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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CDL Hotels International ltd. v Kannet Limited
Case No. D2000-0959
1. The Parties
The Complainant is CDL HOTELS INTERNATIONAL LTD., a company incorporated in the Cayman Islands and whose registered office is at Great Eagle Centre, 23 Harbour Road, Wanchai, Hong Kong (SAR), China
The Respondent, is KANNET LIMITED, a Hong Kong company located at Kantone Centre, 1 Ning Foo Street, Chai Wan, Hong Kong (SAR), China
2. The Domain Name and Registrar
The dispute concerns the domain name <cdlhotels.com> registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
On August 4, 2000, the Complainant submitted a complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with 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). On August 7, 2000, it submitted the hardcopy of the same to the WIPO Center.
On August 11, 2000, the WIPO Center acknowledged receipt of the complaint.
On August 15, 2000, the WIPO Center sent a Request for Registrar Verification to Network Solutions, Inc. On August 17, 2000, Network Solutions, Inc. confirmed with the WIPO Center that it was the Registrar of <cdlhotels.com> and that the registrant was the Respondent.
On August 22, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the said Notification) by post/courier, facsimile and e-mail to the Respondent and transmitted electronically copies of the said documents to the Complainant, the Internet Corporation for Assigned Names and Numbers ("ICANN") and Network Solutions, Inc.. The Notification set August 22, 2000, as the formal date of the commencement of this administrative proceeding and required the Respondent to submit a response to the complaint within 20 calendar days from the date of receipt of the Notification pursuant to paragraph 5(a) of the Rules.
On September 9, 2000, the Respondent transmitted a response to the complaint bearing the title, "THE RESPONDENT’S SUBMISSION" to the WIPO Center via e-mail. On September 12, 2000, the WIPO Center acknowledged receipt of the response. On September 13, 2000, the Respondent submitted a hardcopy of the response to the WIPO Center.
On September 15, 2000, the Complainant transmitted a reply to the response to the WIPO Center via email. On September 18, 2000, the WIPO Center received a hardcopy of the same. On the same day the WIPO Center acknowledged receipt of the reply.
The Complainant elected to have the dispute decided by a single-member panel (the Panel). The response did not contain any objection to the Complainant’s election. On September 26, 2000, the WIPO Center appointed Mr. Hariram Jayaram to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibilities under the Rules.
The Panel will hereby issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules, the Supplementary Rules and any principles of law, which the Panel deems to be applicable.
4. Factual Background
In the complaint, the Complainant claims ownership of the trademarks CDL and CDL HOTELS. The Complainant’s parent company is the Singapore-based City Developments Limited, the originator of the CDL trademark. It is Singapore’s largest property developer and has used the CDL mark extensively around the world for 37 years. City Developments Limited is active in the development and construction of residential and commercial real estate, including shopping malls, bars, restaurants and other industrial and hotel properties. It is a publicly listed company which is traded on the Singapore Stock Exchange. City Developments Limited was established in 1963, and is one of Singapore’s top ten companies in terms of net profit, according to the Singapore 1000 list. In 1989, its hotel operations were spun off to the Complainant which was incorporated in that year. The Complainant has used the trademark CDL HOTELS since its incorporation. It is a publicly listed company on the Hong Kong and Singapore Stock Exchanges, with more than 2 billion shares in circulation. It owns its hotel portfolio through its majority-owned subsidiary Millennium & Copthorne Hotels plc, which has been traded on the London Stock Exchange since 1995. Its subsidiaries include not only Millennium & Copthorne Hotels plc , but also CDL Hotels USA and CDL Hotels New Zealand Limited which has registered four trademarks for the CDL logo with the New Zealand authorities. CDL Hotels New Zealand Limited is traded on the New Zealand Stock Exchange. It owns CDL Investments New Zealand Limited, a company with over 170 million shares traded on the New Zealand Stock Exchange. Collectively, this family of companies is one of the top 15 hotel owners and operators in the world. The Complainant and its subsidiaries own or control hotel properties in the United States, the United Kingdom, France, Germany, Singapore, Australia, New Zealand, Malaysia, Indonesia, Philippines, Hong Kong and Taiwan.
The financial and the real estate communities are very familiar with the trademarks CDL and CDL HOTELS through these companies’ substantial real estate holdings and their publicly traded stock. Through extensive and continuous usage, the trademarks CDL and CDL HOTELS have become associated with the Complainant and its related companies. There have been many articles in the financial and trade papers referring to CDL Hotels. Apart from those stockholders who own shares in this family of companies, many travelers have stayed in the hotels associated with the trademarks CDL and CDL HOTELS in various parts of the world. The letters CDL may not typically be the brand name to be found on the Complainant’s hotels, many of which are branded as "Millennium" or "Copthorne" Hotels but from the samples of advertising literature the public, will appreciate the Complainant’s connection to these properties. The advertising literature proclaims that the hotel is a member of the CDL Hotels Group. A person viewing the Millennium & Copthorne Hotels’ comprehensive guide of hotels and resorts would be able to see from the cover that all the listed Millennium & Copthorne properties are properties of the Complainant.
