[Indexed as: Forte v. Ceschel]
[Indexed as: fortehotels.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0283
Commenced: 17 April 2000
Judgement: 31 May 2000
Presiding Panelist: Geert Glas
Domain name Domain name dispute resolution Registered trademark Well-known mark - Confusingly similar Consumer confusion No legitimate rights or interests Knowledgeable choice Bad faith registration Constructive knowledge.
Complainant owns a trademark for FORTE for use in its hotel operations, and has developed and marketed their business under this trademark. Complainant registered the domain name forte-hotels.com. The domain in question is fortehotels.com registered by Respondent. Respondent claims to be involved in the tourism sector, but is not a licensee of Complainant.
Held, Name Transferred to Complainant
Domain name is confusingly similar to Complainants registered trademark.
Complainant holds trademark for FORTE, which is well-known for hotel services.
Consumers could be confused and think that the domain name in question
is associated with Complainant and its registered trademark.
Respondent has no legitimate interests or rights in the domain name.
Respondent is not a licensee of Complainant. Furthermore, Respondent
did not submit any evidence to show that they had a legitimate interest
or rights in the domain name. Respondents claim of being involved
in tourist industry does not entail a legitimate interest or right.
Finally, the domain name was done in bad faith. Domain name is not
associated with a real on-line commercial or non-commercial presence. In
addition, Respondent has registered other domain names involving names
and trademarks of other well-known banks and tour operators in Italy. Respondent
has been involved in the tourist industry for more than 10 years, so it
should have known of Complainants registered trademark at the time of
registration of the domain name in question.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Glas, Panelist: -
1. The Parties
Complainant is Forte (UK) Limited, 166 High Holborn, London, WC1V 6TT,
United Kingdom. Respondent is Eugenio Ceschel, Via Fedele Lampertico, 12,
00191 Roma, Italy.
2. Domain Name and Registrar
The domain name at issue is "fortehotels.com"; hereinafter referred
to as the "Domain Name". The registrar is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the
complaint on April 17, 2000 (hard copy and exhibits). The Center verified
that the complaint satisfies the formal requirements of the ICANN Uniform
Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform
Domain Name Dispute Resolution Policy (the Rules), and the Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental
Rules). Complainant made the required payment to the Center. The formal
date of the commencement of this administrative proceeding is April 26,
2000.
On April 19, 2000, the Center transmitted via email to Network Solutions
Inc. a request for registrar verification in connection with this case.
On April 20, 2000, Network Solutions Inc. transmitted via email to the
Center, Network Solutions Verification Response, confirming that the registrant
is Eugenio Ceschel and that the contact for both administrative and billing
purposes is Oznic.com.
Having verified that the complaint satisfied the formal requirements
of the
Policy and the Rules, the Center transmitted on April 26, 2000, to
[email protected], [email protected], [email protected] and [email protected]
the Notification of Complaint and Commencement of the Administrative Proceeding.
The Center advised that the response was due by May 15, 2000. On the same
day, the Center transmitted via air mail copies of the foregoing documents
to:
· Mr. Eugenio Ceschel (registrant)
Via Fedele Lampertico 12
Rome
Italy 00191
· OZNIC.COM (administrative, technical, zone and billing contact)
PO Box 761
Sunburry, Vic 3429
Australia
On May 15, 2000, the Respondent filed a Response to the Complaint,
which the Center acknowledged to the parties on the same day.
On May 15, 2000, in view of the Complainants designation of a single
panelist the Center invited Mr. Geert Glas to serve as a panelist and transmitted
to him the Request for Declaration of Impartiality and Independence and
a Statement of Acceptance.
Having received on May 16, 2000, Mr. Geert Glas Declaration of Impartiality
and Independence and his Statement of Acceptance, the Center transmitted
to the parties a Notification of Appointment of Administrative Panel and
Projected Decision Date, in which Mr. Geert Glas was formally appointed
as the Sole Panelist. The Projected Decision Date was May 31, 2000. The
Sole Panelist finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The complaint is based upon the trademark FORTE registered by Complainant
in 64 countries for classes which include class 42: hotel services.
Complainant states that Forte is "one of the worlds leading hotel companies
with over 200 hotels throughout the world" and that it has "invested substantial
sums of money in developing and marketing their hotel services under the
FORTE trade mark and brand and (that) there is considerable goodwill in
the trade mark in respect of the hotel business."
Complainant registered the domain name "forte-hotels.com" on August
29, 1995.
Fortehotels.com was registered on February 10, 1999. It appears from
Network Solutions Verification Response that Eugenio Ceschel, Respondent,
is the registrant of "fortehotels.com". There is no relation between Respondent
and Complainant and Respondent is not a licensee of Complainant, nor has
he otherwise obtained an authorization to use Complainants mark.
The Domain Name does not resolve to an active web site.
Respondent, in his Response identified himself as an entrepreneur in
the tourism sector and member of several tourism companies, real-estate
managements and tour operators. Respondent has also registered a number
of domain names consisting of the names of well known Italian banks (e.g.
bancoambrosianoveneto.com) and tour operators. In his Response, Respondent
indicates that he registers domain names "for the purpose of giving them
as a gift or friendly dealing". All of these domain names are still in
the possession of Respondent.
