Mandarin Oriental Services BV v Hawley [2005] DRS 02326 (4 May 2005)

Nominet UK Dispute Resolution Service

DRS 02326

Mandarin Oriental Services B.V. v. Peter Hawley

Decision of Independent Expert

1.	Parties: 

Complainant:		Mandarin Oriental Services B.V.
Country:		NL

Respondent:		Peter Hawley
Address:	[The Respondent elected not to make his address available]

2.	Domain Name:

mandarinoriental.co.uk (“the Domain Name”)

3.	Procedural Background:

The complaint was entered into Nominet’s system on 24 January 2005.  Nominet validated the complaint and sent out the standard notification correspondence to the Respondent, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 25 February 2005 to submit a Response. Nominet’s letters were returned endorsed “Not known at this address” and then, more emphatically, “STILL not known at this address! Please do not send again!!!” No Response was received and therefore the Informal Mediation stage was bypassed. On 28 February 2005 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). After a slight administrative hiccup, the fee was paid on 14 April 2005.

On 18 April 2005 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert with effect from 21 April 2005.

4.	Outstanding Formal/Procedural Issues (if any):

None.

5.	The Facts:

The Complainant is a Dutch company and part of the Mandarin Oriental hotel group. Although I have not been told a great deal about the internal division of responsibilities between the companies within the Mandarin Oriental group, it is evident that one of the functions of the Complainant is to hold and administer the group’s intellectual property rights. In the UK, the Complainant is registered proprietor of trade mark registrations 2181309 (MANDARIN ORIENTAL for ‘Business and hotel management, marketing, advertising and promotional services; business and hotel administration, appraisal, advisory and survey services; rental of advertisement hoarding and billboards; information and advisory services related to all the aforesaid services; all included in Class 35’) and 1348414 (MANDARIN ORIENTAL for ‘Hotel and restaurant services; all included in Class 42’). These marks are registered as of 4 November 1998 and 21 June 1988 respectively.

The Nominet WHOIS search with which I have been provided shows that the Domain Name, mandarinoriental.co.uk, was registered on behalf of the Respondent on 3 April 2003.

There is currently no website accessible under the URL http://www.mandarinoriental.co.uk, though the unchallenged evidence of the Complainant is that it has in the past pointed to the http://www.Leisurelinxuk.com web site offering “200 London hotels with internet rates, photos and instant bookings.”

6.	The Complainant’s Contentions:

Complainant:

The Complainant requests that the Domain Name be transferred to it on the basis of the following submissions:

“Complainant’s rights
History
The Complainant has rights in the mark and name MANDARIN ORIENTAL through its use and registration of the mark.
The Complainant has numerous trade mark registrations around the world for the mark MANDARIN ORIENTAL including many European countries and the United Kingdom.  In the UK, the Complainant has obtained registrations 281309 (in Class 35) and 1348414 (in Class 42). See Annexure 1 for Trade Marks Office database printouts in relation to Complainant’s United Kingdom trade mark registrations.
Complainant has a substantial and exclusive reputation in the mark MANDARIN ORIENTAL. Complainant is part of the Mandarin Oriental Hotel Group (the group, or companies within the group are hereafter referred to as “MOHG”) which is an award winning international hotel investment and management group.
MOHG opened its first hotel in 1963 . The hotel, located in Hong Kong, was opened as “The Mandarin” and quickly developed a reputation as being a world class hotel. In 1974, following its success in Hong Kong, MOHG expanded its business by acquiring an interest in “The Oriental” hotel in Bangkok which was at that time already acknowledged as one of the world’s great hotels.
In 1985, MOHG restructured and from that time, operated the majority of its luxury hotels in its hotel chain under the name — “MANDARIN ORIENTAL”.
The word “Mandarin” has multiple meanings which relate either to a position of high government office, a language, or a small citrus fruit (see dictionary extracts at Annexure 2). None of these meanings have any descriptive significance in relation to hotels or travel. The word “Oriental” means pertaining to the Orient, or countries in the east. The combination - MANDARIN ORIENTAL - is a coined expression and does not have any meaning other than as a reference to Complainant.
When conducting a Google search, of the words Mandarin and Oriental, or the more restricted term “Mandarin Oriental” the vast majority of sites located are located because they contain references to the Complainant. Attached to mark Annexure 3 is a printout of the first 100 results of a search for Mandarin Oriental on the Google search engine.
In 1987, MOHG was floated on the Hong Kong Stock Exchange under the name of Mandarin Oriental International Limited, with a net asset value ofUS$277 million. Today, MOHG’s portfolio includes the original properties in Hong Kong and Bangkok together with other hotels around the world including Jakarta, Kuala Lumpur, Macau, Manila, Singapore, Surabaya, Bermuda, Hawaii, New York (two properties), Miami, San Francisco, Washington DC, Geneva, London, Munich, Paris and an additional property in Hong Kong. Further MANDARIN ORIENTAL branded properties are planned for opening in the near future in Chiang Mai, Prague, Hong Kong, Tokyo, Cancun and Boston.
The Complainant’s hotel in London is particularly prestigious and well known and was branded as the “Mandarin Oriental Hyde Park, London” in November 1996. See Annexure 4 for a printout from the Complainant’s website relating to the Mandarin Oriental Hyde Park, London. The property has operated as a hotel since 1 902 and has been associated with the British Royal family. It is located in an exclusive area of London, close to the prestigious stores - Harrods and Harvey Nichols. The hotel, and its recently opened spa, have received numerous awards and accolades. See Annexure 5 for a list of such awards and accolades for the period from 2001 to 2004. See Annexure 6 for a selection of reviews of the Mandarin Oriental Hyde Park, London.
MOHG has won numerous awards and accolades from influential global publications for its high standards of service. See Annexure 7 being a list of awards for the years 2001 to 2004.

