WIPO Arbitration and MediationCenter

ADMINISTRATIVE PANEL DECISION

ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.

Case No. D2009-0785

1.The Parties

1.1The Complainant is ehotel AG of Berlin, Germany, represented by Patent- und Rechtsanwälte Bettinger Schneider Schramm, Germany.

1.2The Respondent is Network Technologies Polska Jasinski Lutoborski Sp.J. of Konstancin Jeziorna, Poland.

2.The Domain Name and Registrar

The disputed domain name ehotel.com(the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3.Procedural History

3.1The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on June 15, 2009. On June 15, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

3.2In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent sent an email which had the time and date “Tue 07/07/2009 23:02”, but which appears to have been received by the Center at 00:02 hours on July 8, 2009. The email attached the Respondent’s Response.

3.3The Center appointed Matthew S. Harris as the sole panelist in this matter on July9, 2009. 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.

3.4On July 9, 2009, the Complainant’s representative sent a request to the Center seeking a suspension of these proceedings for two weeks to enable it to double check and verify allegations contained within the Response.

3.5On July 14, 2009, the Panel issued a Procedural Order (“Procedural Order No. 1”) inviting the parties to submit a further submission primarily limited to the issue of whether or not the Respondent had ever operated and continued to operate a business using the “ehotel” name. The Procedural Order No. 1 also recorded the Panel’s view that the call for further submissions meant that there was no need to address the Complainant’s request for a suspension and extended the time for the issuing of a decision in this matteruntil July 31, 2009.

3.6In accordance with Procedural Order No.1 the Respondent filed a further submission with the Center on July 20, 2009 (the “Respondent’s Supplemental Submission”). The Complainant did not file any substantive further submission. Instead, the Complainant sent a communication to the Center on July 27, 2009 asking for a further suspension of proceedings in order to explore the possibility of settlement with the Respondent. It also stated that is wished to have further time to investigate certain factual matters.

3.7On July 28, 2009, and at the instigation of the Panel, the Center sent an email to the parties noting the Complainant’s request for suspension and stating as follows:

“The Panel notes this request but is not in possession of any material from the Respondent which confirms that the Respondent has agreed to that suspension. Further, whilst the Panel does not want to stand in the way of the parties resolving this matter amicably, it also bears in mind that proceedings under the Policy are intended to provide a quick and streamlined procedure for the resolution of domain name disputes and that paragraph 10 (c) of the UDRP Rules places upon an obligation on the Panel to ensure that any administrative proceeding takes place with due expedition.”

3.8In the email the Center also informed the parties that if the Respondent indicated its consent by no later than July 31, 2009, then the Panel was minded to grant a short suspension of proceedings to enable settlement negotiations to take place. However, the email also made it clear that if the Respondent’s consent was not forthcoming then the Panel was likely to proceed to issuing a decision. In this email the Center also informed the parties that in the meantime the Panel extended the time for issuing a decision in this matter until August 5, 2009.

3.9No consent to suspension was forthcoming from the Respondent and accordingly the Panel now proceeds to issue its decision in this matter.

4.Factual Background

4.1The Complainant is a company incorporated under the laws of Germany. It is a provider of online hotel booking services and is the successor in business to a company founded in 1998. In 2008 it had annual sales amounting to EUR 9.7 million.

4.2The Complainant is the owner of the following trade mark registrations:

(i)German trade mark registration 39845897 for the words “eHotel Service” in classes 38, 39 and 42 with a date of registration of October 8, 1998; and

(ii)Community trade mark registration 4676491 for the word “ehotel” in classes 39 and 42 with a date of registration of October 5, 2006.

4.3The Domain Name was registered in the name of Mr. C. Lutoborski on April5,2003. From June 2003 to January 2004 the Domain Name was used in connection with a web pagepurporting to promote“eHotels” in Warsaw, Cracow and Zakopane that were “opening December 2003”.

4.4In or about January 2004 there were discussions between Mr. Lutoborski and the Complainant regarding an agreement whereby hotel booking through the Domain Name would be forwarded to the Complainant for fulfilment. There is a dispute as to the extent to which any formal agreement was entered into by the parties at that time, but from about March 2004 to February 2007 the Domain Name redirected Internet users to the Complainant’s website operating from <ehotel.de>.

4.5From approximately February 2007 the Domain Name ceased to redirect users to that site and instead redirected them to a page similar to that operating from the Domain Name back in 2003, but referring solely to the “eHotel Zakopane – Jasinówka”.

4.6In or about March 15, 2007 the Domain Name was transferred to the Respondent. As is described in greater detail later in this decision the Respondent is a company with which Mr. Lutoborski is connected.

