Raffles International Limited v. Vincent Chye, Ltd.
Case No. D2011-1392
1. The Parties
The Complainant is Raffles International Limited of Raffles City, Singapore, represented by Ranjan Narula Associates, India.
The Respondent is Vincent Chye, Ltd. of Chiangmai, Thailand.
The disputed domain name is (the “Domain Name”) which is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 17, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 19, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2011.
The Center appointed William P. Knight as the sole panelist in this matter on September 16, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Domain Name was registered to the Respondent on August 28, 2009.
The Complainant asserts and provides supporting information that it is the owner of and has a very substantial, worldwide reputation in the trade mark RAFFLES in many countries, and particularly throughout Asia. In support of these assertions, the Complainant states inter alia that:
(a) the Complainant’s business was established in 1887 with the establishment by its predecessors in title of the “Raffles” hotel in Singapore, which has established a substantial reputation as a destination in its own right in Singapore;
(b) there are now a number of hotels in Asia bearing the “Raffles” name, in Cambodia, China, Philippines, Indonesia, Maldives, and Seychelles, as well as elsewhere;
(c) the Complainant’s hotels all offer spa services, which are a very important part of the services they provide and are advertised prominently;
(d) the Complainant has also registered the trade mark RAFFLES in many countries, including in Thailand.
The Complainant includes substantial further evidence of the worldwide reputation of the Complainant in the services it offers under the name “Raffles”.
The Complainant’s website is to found at the Domain Name , which was registered on December 6, 1995.
The Domain Name is not being used in its own right, but presently points directly to a website operated by the Register.Com, which displays the words “Sorry! This site is not currently available”.
Prior to issuing the Complaint, the Complainant’s Thai legal representatives wrote to the Respondent, using the details then current on GoDaddy.com’s registry, on April 20, 2011. There ensued a telephone conversation between a legal representative of the Complainant and a person identifying himself as Mr Vincent Chye of the Respondent. This correspondence and conversation were confirmed by later correspondence, in both English and Thai, on May 6, May 26 and May 31, 2011, to which no reply was received.
The Complainant also states in its evidence that the Respondent’s representative(s), in telephone conversations with the Complainant or its legal representatives, stated:
(a) that its principal director had worked in Singapore and was aware of the reputation of the Complainant;
(b) that since others used the name Raffles, it should be entitled to do so;
(c) that it had no intention of using the Domain Name;
(d) that it would be prepared to sell the Domain Name to the Complainant.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:-
(a) that the Domain Name is confusingly similar to each of the trade mark RAFFLES, in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(c) that the Domain Name has been registered and is being used in bad faith.
The Complainant’s assertions in respect of (a) and (b) are supported, in short, by the facts of the Complainant’s reputation throughout Asia referred to above, that the Respondent has not been authorised by the Complainant to register or use the Domain Name and that the Respondent must be taken to have been aware of the Complainant’s reputation as at the date of registration of the Domain Name.
In support of (c), the Complainant asserts that registration in bad faith is evidenced by the fact of the registration of the Domain Name in circumstances where the Respondent must be taken to have known full well that no possible use could be made of the Domain Name in respect of spa services in the face of the Complainant’s overwhelming legal rights to the name and the use of the name RAFFLES. The Complainant alleges that the conduct of the Respondent is indicative of registration of the Domain Name with no intention to use and only for the purpose of sale to the Complainant, which is deemed to be evidence of the registration and use of a domain name in bad faith under paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to them, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond WIPO Case No. D2000-0007; Ronson Plc v Unimetal Sanayi ve Tic A.S., WIPO Case No. D2000 0011 among numerous other UDRP decisions.
The Panel finds that the Complainant has established overwhelming rights, by virtue of trading as well as by virtue of registration of its trade marks, including RAFFLES in respect of hotel and related services, including in relation to the offering of spa services. This reputation extends throughout the Asia Pacific region, including Thailand, at least and probably throughout the world.
The Domain Name containing “rafflesspa” is confusingly similar to the Complainant’s RAFFLES mark. The addition of the generic word “spa” to the trade mark cannot distinguish. On the contrary, it establishes that the Domain Name could be used for few services other than those in respect of which the Complainant has exclusive rights to use the trade mark RAFFLES.
The trade mark RAFFLES is so famous in respect of hotel and related services that it is difficult to conceive of a use of the Domain Name not having prior permission from the Complainant to do so which could be legitimate. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent was entitled, and given every opportunity, to demonstrate that it had some legitimate intentions with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could thereby demonstrate a legitimate interest. The Respondent has conspicuously failed to do so.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and used in bad faith.
This issue, particularly where there has been no use made of the domain name in dispute, has been dealt with significantly in earlier decisions under the Policy, notably Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-003, Telstra Corporation Limited v Barry Cheng Kwok Chu, WIPO Case No. D2000-0423, the reasoning of the learned panel in each of which this Panel respectfully adopts. Many of the same issues have also been dealt with more recently in Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 and Transfer Intel Corporation v. The Pentium Group, WIPO Case No. D2009 0273.
So far as concerns the first limb of this requirement, registration in bad faith, since this is a case in which:
(a) the Respondent registered the Domain Name in circumstances where it is inconceivable that it was unaware of the pre-existing rights of the Complainant;
(b) there is virtually no commercial use which could be made of the Domain Name in respect of “spa” services which would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and
(c) the Respondent has apparently made an offer to sell the Domain Name to the Complainant
this Panel concludes that the Respondent registered the Domain Name with bad faith, in the sense required by the Policy.
Turning now to the second limb of this requirement, “use in bad faith”, in the decision Telstra Corporation Ltd, supra, the learned panel stated (at paragraph 7.6):
“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
In the decision in Red Nacional De Los Ferrocarriles Espanoles v Ox90, WIPO Case No. D2001-0981, the majority of the panel in, referred to above, observed:
“Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainant’s goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the Policy. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.
The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”
This Panel comes to the same conclusion with respect to the conduct of the Respondent in this matter, aided by the uncontradicted assertion of an offer by the Respondent to sell the Domain Name to the Complainant.
The Panel therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
William P. Knight
Dated: September 18, 2011