Promotion and revenue
In the six months to 30 June 2004, the combined total revenue of hotels under the management of MOHG was US$3 04. 10 million. As at 3 0 June 2004, MOHG’ s goodwill was listed at US$20.70 million. See Annexure 8 being a news release on the interim report for Mandarin Oriental International Limited, the parent company of MOHG.
Complainant has extensively marketed and promoted its services under the MANDARIN ORIENTAL mark. Annually, Complainant usually spends in excess ofUS$4 million, and in 2004 spent almost US$ 5 million, on promotional activities.
Complainant maintains a website (the “Website”) which is accessible at mandarinoriental.com and mandarin-oriental.com to promote its hotels. We urge the expert to review the Website as it includes detailed information about the Complainant, its hotels and services.
The Website is an important part of Complainant’s promotion and includes promotional information concerning Complainant’s properties, special accommodation deals, marketing partners, careers and, significantly, an online booking facility. Given that on-line booking is available, it is vital that consumers be correctly directed to Complainant’s site. Misdirection of consumer traffic to other sites will lead to a direct loss of business for Complainant.
In addition to dealing directly with consumers, Complainant deals with travel agents. Accordingly, Complainant markets its hotels through travel industry channels, including trade publications and road shows as well as via its own website and hotel magazine entitled “Mandarin Oriental” which is available in the rooms of MO hotels and sent to selected customers.
Furthermore, Complainant advertises in various forms of media including travel magazines, newspapers, in-flight advertisements and sponsorships. Print media in which Complainant places advertisements under the MANDARIN ORIENTAL trade mark include:

United States
•	New Yorker
•	Conde Nast Traveler
•	Vanity Fair
•	Gourmet
•	Architectural Digest
•	Departures
•	Travel & Leisure
•	Rob Report
•	Elite Traveler

United Kingdom
•	The Spectator
•	Conde Nast Traveller (UK)
•	Vanity Fair (UK)
•	Tatler
•	World Of Interiors
•	Hampton Court Program Book

International
•	The Economist
•	FT Weekday
•	FT Asian Edition - Weekday
•	FT - How To Spend It - Worldwide
•	FT - How To Spend It - (Asia Edition)
•	Asian Wall Street Journal
•	Business Week (Asia)
•	Business Week (Europe)
•	Premier (Global)
•	Christie’ s Magazine (Worldwide)
•	Wallpaper
•	Forbes Global

Asia only
•	National Geographic (Asia)

See Annexure 9 for examples of the marketing and advertising by MOHG to promote the MANDARIN ORIENTAL mark.
MOHG sponsors various events to further promote the MANDARIN ORIENTAL brand such as: Hampton Court Music Festival (UK) from 2001 — 2004 and Mother’s Choice in March 2004 by MOLON; Make A Wish For Asia Money Charity Evening in 2004 by MOHG and Royal Academy of Dance in 2003 by MOHKG.
Complainant advertises under the MANDARIN ORIENTAL trade mark on the in-flight audio-visual channels of various airlines, including:

Airline
•	Cathay Pacific (all routes)
•	British Airways (all international flights)
•	United Airlines (all transpacific routes)
•	Lufthansa Airlines (all long haul flights)
•	Air France (all long haul flights)
•	American Airlines (all international flights)
•	Dragon Air (all international flights)
•	JAL (all international flights)

Partnerships
Complainant has special relationships with a number of affiliated airline/frequent flyer partners. These promotional partnerships allow consumers to earn reward points when staying at Complainant’s hotels which can then be redeemed for air travel. These partners include British Airways Executive Club, Cathay Pacific Asia Miles, China Airlines, Air China, JAL Mileage Bank, SkyPass (Korean Air), Enrich (Malaysian Airlines) Qantas Frequent Flyer, Singapore Airlines KrisFlyer, Royal Orchid (Thai Airways) and Flying Club (Virgin Airlines).
As a luxury hotel chain, to ensure the strength of its brand, the Complainant is selective about the companies that it chooses to have as its partners.