This family of companies has used the trademarks CDL as well as the trade names with the letters CDL on the Internet. The Complainant has an active website based in Singapore, with the domain name <cdlhotels.com.sg>. CDL Hotels New Zealand Limited has an active website which uses the domain name <cdlhotels.co.nz>. City Developments Limited operates a website at <cdl.com.sg>. Each of these sites makes reference to the members of this family of companies. The Complainant has recently announced its intention to transform the company into an Internet investment holding company. The Complainant will concentrate its additional activities on growing its Internet e-commerce business in the hospitality sector, while still providing on-line hotel management and reservation services.
In view of its present extensive holdings the Complainant sought to register the domain names <cdlhotels.com> and <cdhotel.com> with Network Solutions, Inc. It found that the domain name <cdlhotels.com> was already registered by the Respondent.
In the complaint, the Complainant says that the Respondent purports to be an Internet service provider. A search of the database of Network Solutions, Inc. reveals that the Respondent has registered more than 50 domain names. These include <championeurope.com>, <joycefashion.com>, <100bestmutualfunds.com> and <hkchamberofecommerce.com>.
At the time the complaint was filed, a visit to <cdlhotels.com> would reveal a single web page with <cdlhotels.com> prominently displayed at the top. The web page offered the titles "Products", "Solutions", "Company", "Services", "News & Events" and "Contact." It also welcomed the visitor to "our home on the web," and offered an opportunity to log on to the website by entering a user name and password. Further exploration of the web site would reveal the fact that there was no apparent user name or password, which granted a visitor access to the site. The web page offered no way for a visitor to obtain such a password. When one tried to get more information by using one of the six links provided, each link responded that the user must log on before he could continue. The Respondent has constructed and installed a dummy web page. The other websites established by the Respondent for the domain names it had registered, were exactly the same.
After the complaint was filed, the Respondent made a number of changes to the website <cdlhotels.com>. The caption now reads as CDLHO TELS.COM. The Respondent has inserted 2 subtitles, "Custom Design Lighting Homes & Offices" and "The Electronic Lighting Systems." There appears to be no contact address or telephone number. All one is able to do is to click "contact us" which enables the user to send an email to an anonymous "firstname.lastname@example.org".
It turns out that the content i.e. the list of lighting companies and products is identical to portions of another website, <lighting-linx.com> and has been imported in its entirety into the Respondent’s <cdlhotels.com> web site. For example, the main page of <cdlhotels.com> has three paragraphs of text underneath the main picture describing three articles. These articles are copied verbatim from the "Inno-ventions" section of the <lighting-linx.com> webpage, right down to a mid-sentence page break and the promise that the entire text of the article may be found in a publication called "linxfx magazine," which is sold separately on the <lighting-linx.com> website. Many links, which may now be found at <cdlhotels.com>, match verbatim the links, which are posted at <lighting-linx.com>.
In its response bearing the title, "THE RESPONDENT’S SUBMISSIONS" the Respondent does not specifically deny the allegations of the Complainant in the complaint. It admits it is an Internet service provider and it is hosting a website by reference to <cdlhotels.com> for the sale of various goods including lighting apparatus. It is not in the business of selling domain names and has not offered <cdlhotels.com> for sale.
5. Parties’ Contentions
The Complainant asserts that it is the owner of the common law trademarks CDL and CDL HOTELS. The Respondent has adopted the second level domain (the SLD) "CDLHOTELS" which is identical to the Complainant’s trademark, CDL HOTELS. The Respondent has no legitimate interest in <cdlhotels.com>. It has registered and is using <cdlhotels.com> in bad faith.
The Respondent says that the Complainant may have acquired a reputation in the letters "CDL HOTELS" for its business in real estate and tourism but not for any other activity. The Respondent further states that <cdlhotels.com> is legitimately registered for a website containing information for the sale of lighting and related products and that the Respondent is not using the disputed domain name in bad faith. The Respondent further contends that there are no common law trademark rights under English law.
6. Discussion and Findings
Under paragraph 12 of the Rules,
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
The Panel has made no such request but the Complainant has filed a Reply without first obtaining leave of the Panel. This should be considered as unhealthy. However, the purpose behind the Reply appears to be to update the Panel on the changes made by the Respondent to the contents of the website related to <cdlhotels.com> since the filing of the complaint. The evidence submitted particularizes the Respondent’s activities on the Internet connected with the lighting business, which the Respondent has alluded to in its response. The Panel will exercise its discretion and give the Reply its due consideration.