5.Parties’ Contentions

A.Complainant

5.1The Complaint refers in extensive submissions to a very large number of cases under the Policy to support the contention that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. It is claimed that (a) the Domain Name “wholly incorporates [the] Complainant’s EHOTEL mark” and that therefore the Domain Name is identical to its trade mark and that (b) the Domain Name is confusingly similar to the Complainant’s EHOTEL SERVICE mark in that it “fully incorporates the distinctive part EHOTEL”.

5.2On the questions of rights and legitimate interests it maintains that “the word EHOTEL is obviously connected with [the] Complainant’s mark EHOTEL and is not a word a trader or private person would legitimately choose unless seeking to create an impression of an association with [the] Complainant”. It is claimed that there is no evidence of use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name with a bona fideoffering of goods or services. In this respect it is claimed that the Respondent’s use of the mark constitutes trade mark infringement. Reliance is placed on the decision in Serta Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123 which is said to provide authority for the proposition that “[i]t is beyond doubt that there is no bona fide offering of goods and services where the use of the domain name for such offering constitutes trade[ ]mark infringement”[1].

5.3It is further denied that the Respondent trades under the domain name or the name EHOTEL or is commonly known by these names or is making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy.

5.4On the question of bad faith registration and use the Complainant cites various cases that the requirement of bad faith registration can be satisfied if there is bad faith at the time of acquisition of a domain name subsequent to initial registration. The Complainant, therefore, seems to maintain that in this case bad faith registration can be assessed in March 2007 when the Domain Name was transferred from Mr.Lutoborski to the Respondent.

5.5It is claimed that “[t]he Respondent was obviously aware of [the] Complainant’s rights in the mark EHOTEL based on his participation in [the] Complainant’s affiliate program [and that] [t]herefore [the] Respondent’s registration of the [Domain Name] occurred in bad faith”. Further, it is said that the current website operation from the Domain Name is said to involve a diversion of traffic intended for the Complainant’s website by creating a likelihood of confusion with the Complainant’s mark within the meaning of paragraph 4(b)(iv) of the Policy.

B.Respondent

5.6The Response is filed by Mr. C. Lutoborski. Heclaims that the “eHotel brand” has been used for “our small hotels”since 2001. He claims that the Domain Name was transferred for unspecified “technical reasons” to a new registrar on March 15, 2007.

5.7The Respondent seeks to make a number of points based upon the scope of the Complainant’s marks and the fact that Poland only acceded to the European Union on May 1, 2004.

5.8The Respondent claims that “e” as a prefix is commonly used to describe products and services with an electronic dimension and that therefore the term “ehotel” is said not to be directly connected with the Complainant. Reference is made to the “Ehotel Tennis” which is said to be in Lithuania.

5.9The Respondent claims that the website was used in 2003 to promote “3 hotels with the same name, owned by one owner and located only in Poland”. It denies that it ever participated in the Complainant’s affiliate programme. It claims that the contract was never signed by Mr. Lutoborski and that “no invoice was issued, no money was transferred [and] no exchange of goods or services was conducted”.

5.10The Respondent’s explanation for the diversion to the Complainant’s website is as follows:

“I ... agreed on [an] experiment [that] Mr. Garke [, a representative of the Complainant,] proposed - to see amount of traffic the domain itself attracts. As it did no harm to me I had link[ed] my domain ehotel.com with his reservation website ehotel.de. Nevertheless he was surprised that the domain itself does not attract as much traffic as he predicted. He also noticed that although some people got through ehotel.com, they returned to ehotel.de.”

5.11On reviewing the papers in this matter the Panel formed the view that there did not seem to be credible evidence before it that the Respondent currently operated or had in the past operated a genuine “eHotel” branded business. However, in light of the fact that the Complainant had not put its case in this fashion, the Panel considered that it was appropriate to allow the parties to put in further submissions in this respect. This was provided for by Procedural Order No.1. In response to that order, the Respondent filed in evidence:

(a)a leaflet in Polish that appears to be dated 2002 and which provides pictures and addresses for 6 hotels, one of which is identified as the “eHotel Zakopane – Jasinówka”;

(b)a receipt dated 20 November 2001 which carries the name and address of the “eHotel Zakopane– Jasinówka”.

However, the Respondent did not provide any evidence that any hotel under this name continues to operate to this day.

5.12The additional submission in which this evidence was provided was also signed by Mr. Lutoborski. In that submission Mr. Lutoborski confirmed:

(a)that the Respondent was a business “dealing with operation of web and e-mail servers for many customers and obviously my own”; and

(b)that the Respondent was a business in which Mr. Lutoborski was a “partner”.

6.Discussion and Findings

6.1The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.2The Panel will address each of these issues in turn.