Domain names
The Complainant has registered numerous domain names and taken action against cybersquatters as a policy. See Annexure 10 for a list of the Complainant’s domain names which includes domain names transferred to the Complainant after objecting to the registration of those names by third]. This is to ensure the purity of the domain name register such that consumers looking for the Complainant by guessing its domain name will only be directed to the Website.
Due to its extensive promotion and trading activities, Complainant has built up a substantial and exclusive reputation in the mark MANDARIN ORIENTAL amongst general consumers and the travel trade alike.

Abusive registration
The domain name mandarinorientalhotel.co.uk (the “Disputed Domain Name”), in the hands of the Respondent is an abusive registration.

Confusingly similar
The Disputed Domain Name is made up of the Complainant’s trade mark “MANDARIN ORIENTAL”, and the first and second level domain names “.co.uk”. For the purposes of a comparison between the Complainant’s mark and the Disputed Domain Name, the “.co.uk” can be disregarded because it is generic.
In our submission, the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and registered domain name “mandarinoriental.com”

The Respondent
The Respondent, an individual named Peter Hawley who has elected not to disclose his address, is not in any way associated with the Complainant nor authorised by the Complainant to use the Complainant’s trade mark in the Disputed Domain Name. His name bears no similarity to the mark “Mandarin Oriental” and he has no rights or legitimate interests in the Disputed Domain Name.
The Respondent maintains a website known as “Leisurelinxuk.com” which is an electronic hotel booking site. See Annexure 11 for information from the Respondent’s website regarding the Respondent’s business.

Unfair disruption of the Complainant’s business
The Disputed Domain Name was registered on 3 April 2003 by which time Complainant had registered its trade mark and acquired its exclusive reputation.
Given the Complainant’s reputation, and the Respondent’s association with the hotel industry, the Respondent must have known of Complainant’s trade mark when registering the domain name. The Respondent’s registration of the Disputed Domain Name is therefore calculated to deceive and cause confusion for the Respondent’s financial benefit, thereby disrupting the Complainant’ s business.

Use of the name and confusion
It is common for users, looking for a particular organization on the internet, to guess the domain name of its website by typing this into the address line of their web browser. A consumer looking for the Complainant’s Mandarin Oriental Hotel in London could therefore type in the Disputed Domain Name. This is because the Disputed Domain Name is made up of the Complainant’s mark and the United Kingdom commercial domain extension “.co.uk”.
Entering the Disputed Domain Name into the address line of a web browser leads to a page on the Respondent’s website that lists a large number of hotels in London. See Annexure 12 for printouts from the Respondent’s website reached when typing the Disputed Domain Name into a web browser. On this page, the user can see information about various hotels and book online for some of them - but not the Complainant’s hotel. The reference to the Complainant’s hotel is given no prominence in the long list of hotels and if the user does locate the reference, he will not be able to make a booking online and may simply choose another hotel that they can book online.
Obviously, the Respondent is aware of the Complainant. In our submission, the Respondent has registered the Disputed Domain Name to ride on the Complainant’s reputation in order to attract custom to itself for its own commercial gain.
The home page on the Respondent’s website states that it has “200 London hotels with internet rates, photos and instant bookings.”
In addition to mere registration of the Disputed Domain Name, the fact that the Disputed Domain Name leads to a hotel related website, and that the Respondent claims to be able to offer special rates, compounds the likelihood of consumer confusion. Consumers entering Disputed Domain Name to find the Complainant’s site would be led to believe that Respondent’s site is affiliated with, or maintained by, the Complainant.
Also, once at Respondent’s site, the consumer could be directed to one of the Complainant’s competitor’ s hotels. This is because whilst many hotels listed on the Respondent’s site that can be booked online - the Complainant’s hotel cannot be booked on line. This is injurious to the Complainant’s business.
Therefore, even if a consumer is not confused by the Respondent’s website, the consumer could be directed to a different hotel, potentially diverting business away from the Complainant. This would not occur if the consumer were to be directed to the Website which does not include links to other hotel websites.
It is clear that the Respondent cannot have any legitimate claim to the Disputed Domain Name. In addition, it cannot be said that Respondent is making fair use of the Disputed Domain Name. This is because:
1 . Disputed Domain Name is, effectively, identical to the Complainant’s MANDARIN ORIENTAL mark. The only difference, other than the first and second level domain names; and
2. the site is not a tribute site but rather is a site used to secure hotel bookings for payment of a commission.
In our submission, this is a clear case of an abusive registration and we request the expert to make a finding to that effect.”

