted above, Respondent appears to offer to sell the <niyamaprivateislands.com> domain name for an amount in excess of out of pocket costs. This is sufficient to establish bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Thus the Panel finds that Respondent registered and is using the <niyamaprivateislands.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Given the common request of the Parties for the <anantara-kihavah.com> domain name, and having established all three elements required under the ICANN Policy for the <niyamaprivateislands.com> domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anantara-kihavah.com> and <niyamaprivateislands.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 24, 2018
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