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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Serena Tourism Promotion Services S.A. v. Dinoia Michele

Case No. D2006-0945

 

1. The Parties

The Complainant is Serena Tourism Promotion Services S.A., Serena Hotels, Geneva, Switzerland, represented by E. Blum & Co., Switzerland.

The Respondent is Dinoia Michele, Pineto, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <serenahotel.com>is registered with Tuonome.it.srl dba APIsrs.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2006. On July 26, 2006, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the domain name at issue. On September 7, 2006, Tuonome.it.srl transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 September 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2006.

The Center appointed Martine Dehaut as the Sole Panelist in this matter on October 17, 2006. 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 following facts have been duly established by the Complainant, Serena Tourism Promotion Services S.A. (hereinafter referred to as Serena Hotels). An extensive documentation was annexed to the Complaint.

Serena Hotels is a chain of hotels and lodges, which is particularly reputed in the sector of Eastern African safaris. The Serena hotels and lodges are known for their quality and the respect of the environment and of the local culture.

Serena Hotels owns a wide portfolio of trademarks containing the word SERENA, registered for a number of products and services, including accommodation and related services. These rights cover in particular Italy, country of residence of the Respondent, through Italian Registration No. 633 408.

Serena Hotels offers its services in particular through its website, “www.serenahotels.com”.

Serena Hotels was informed of the registration and use of the contested domain name, <serenahotel.com>, which until May 2006 was active and displayed the following message: “Welcome to serenahotel.com – For resources and information on Serena Hotel and Rome Hotel – Sponsored Results for SERENA HOTEL”. Links to the Complainant’s hotels, including the Nairobi Serena Hotel, the Serena Hotel in Islamabad and the Mombasa Serena Hotel were featured on the site as well as links to the web-sites of third party competitors of Complainant’s, and to the websites of online travel agencies.

On May 12, 2006, the Complainant sent a warning letter to SZK.com, the former owner of the disputed domain name, informing it of its rights over the SERENA trademark, and requesting the transfer in its favor of the disputed domain name. In its response, SZK.com indicated in particular that it had no knowledge of Complainant’s trademark and activity, and that it had registered the domain name in good faith.

Nonetheless, SZK.com was ready to transfer the domain name and requested a financial compensation. The Complainant then offered to reimburse the registration costs, in the amount of 200 EUROS. In spite of several reminders, SZK.com did not comment on the financial proposal made by the Complainant. Instead, SZK.com transferred the ownership of the contested domain name to the Respondent, Michele Dinoia, who appears to be the former administrative contact of SZK.com for this domain name.

 

5. Parties’ Contentions

A. Complainant

Serena Hotels claims ownership of rights over the word SERENA, both as a trademark and as a company name.

The Complainant alleges that the disputed domain name <serenahotel.com> is confusingly similar with its rights in the SERENA trademark. Indeed, the word “hotel” is easily recognizable and distinguishable, and is devoid of distinctive character in connection with the services offered by the Complainant, and displayed on the disputed domain name, when it was still active. The Complainant points out that numerous domain names include the word “hotel” or “hotels” where hotel services are indeed offered.

Complainant furthers states that Respondent has no rights or legitimate interests in the disputed domain name. Respondent was not invested with the right to register and use the domain name <serenahotel.com>.

Lastly, Complainant asserts that Respondent has registered and used the domain name <serenahotel.com> in bad faith. Complainant alleges that Respondent has attempted to attract Internet users for commercial gain, by creating a likelihood of confusion as to the source of its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must establish each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The registered trademarks of the Complainant consist of a combination of the word “serena”, and of a logo which features a letter “s” in a very stylized way. In the Panel’s view, this logo is purely ornamental in the Complainant’s trademarks. As a result, and for the purpose of the comparison with the disputed domain name, the Complainant’s earlier registered trademarks should be spelled and read SERENA alone.

