Bugatti International S.A. v. Stephen Renard / Renard International Hospitality Search Consultants
Claim Number: FA1501001598821
Complainant is Bugatti International S.A. (“Complainant”), represented by Susan B. Flohr of Blank Rome LLP, District of Columbia, USA. Respondent is Stephen Renard / Renard International Hospitality Search Consultants (“Respondent”), represented by Tamara Winegust of Bereskin & Parr LLP, Ontario.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bugattihotelsandresorts.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
ROBERT T. PFEUFFER, Senior District Judge, Texas, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2015; the National Arbitration Forum received payment on January 8, 2015.
On January 13, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the National Arbitration Forum that the <bugattihotelsandresorts.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the names. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2015 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@bugattihotelsandresorts.com. Also on January 13, 2015, 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.
A timely Response was received and determined to be complete on February 2, 2015.
A timely Additional Submission was received from Complainant on February 9, 2015.
Respondent filed a timely additional submission on February 17, 2015.
On February 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the BUGATTI mark through its trademark registrations around the world, including with the Canadian Intellectual Property Office (“CIPO”), which Respondent resides in. (Reg. No. 474,380, registered September 4, 1997).
1. Complainant has also registered BUGATTI-HOTEL as a European Community trademark (Reg. No. 8,756,199, registered May 5, 2010), used for hotel services.
ii. Complainant uses the BUGATTI and BUGATTI-HOTEL marks in connection with a variety of different services including jewelry, watches, model cars and hotel services.
i. Policy ¶ 4(a)(i)
1. Respondent’s <bugattihotelsandresorts.com> domain name is confusingly similar to Complainant’s BUGATTI mark, because Respondent has simply added the terms “hotels and resorts” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <bugattihotelsandresorts.com> domain name.
3. Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent has failed to make an active use of the disputed domain name.
iii. Policy ¶ 4(a)(iii)
1. Respondent has registered the disputed domain name with the possibility of selling it in the future.
2. This is not the first time these parties have faced off in a UDRP dispute.
a. Respondent previously was the owner of a domain name that was transferred to Complainant via UDRP decision.
3. Due to the fame of the mark, Respondent must have had actual or constructive knowledge of Complainant’s rights in the BUGATTI mark.
4. Respondent has failed to make an active use of the disputed domain name.
B. Respondent
a. Policy ¶ 4(a)(ii)
iv. Respondent is associated with the Bugatti Hotels & Resorts, Ltd, and therefore is commonly known by the domain name.
1. Respondent has been operating in the hospitality and hotel industry for over 40 years. Respondent is affiliated with a Director of the Samoan international company Bugatti Hotels and Resorts, and the Seychelles company Bugatti & Resorts Ltd. These companies together are “Bugatti Hotels and Resorts.”
2. Respondent’ affiliated company has filed numerous trademark applications and has a valid registration in the country of Seychelles.
v. Respondent does have rights and legitimate interests in the disputed domain name.
1. Before any notice of the dispute, Respondent’s affiliated company had used the BUGATTI mark in connection with hotel and resort developments in Thailand.
a. Respondent’s affiliate has advertised these developments.
b. These efforts coincide with Bugatti Hotels and Resorts’ registration in Seychelles.
vi. Respondent has rights in the BUGATTI mark, as Complainant does not own rights in the BUGATTI mark for all goods and services, just cars. Complainant’s European registration coexists with other BUGATTI trademark registrations covering “hotels.”
b. Policy ¶ 4(a)(iii)
vii. Respondent has registered and is using the disputed domain name in good faith.
1. Complainant has not submitted any evidence proving that Respondent has offered to sell the disputed domain name.
2. Respondent’s failure to make an active use of the disputed domain name does not on its own constitute bad faith.
c. Respondent requests a finding of reverse domain name hijacking. Complainant must have known that its arguments under the UDRP would fail. Complainant has also misrepresented important facts to the Panel. Complainant was well aware of Respondent’s hotel developments, but did not disclose this fact in the Complaint.
C. Additional Submissions
Complainant submitted the following additional submission:
a. Policy ¶ 4(a)(i)
viii. Complainant also owns BUGATTI relating to hotels through its trademark registration with France’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 1,531,283, registered May 16, 1989).
ix. Respondent’s contention that there are a number of different entities using the BUGATTI mark in connection with hotel services misses the point, because most of these entities are licensees of Complainant.
b. Policy ¶ 4(a)(ii)
x. Respondent attempts to argue that it has rights or legitimate interests in the disputed domain name by adding the third party, Bugatti Hotels and Resorts, LTD., however no support is offered demonstrating the connection between Respondent and this third party.
c. Policy ¶ 4(a)(iii)
xi. Respondent is attempting to trade on the goodwill associated with the BUGATTI mark.