On November 9, 1999, the legal counsel of Complainant sent a cease
and desist letter to Respondent. Respondent reacted on November 14, 1999,
declaring that as long as a domain name is not used, there is no trademark
infringement. He consequently refused to transfer the Domain Name to Complainant.
5. Parties Contentions
a. Complainant
Complainant contends that Respondent has registered the Domain Name
which is confusingly similar to Complainants FORTE mark, that Respondent
has no rights or legitimate interests in respect of the Domain Name and
that the Domain Name has been registered and is being used in bad faith.
Consequently, Complainant requires the transfer of the registration
of the Domain Name to the Complainant.
b. Respondent
Respondent argues that the trademark FORTE is a generic name, "in Italian
it is a last name and also an adjective of the common language used in
different meanings - mostly as a strengthening adjective" and that it cannot
be a distinguishing sign or cannot be used to identify a company in the
market.
Moreover Respondent states that "domain names are not trademarks and
that they cannot be protected by the same rules. In other words, the domain
name chosen by a subject that wants to have his own site in Internet is
independent from the person who uses it and his distinguishing signs (name
or company name, trademark, etc.), being registered only by a simple access
code to the service or by an E-mail address."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as
to the principles the Administrative Panel is to use in determining the
dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the
Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical
or confusingly similar to the trademark in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect
of the Domain Name; and
(3) that the Domain Name has been registered and used in bad faith.
a. Confusingly Similar
The Domain Name consists of the words FORTE followed by the word HOTEL.
FORTE is a registered trademark of Complainant in 64 countries. These
registrations cover in particular hotel services. Complainant registered
in 1995 the domain name "forte-hotel.com".
Respondent argues that the "trademark FORTE is a generic name of common
use in Italy and that (it) does not distinguish any particular activity
and therefore the domain name "Fortehotels" does not constitute a damage
for the personal identity of the Complainant. Besides, a domain name does
not, for its own definition, identify the subject who uses it (there is
no rule that says that a domain name has to be similar to the name of the
subject who registers it, or that it should identify the subjects services,
products or trademarks) and therefore cannot generate confusion with the
distinguishing signs of other subjects."
Complainant claims he has invested substantial sums of money in developing
and marketing its hotel services under the FORTE trade mark and brand and
there is considerable goodwill in the trade mark in respect of the hotel
business.
It can be said that the FORTE mark is a well-known mark with regard
to hotel services.
Contrary to Respondents assertion, it is highly likely that consumers
would indeed think that the Domain Name is associated with Complainant
whose domain name is only a hyphen different from the Domain Name.
In view of the above, the Administrative Panel finds that the Domain
Name is confusingly similar to the FORTE mark of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use
its FORTE mark or to apply for any domain name incorporating this mark.
Respondent did not submit any evidence which demonstrates that Respondent
has rights or legitimate interests in the Domain Name. Respondent merely
contends "Mr. Ceschel has been working in the tourism field for more than
10 years and has matured professional skills in this sector, he also and
has friendly relations with many directors and owners of major Italian
Tour Operators". These circumstances however, do not constitute rights
or legitimate interests in the Domain Name.
The Administrative Panel therefore finds that Respondent has no rights
or legitimate interests in respect of the Domain Name.
c. Registration and Use in Bad Faith
Respondent indicates in his response that he has not yet associated
the Domain Name with a real online commercial or non commercial presence.
The WHOIS record for Respondent shows that Respondent has registered
several other domain names which incorporate names (and trademarks) of
famous Italian banks and tour operators.
Respondents justification that he registers domain names "for the
purpose of giving them as a gift or for friendly dealing" seems at odds
with his refusal upon request, to transfer the Domain Name to Complainant.
It is not possible to conceive of a plausible circumstance in which
Respondent could legitimately use the Domain Name and Respondent has never
been commonly known by the Domain Name.
Respondent has been working for more than 10 years in the tourism field.
Therefore the Panel finds that Respondent knew of or should have known
of the Complainants mark and services at the time Respondent registered
the Domain Name given the widespread use of the Complainants FORTE mark.
In his Response, Respondent indicates that "Fortehotels.com are touristic
ideas for groups of small travel agencies and small hotels that do not
have the economic possibility to have their own publicity on the web, giving
them the opportunity to be united under only one site for all travel agencies
and only one site for all of the hotels." While this goal is as such laudatory,
Respondents intention to use the Domain Name for this project will inevitably
create a confusion with the Complainants mark as to the source, sponsorship,
affiliation etc. of such web-site. As Respondent is a tourism industry
professional, such choice must have been made knowingly.
In view of the above, the Administrative Panel finds that Respondent
has registered and is using the Domain Name in bad faith.
7. Decision
In light of the foregoing, the Administrative Panel decides that the
Domain Name registered by Respondent is confusingly similar to Complainants
FORTE mark, that Respondent has no rights or legitimate interests in respect
of the Domain Name, and that the Domain Name has been registered and is
being used in bad faith.
Accordingly, pursuant to Paragraph 4,i of the Policy, the Administrative
Panel requires that the registration of the Domain Name "fortehotels.com"
be transferred to Complainant.
Domain Name Transferred