The contested domain name is clearly confusingly similar with the trademark rights owned by Complainant in the word SERENA. Indeed, the word “hotel” is distinguishable within the expression “serenahotel”, and is devoid of distinctive character, both in connection with the services offered by the Complainant, and with those offered in the disputed domain name at the time it was active. As the Complainant rightly points out, it is current practice to associate a brand to the word “hotel” or “hotels” for the registration of domain names which are to be used for hotel or hotel related services.

The Panel therefore finds that the domain name is confusingly similar with a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has established prima facie evidence regarding the lack of rights or legitimate interests of the Respondent in respect of the domain name.

In its response to the cease and desist letter sent by the Complainant, the Respondent mentioned that he chose the fantasy name “serena” for a new residential building under construction in Italy. The Panel gives very little credit to this statement which was not corroborated by any supporting document and which, in any event, would not explain the association of the word “hotel” to “serena”, in the domain name <serenahotel.com>.

In any event, failing any response to the Complaint, the Respondent is then deemed not to have rights or legitimate interests over the disputed domain name.

The Panel finds that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b) of the Policy, the following circumstances may constitute evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

From the evidence provided, and for the purpose of assessing the issue of registration and use the domain name in bad faith, the Panel finds the actual Respondent Michele Dinoia and the former owner of the domain name <szk.com> to be probably related. Indeed, as mentioned previously, Michele Dinoia was the administrative contact of SZK.com in connection wit the disputed domain name, and the Panel believes that the assignment of the disputed domain name, and its transfer to a new Registrar, responded solely to a hiding strategy of the Respondent, shortly after receiving the warning letter of the Complainant.

In the present matter, various elements corroborate that the Respondent acted in bad faith when registering and using the contested domain name.

The Panel has no doubt that the Respondent was aware of the existence of the Complainant’s trademark SERENA, and of its extended use to designate hotel services. The Respondent chose a domain name almost identical to the one used by Serena Hotels.

While the domain name was active, the Respondent displayed information and links which were all related to hotel services, including links to some of the hotels and lodges of Serena Hotels. This website displayed the following title: “Welcome to serenahotel.com – For resources and information on Serena Hotel and Rome Hotel”. In addition, links to the Complainant’s hotels, including the Nairobi Serena Hotel, the Serena Hotel in Islamabad and the Mombasa Serena Hotel were featured on the site.

The website of the Respondent, which was used as a search engine for hotels, also contained a specific area under the title “Sponsored Results for SERENA HOTEL”. That is, the Respondent intended to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source of the website. This behavior amounts to bad faith in the sense of paragraph 4(b)(iv) of the Policy.

The deactivation of the website, its assignment to the administrative contact of the former owner, and its transfer to a new Registrar, shortly after receiving the warning letter of the Complainant, also confirm that the Respondent felt that it was better to keep a low profile in order to avoid the initiation of legal or administrative proceedings against it.

Lastly, the Respondent has already been involved in a number of UDR proceedings, in which it was systematically found that Respondent registered and used domain names in bad faith (see Fox News Network, LLC v. Michele Dinoia, WIPO Case No. D2002-1082 (<oreillyfactor.com>); Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038 (<legoclub.com>); Sociйtй Air France v. SZK.com, WIPO Case No. D2003-0518 (<frequenceplus.com>); FNAC v. SZK.com, WIPO Case No. D2004-0413 (<fnacdigitale.com>); BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486 (<wwwfastaccess.com>); Geoffrey, Inc. v. Michele Dinoia, NAF Claim No. FA0201000104089 (<kidrus.com>); Anheuser-Busch, Inc. v. Michele Dinoia, NAF Claim No. FA0206000114465 (“anheuserbusch.com”); Colibri Corporation v. Michele Dinoia, NAF Claim No. FA0603000662937 (<calibri.com>).

The Panel therefore finds that the domain name was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <serenahotel.com> be transferred to the Complainant.


Martine Dehaut
Sole Panelist

Dated: October 31, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0945.html

 

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