6.2 Elements to be Proved
Under paragraph 4(a) of the Policy the Complainant must prove each of the following elements in order to succeed in its complaint:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
6.3 Identical or Confusingly Similar to Complainant’s Trademarks
The Complainant relies on its rights in its trademarks CDL and CDL HOTELS to bring this administrative proceeding. Neither of them are registered as trademarks by the Complainant. It’s subsidiary, CDL Hotels New Zealand Limited has registered the CDL logo as four (4) trademarks in New Zealand. The Complainant makes reference to these registrations, as well as other facts, to establish that CDL and CDL HOTELS are trademarks common to the family of companies whose members are:
(i) the Complainant listed on the Hong Kong and Singapore Stock Exchanges;
(ii) City Developments Limited traded on the Singapore Stock Exchange;
(iii) CDL Hotels New Zealand Limited quoted on the New Zealand Stock Exchange;
(iv) CDL Investments New Zealand Limited traded on the New Zealand Stock Exchange;
(v) Millennium & Copthorne Hotels plc listed on the London Stock Exchange; and
(vi) CDL Hotels USA
The Complainant has used the trademark CDL HOTELS since 1989. The family of companies to which the Complainant belongs, owns several hotels in many parts of the world. On the websites of some members of this family, CDL and CDL HOTELS appear as the second level domains (SLDs). As a result, the financial and real estate communities and Internet users are familiar with these trademarks.
The Complainant as a member of this family of companies may assert rights in these trademarks. Being unregistered, the trademarks would constitute common law trademarks in Hong Kong where the Complainant has its registered office. A side-by-side comparison shows that the domain name <cdlhotels.com> is identical to the trademark CDL HOTELS, and there is confusing similarity with the trademark CDL as well. The Respondent contends that no confusion would arise amongst the general public by the use of <cdlhotels.com> in relation to a website having information on the sale of lighting products when the Complainant is engaged in the business of real estate and tourism. The fields of activity of the Complainant and the Respondent are different. As rightly pointed out in Motorola, Inc. v New Gate Internet, Inc. (WIPO Case No. D2000-0079) such an argument would be irrelevant:
"…since paragraph 4(a)(i) of the Policy requires only that the domain name be identical or confusingly similar to a mark, which is the case here, quite independently from whether or not actual confusion or likelihood of confusion is present."
6.4 Respondent’s Rights or Legitimate Interests in the domain name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate his rights and interests in the domain name "cdlhotels.com" by showing:
i) its use of, or demonstrable preparations to use, the domain name or a name corresponding to the said domain name in connection with a bona fide offering of goods or services before any notice of the dispute; or
ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
iii) it is making a legitimate noncommercial or fair use of the said domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.
At the time the complaint was filed <cdlhotels.com> was associated with a generic webpage, which had no real content. The necessary conclusion from this fact is that the Respondent has not used or made demonstrable preparations to use the domain name <cdlhotels.com> in connection with a bona fide offering of goods and services before receiving notice of this dispute. It is only after the commencement of the proceedings, that the website <cdlhotels.com> has some information on lighting products but the contents are a sham having been copied from another website, <lighting-linx.com> and hastily put together to show legitimate use.
The registrant is Kannet Limited and cannot be said to be commonly known by the domain name <cdlhotels.com>. There is no legitimate noncommercial or fair use of the domain name since <cdlhotels.com> would be associated with hotel related activities and not the marketing of lighting products and its continued use for such products would tarnish the Complainant’s trademarks.
6.5 Registration and Use in Bad Faith
The Complainant must prove that the Respondent registered and also used the said domain name in bad faith in order to establish bad faith on the part of the Respondent.
Under paragraph 4(b) of the Policy, there will also be bad faith registration and use if the domain name has been registered to prevent the owner of the trademark from reflecting the mark in a corresponding domain name provided that the registrant has engaged in a pattern of such conduct. The Respondent owns more than 50 domain names, some of which correspond, to the famous trademarks of others. It is unlikely that the registrations have been effected by the Respondent to use them it is highly probable that they have been registered in bad faith with the primary motive of preventing the owners of the trademarks form obtaining corresponding domain names without first reverting to the Respondent for their transfer.
Although the Complainant has a website with the domain name <cdlhotels.com.sg> in Singapore it has been prevented from registering the domain name <cdlhotels.com> on account of the prior registration by the Respondent. By the Respondent continuing as the current registrant, the Complainant is deprived from registering the said domain.
For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the domain name <cdlhotels.com> be transferred to the Complainant.
Dated: October 9, 2000