1. In March of 2013, Respondent participated in an advertising fair in which it displayed flyers that contained Complainant’s BUGATTI mark and three of Complainant’s BUGATTI logos.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Finding for Complainant
Complainant uses the BUGATTI and BUGATTI-HOTELS marks in connection with a variety of different services including jewelry, watches, model cars and hotel services. Complainant claims to own the BUGATTI mark through its numerous trademark registrations around the world. Complainant owns the BUGATTI mark through its trademark registration with CIPO (Reg. No. 474,380, registered September 4, 1997). Complainant argues that its rights are further demonstrated through its trademark registrations regarding hotel services, including with France’s NIIP (e.g., Reg. No. 1,531,283, registered May 16, 1989). To this end, Complainant also cites the BUGATTI-HOTEL European Community trademark (Reg. No. 8,756,199, registered May 5, 2010), used for hotel services. Complainant argues that such registrations are sufficient to establish rights in the BUGATTI and BUGATTI-HOTELS marks pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s numerous trademark registrations around the world satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <bugattihotelsandresorts.com> domain name is confusingly similar to Complainant’s BUGATTI mark because Respondent has simply added the descriptive phrase “hotels and resorts” to the mark, which actually enhances the disputed domain name’s confusing similarity as the added phrase describes a part of Complainant’s business. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that adding a descriptive phrase to a mark does not allow the disputed domain name to escape from the realm of confusing similarity, and that the affixation of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). As such, the Panel finds that Respondent’s <bugattihotelsandresorts.com> domain name is confusingly similar to Complainant’s BUGATTI mark under Policy ¶ 4(a)(i).
While Respondent contends that the <bugattihotelsandresorts.com> domain name is comprised of common and descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel is aware that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is Complainant’s belief that Respondent lacks rights and legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for Respondent identifies “Stephen Renard” as the registrant of the disputed domain name. Generally, panels have looked to the WHOIS information as a key factor in establishing whether or not the respondent is commonly known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). While Respondent hopes to create a Policy ¶ 4(c)(ii) nexus between the listed Respondent and a company operating as “Bugatti Hotels and Resorts Ltd.,” and/or “Bugatti & Resorts Ltd,” Complainant argues in its additional submission that there is simply no affirmative evidence to corroborate this association. Thus, in light of the available record, the Panel finds that the Respondent is not commonly known by the <bugattihotelsandresorts.com> domain name according to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent has failed to make an active use of the disputed domain name. In order to bolster this argument, the Panel notes that Complainant has submitted a screenshot of Respondent’s website found at the disputed domain name that demonstrates Respondent’s failure to make an active use of the website. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name where the respondent has failed to make any active use of the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). As a result, the Panel concludes that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <bugattihotelsandresorts.com> domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant argues that Respondent has only registered the disputed domain name with the idea of later selling it to make profit, which indicates bad faith under Policy ¶ 4(b)(i). Prior panels have considered the sale of disputed domain names to be solid evidence of bad faith pursuant Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith). However, the Panel notes that Complainant has submitted no evidence showing Respondent has in fact offered to sell the domain name, and therefore declines to find evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Additionally, Complainant contends that this is not the first time these parties have faced off in a UDRP dispute. Complainant notes that Respondent has previously registered a disputed domain name including Complainant’s BUGATTI mark, which was ordered to be transferred to Complainant. Prior panels have found evidence of bad faith where the respondent has a history of bad faith as demonstrated by prior UDRP decisions, or where the respondent has attempted to corner a specific mark such that a complainant cannot register the mark online. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel believes that Respondent’s behavior indicates a pattern of bad faith use and registration, therefore, the Panel finds evidence of Respondent’s bad faith in the present case pursuant to Policy ¶ 4(b)(ii).
Complainant argues that due to the worldwide fame of Complainant’s BUGATTI mark and its extensive list of trademark registrations, Respondent must have had either actual or constructive knowledge of Complainant’s rights in the mark when it registered the disputed domain name. In its additional submission, Complainant noted that Respondent has used Complainant’s logos in some of its advertisements, which Complainant believes again demonstrates that Respondent registered the domain name with Complainant in mind. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's BUGATTI mark as demonstrated by Respondent’s use of the BUGATTI mark and logos, and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Complainant argues that Respondent has failed to make an active use of the disputed domain name, which demonstrates bad faith under Policy ¶ 4(a)(iii). The Panel recalls that Complainant has submitted a screenshot of Respondent’s website found at the disputed domain name. Generally, panels have not hesitated to find evidence of bad faith where the respondent has failed to make an active use of the disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Consequently, the Panel finds that Respondent’s failure to make an active use of the <bugattihotelsandresorts.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii), especially given Respondent’s alleged use of Complainant’s logos for promotional purposes back in March 2013.
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), therefore, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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.