Respondent:

The Respondent did not file a Response.

7.	Discussion and Findings:

Requirements which must be satisfied in order for the Complaint to succeed

Paragraph 2 of the Policy requires that, in order for the Complaint to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent’s default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent’s non-compliance as I consider appropriate.
Complainant’s Rights

I must first decide whether the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.
The definition of ‘Rights’ in the Policy “includes, but is not limited to, rights enforceable under English law.” At the very least this encompasses UK trade mark registrations and unregistered rights in the nature of the goodwill necessary to found a passing off action in England and Wales.
In the present case the Complainant has amply demonstrated its ownership of Rights in the mark MANDARIN ORIENTAL. It has trade mark registrations for the word-only mark MANDARIN ORIENTAL dating back nearly 15 years prior to the registration of the Domain Name. Moreover from the evidence and submissions before me, it appears that the Complainant has conducted substantial business and has built up significant goodwill in the UK under and by reference to the name MANDARIN ORIENTAL.
I am further satisfied that the name MANDARIN ORIENTAL is identical to the Domain Name (ignoring, as I am required to do, the first and second level suffixes).

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i.	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii.	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out in Paragraph 4(a) of the Policy.
The Complainant seems to rely principally upon paragraphs 3(a)(i)(C) and 3(a)(ii) of the Policy:
Under paragraph 3(a)(i)(C), it is indicative of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
Under paragraph 3(a)(ii), it is indicative of Abusive Registration if the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
The Complainant has put together a substantial and well-presented Complaint, accompanied by twelve Annexures which substantiate its factual assertions.  I have read and digested all of the evidence, but I will not refer to it in any detail in this Decision because I do not want to over-elaborate what is, at its heart, a very simple and straightforward dispute with a clear and obvious result.
The Complainant notes that “The Respondent, an individual named Peter Hawley who has elected not to disclose his address, is not in any way associated with the Complainant nor authorised by the Complainant to use the Complainant’s trade mark in the Disputed Domain Name. His name bears no similarity to the mark “Mandarin Oriental” and he has no rights or legitimate interests in the Disputed Domain Name.”

The Complainant is effectively inviting me to infer that when the Respondent registered the Domain Name, he did so solely in order to take unfair advantage of the Complainant’s goodwill and reputation in the name MANDARIN ORIENTAL. In this sort of situation one cannot help but come back to the Judgment of Jonathan Sumption QC sitting as a Deputy Judge of the High Court in BT v One In A Million [1998] F.S.R. 265, as approved by Aldous LJ on appeal ([1999] F.S.R. 1):

“There is only one possible reason why any one who was not part of the Marks & Spencer Plc group should wish to use such a domain address, and that is to pass himself off as part of that group or his products off as theirs. Where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the Defendants choose it? In the present case, the assumption is plainly justified. As a matter of common sense, these names were registered and are available for sale for eventual use. Some one seeking or coming upon a website called http://marksandspencer.co.uk would naturally assume that it was that of the Plaintiffs.”
I am entitled to draw inferences from the Respondent’s failure to submit a Response under paragraph 15(c) of the Procedure. I accept the Complainant’s submission that the combination of words MANDARIN ORIENTAL is “a coined expression and does not have any meaning other than as a reference to Complainant”. It was open to the Respondent to adduce a Response refuting the inference that he only obtained the Domain Name so as to take unfair advantage of the Complainant’s goodwill and reputation in the name MANDARIN ORIENTAL. He has not done so and I cannot sensibly resist the inference that the Respondent did indeed register the Domain Name abusively.
The Respondent subsequently used the Domain Name to point to a site concerning UK hotels including, but my no means restricted to, hotels operated by the Complainant. The way in which the Respondent has used the Domain Name to promote hotel services not only retrospectively reinforces the inference of taking unfair advantage at the time of registration (the first alternative limb of Abusive Registration), but also leads me to conclude that the Domain Name has been used in a manner which takes unfair advantage of the Complainant’s Rights (the second alternative limb of Abusive Registration).
- Conclusion
The considerations set out in paragraphs 3 and 4 of the Policy are illustrative and non-exhaustive. The question for my ultimate consideration is whether, on the evidence as a whole, the Complainant has discharged the burden of proving that the Domain Name (i) was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights or (ii) has been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights.
For the reasons I have given, my overall assessment on the balance of probabilities is that the Complainant has discharged its burden. I find that the Respondent registered the Domain Name in a manner which took unfair advantage of the Complainant’s Rights and that the Domain Name has been used in a manner which takes unfair advantage of the Complainant’s Rights.
Accordingly I conclude that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision:
Having concluded that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, mandarinoriental.co.uk, should be transferred to the Complainant.

Date May 4th, 2005 
Philip Roberts