WIPO domain name resolution complaint won’t resolve trade mark dispute

Background

The Complainant was Future Inns UK Limited, a company operating a chain of hotels in the UK since 2005.  It promoted its hotels through its website using the domain name futureinns.co.uk, registered in 2002, and via various online publications.  In addition to its online presence, the Complainant also held a UK trade mark in FUTURE INN, registered in 2003.  The Respondent was seeking cancellation of this trade mark in a parallel trade mark action.

The Respondent was Sotirios Kopatsaris, the founder and CEO of a company named Future Hotels International Single Member PC, incorporated in Greece in February 2019.  He was also the sole director and majority shareholder of Future Hotels Limited, incorporated in the UK in 2020.  Future Hotels Limited owned a UK trade mark in FUTURE HOTELS, registered in 2020. The Complainant was also seeking cancellation of this trade mark in a parallel trade mark action.

The disputed Domain Name was thefuturehotels.com, registered on 21 January 2019.  Shortly before the Complaint was filed, it resolved to a website promoting the Respondent’s “Future Hotels”, described as “a global community of award-wining hoteliers, technologists, researchers and travel agents, on a mission to redefine what it means to be an independent hotel in the 21^st century – and beyond.”

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(a)        The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b)        The respondent has no rights or legitimate interests in respect of the domain name; and

(c)        The domain name has been registered and is being used in bad faith.

Under the UDRP, a Panel is required to address two main issues under the first limb (a):

(i) whether the complainant has sufficiently proven relevant trade mark rights and

(ii) whether the disputed domain name is found to be confusingly similar to such trade mark rights on a straightforward visual and aural comparison, this test being much narrower than the “likelihood of confusion” test under trade mark law. 

Questions such as the scope of trade mark rights and the geographical location of the respective parties are not relevant (although may be considered further under the other limbs, if relevant). 

Identity / similarity

With regard to (i), the Panel considered that the Complainant had long-standing trade mark rights in FUTURE INN, and such rights should not be presumed to be invalid merely due to the fact that the Respondent had initiated cancellation proceedings.  As regards (ii), the Panel found confusing similarity between the Complainant’s FUTURE INNS trade mark and the disputed domain name, thefuturehotels.com, despite the fact that the Respondent’s successful registration of its FUTURE HOTELS trade mark implied that there was no confusing similarity.  However, the Panel underlined the narrower test under the UDRP and found that the Domain Name did include the dominant element “future” that distinguished the Complainant’s hotel services, and agreed that there was a high degree of conceptual overlap between the terms “inns” and “hotels”.  The Panel also referred to the content of the Respondent’s website offering hotel-related services as an additional factor reinforcing the risk of confusion.  The first limb was therefore satisfied.

Rights / legitimate interests in respect of the domain name

Regarding the second limb, the Complainant stated that the Respondent was not authorised to use its trade marks and the Domain Name was not derived from the Respondent’s own name.  The Respondent’s use of the Domain Name to promote his hotels therefore could not be considered as bona fide use nor legitimate noncommercial or fair use under the Policy.  The Respondent essentially contended that the Domain Name was derived from the name of his companies and registered in anticipation of his business expansion in the UK.  The Respondent further argued that he was not aware of the Complainant and its business when registering the Domain Name in 2019.

The Panel first addressed the issue regarding the Respondent’s prior knowledge of the Complainant’s trade marks at the time of registration of the Domain Name.  On the one hand, since the two parties appeared to be in the same or closely related industries, it seemed likely that the Respondent may have been aware of the Complainant and its business when registering the Domain Name.  However, on the other hand, given the geographical distance between the locations where the two parties were based (i.e., the UK and Greece), the possibility that the Respondent had never heard of the Complainant at least before it sought to expand its business in the UK could not be entirely excluded.

Faced with this dilemma, the Panel considered that the Respondent’s ownership of a registered UK trade mark for FUTURE HOTELS constituted a decisive factor in this case. The Panel underlined that this trade mark had been successfully registered in the UK, despite the Complainant’s prior trade marks in FUTURE INN, and was valid pending the outcome of the Complainant’s cancellation action.  The Panel therefore held that the owner of the trade mark, Future Hotels Limited, had a prima facie right to make use of this term.  Consequently, the Respondent, who controlled Future Hotels Limited, could claim the benefit of that right and use the Domain Name to promote his hotel business. 

Bad faith

Given the above, the Panel held that the second limb was not satisfied and thus there was no need to address the third limb.  The Complaint was therefore denied.

Comment

UDRP Panels will not generally consider the validity of existing trade mark rights as this is outside the scope of the UDRP.  Brand owners involved in parallel trade mark proceedings would therefore be well advised to wait until such proceedings have been finally determined before considering a UDRP complaint.

The decision is available here.

Authored by the Anchovy News team.