The panel finds that all three elements needed to be proved to obtain an order to transfer have been satisfied as stated in the Findings set out above. They are
Discussed here again, as set out below:
Complainant uses the BUGATTI and BUGATTI-HOTELS marks in connection with a variety of different services including jewelry, watches, model cars and hotel services. Complainant claims to own the BUGATTI mark through its numerous trademark registrations around the world. Complainant owns the BUGATTI mark through its trademark registration with CIPO (Reg. No. 474,380, registered September 4, 1997). Complainant argues that its rights are further demonstrated through its trademark registrations regarding hotel services, including with France’s NIIP (e.g., Reg. No. 1,531,283, registered May 16, 1989). To this end, Complainant also cites the BUGATTI-HOTEL European Community trademark (Reg. No. 8,756,199, registered May 5, 2010), used for hotel services. Complainant argues that such registrations are sufficient to establish rights in the BUGATTI and BUGATTI-HOTELS marks pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s numerous trademark registrations around the world satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <bugattihotelsandresorts.com> domain name is confusingly similar to Complainant’s BUGATTI mark because Respondent has simply added the descriptive phrase “hotels and resorts” to the mark, which actually enhances the disputed domain name’s confusing similarity as the added phrase describes a part of Complainant’s business. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that adding a descriptive phrase to a mark does not allow the disputed domain name to escape from the realm of confusing similarity, and that the affixation of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). As such, the Panel finds that Respondent’s <bugattihotelsandresorts.com> domain name is confusingly similar to Complainant’s BUGATTI mark under Policy ¶ 4(a)(i).
While Respondent contends that the <bugattihotelsandresorts.com> domain name is comprised of common and descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii).
The Panel is aware that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is Complainant’s belief that Respondent lacks rights and legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for Respondent identifies “Stephen Renard” as the registrant of the disputed domain name. Generally, panels have looked to the WHOIS information as a key factor in establishing whether or not the respondent is commonly known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). While Respondent hopes to create a Policy ¶ 4(c)(ii) nexus between the listed Respondent and a company operating as “Bugatti Hotels and Resorts Ltd.,” and/or “Bugatti & Resorts Ltd,” Complainant argues in its additional submission that there is simply no affirmative evidence to corroborate this association. Thus, in light of the available record, the Panel finds that the Respondent is not commonly known by the <bugattihotelsandresorts.com> domain name according to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent has failed to make an active use of the disputed domain name. In order to bolster this argument, the Panel notes that Complainant has submitted a screenshot of Respondent’s website found at the disputed domain name that demonstrates Respondent’s failure to make an active use of the website. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name where the respondent has failed to make any active use of the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). As a result, the Panel concludes that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <bugattihotelsandresorts.com> domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant argues that Respondent has only registered the disputed domain name with the idea of later selling it to make profit, which indicates bad faith under Policy ¶ 4(b)(i). Prior panels have considered the sale of disputed domain names to be solid evidence of bad faith pursuant Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith). However, the Panel notes that Complainant has submitted no evidence showing Respondent has in fact offered to sell the disputed domain name, and therefore decline to find evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Additionally, Complainant contends that this is not the first time these parties have faced off in a UDRP dispute. Complainant notes that Respondent has previously registered a disputed domain name including Complainant’s BUGATTI mark, which was ordered to be transferred to Complainant. Prior panels have found evidence of bad faith where the respondent has a history of bad faith as demonstrated by prior UDRP decisions, or where the respondent has attempted to corner a specific mark such that a complainant cannot register the mark online. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel believes that Respondent’s behavior indicates a pattern of bad faith use and registration, therefore, the Panel finds evidence of Respondent’s bad faith in the present case pursuant to Policy ¶ 4(b)(ii).
Complainant argues that due to the worldwide fame of Complainant’s BUGATTI mark and its extensive list of trademark registrations, Respondent must have had either actual or constructive knowledge of Complainant’s rights in the mark when it registered the disputed domain name. In its additional submission, Complainant noted that Respondent has used Complainant’s logos in some of its advertisements, which Complainant believes again demonstrates that Respondent registered the domain name with Complainant in mind. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's BUGATTI mark as demonstrated by Respondent’s use of the BUGATTI mark and logos, and therefor determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Complainant argues that Respondent has failed to make an active use of the disputed domain name, which demonstrates bad faith under Policy ¶ 4(a)(iii). The Panel recalls that Complainant has submitted a screenshot of Respondent’s website found at the disputed domain name. Generally, panels have not hesitated to find evidence of bad faith where the respondent has failed to make an active use of the disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Consequently, the Panel finds that Respondent’s failure to make an active use of the <bugattihotelsandresorts.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii), especially given Respondent’s alleged use of Complainant’s logos for promotional purposes back in March 2013.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bugattihotelsandresorts.com> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Panelist
Dated: February 25, 2015
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