A. Identical or Confusingly Similar

6.3The Complainant possesses both German and Community trade marks that comprise the terms “eHotel Services” and “eHotel” respectively. Each is in respect of services that cover the making of travel arrangements. The Domain Name can only be sensibly understood as the English word “hotel” prefixed with the letter “e”, together with the “.com” TLD. In the circumstances, the Panel finds that the Domain Name is confusingly similar (as that term is understood under the Policy) to the Complainant’s German registered trade mark and is virtually identical to the Complainant’s community trade mark.

6.4The Respondent appears to contend that as it is based in Poland, the Complainant had no rights in Poland as at the date that the Domain Name was initially registered. It also appears to contend that although the Complainant possesses a community trade mark that prima facie covers Poland, the fact that Poland only acceded to the European Union in 2004, limits the scope of the Complainant’s rights in this territory.

6.5These contentions are not relevant to the assessment of this aspect of the Policy. Paragraph 4(a)(i) of the Policy is a threshold test that simply requires the Complainant at the time of the Complaint to hold rights in a relevant mark somewhere in the world (see, for example,Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). The fact that this mark may relate to a different territory to that in which the Respondent operates and may post date the relevant domain name’s registration date does not matter so far as this initial assessment is concerned (although this may well be significant to the assessment of rights and legitimate interests and bad faith).

6.6Similarly, the Panel is un-persuaded bythe Respondent’s contentions that the letter “e” is often used as a prefix to indicate goods or services that are or have some electronic or Internet related element should lead to a different conclusion on confusing similarity. That the letter “e” is used in this way is undoubtedly true. This fact might have been highly relevant to the assessment of confusing similarity if the only similarity between the Complainant’s marks and the Domain Name was the use of that single letter as a prefix. However, the similarities in this case are more extensive than simply that.

6.7In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.8Before assessing the question of rights or legitimate interests (and for that matter the question of bad faith) it is necessary to consider who is the person or entity that should be treated as the Respondent for the purposes of that assessment.

6.9The underlying facts in this case are somewhat unclear, but what is known is that the Domain Name was registered in the name of Mr. Lutoborski in 2003 but was transferred into the name of the Respondent, Network Technologies Polska Jasinski Lutoborski Sp.J. in March 2007. Therefore, prima facie it would seem that at the time of the filing of the Complaint, Network Technologies Polska Jasinski Lutoborski Sp.J. is to be treated as the Respondent and the question is whether it (rather than Mr. Lutoborski) has a right or legitimate interest (see, for example, Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading, WIPO Case No. D2008-1029).

6.10In the Panel’s view, it is difficult to see how Network Technologies Polska Jasinski Lutoborski Sp.J. could have a right or legitimate interest in the Domain Name. The evidence suggests that it is an information technology company that provides Internet related services for its customers. It would appear neither to have ever owned rights in the “eHotel” name, nor to have operated a business under that name. Whereit is to be treated as the “true Respondent” for the purposes of this assessment, it seems reasonably clear that the Complainant can and would succeed under paragraph 4(a)(ii) of the Policy.

6.11The difficulty in this case is that although the Domain Name is now registered in the name of the Respondent, the Respondent contends that the Domain Name is still controlled by and held on behalf of Mr. Lutoborski. Should then Mr.Lutoborski be treated as the “true Respondent” for the purposes of this assessment?

6.12There are some similarities here with the facts in Axelion GmbH v. Eric H. Schunk, WIPO Case No. D2008-1701. In that case the complainant was engaged in a dispute with the original registrant of a domain name and the domain name was then transferred into the hands of a lawyer in the United States. In that case, notwithstanding suggestions that the lawyer held the domain name on behalf of the original registrant, the panel still held that it was the existence or otherwise of rights or legitimate interests of the lawyer that were significant.

6.13However, in Axelion, supra, the exact relationship between the lawyer and the original registrant was unclear. Further, the peculiar facts of that case were such that if the new registrant had no interest in the domain name then this in turn suggested that both old and new registrants were colluding in a sham transaction to frustrate the operation of separate legal proceedings in the German courts. It was against that unusual background that the panel held that the new registrant was the proper registrant for the purposes of the rights and legitimate interests assessment.

6.14In this case there seems to be no dispute that it is Mr. Lutoborski,and Mr.Lutoborski alone, who has an interest in the Domain Name. The Complainant contends that Network Technologies Polska Jasinski Lutoborski Sp.J. is “the company of Mr. Lutoborski” and Mr. Lutoborski seems to admit this, asserting that he is “a partner” in that business. More significantly, the Respondent’s Supplemental Submission makes it clear that the Respondent simply holds the Domain Name on behalf of Mr. Lutoborski and it is noticeable that it is Mr. Lutoborski personally who has filed both the Response and the Respondent’s Supplemental Submission in this matter.