Bugatti International S.A. v. Bugatti Hotels & Resorts Ltd.

FRAMEWORK OF THE CASE

A case in which the Plaintiff's enrolment for the "Bugatti" trademark for use in relationship with a scope of hospitality and land administrations including lodging services was contradicted by the Defendant as possible to cause turmoil with the Defendant's "Bugatti" trademark.

FACTS

The Complainant possesses trademarks for BUGATTI. Its BUGATTI red oval logo is enlisted for, inter Alia, cars over the world incorporating Canada with utilizing returning to the mid-twentieth century (but with a rest between the 1940s and the 1980s). Since May 2010, Complainant likewise possesses enrolments recorded around then for BUGATTI-HOTEL corresponding to lodging administrations in numerous nations, albeit not in Canada where the Respondent is based.

The Domain Name was enrolled two months after the Complainant applied for its BUGATTI-HOTEL marks in July 2010 and in 2011 the Respondent merged bodies in Samoa and Seychelles and utilized these elements to make different applications for enrolment of BUGATTI for inn administrations remembering for Canada and the US. The Respondent has delivered some updated development reports and some ongoing press reports from September and October 2013 referencing new improvements being promoted under the BUGATTI name in Thailand. The Domain Name has pictures of intriguing spots and the phrasing "Bugatti Hotels and Resorts COMING SOON" and a round logo. At the point when the site was first joined to the Domain Name, the site bore a precise of the Complainant's red oval BUGATTI logo. The Respondent says its website specialist did this without bearing from the Respondent and this logo has now been taken out.

ARGUMENT

Paragraph 15(a) of the Rules educates this Panel to "choose a charge based on the proclamations and documents submitted as per the Policy, these Rules and any rules and standards of law that it considers relevant."

Paragraph 4(a) of the Policy necessitates that Complainant must demonstrate every one of the accompanying three components to get a request that a domain name should be dropped or moved:

(1) the domain name enrolled by Respondent is indistinguishable or confusingly like a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or genuine interests in regard to the domain name; and

(3) the domain name has been enlisted and is being utilized in dishonesty.

Indistinguishable or potentially Confusingly Similar

The Complainant has enlisted trademark for BUGATTI and BUGATTI-HOTEL. A Complainant's enlistment of a mark with a mechanical/industrial property office adequately sets up its privileges in the mark. (Dixie Consumer Prods. LLC v. Private) Who is dixiecup.com FA 1419529 and Direct Mktg. Co. SPA v. Morelli D2010-1335. The Complainant need not register its mark in the Respondent's nation of home to adequately build up its privilege in the mark under the Policy. (KCTS Television Inc. v. Jump on-the-web Ltd. D2001-0154).

The Domain Name is fundamentally the same as the Complainant's BUGATTI-HOTEL enrollment, contrasting just in the expansion of an extra "s" and the cancellation of the hyphen. Adding of the plural letter "s" doesn't block a finding of befuddling comparability (TR World Gym-IP LLC v. D'Addio FA 956501). A space name's exclusion of a hyphen is lacking to separate the Domain Name from a complainant's mark that incorporates a hyphen. (Albertson's Inc. v. Bennett FA 117013).

Further, the expansion of the engaging word "lodgings" isn't adequate to recognize the Domain Name from the Complainant's BUGATTI trademark and BUGATTI is the unmistakable piece of the Domain Name. (AM Express Co. v. MustNeed.com, FA 257901).

Thusly, the Panel finds that the Domain Name is confusingly like exchange marks which the Complainant has rights.

Synopsis of the judgment

The defendant is a vehicle maker of vehicles depicted as the quickest roadsters ever which sell for over $2 million each. The utilization of the trademark Bugatti has been entrenched regarding extravagance autos, with media consideration in Canadian distributions and auto sites, just as deals of the cars.

The Plaintiff, Bugatti Hotels and Resorts Ltd., is an organization situated in Toronto ("Bugatti Hotels Toronto") that applied for the trademark "Bugatti" for use in relationship with a scope of cordiality and land administrations including inn services and consequently appointed the trademark application to Bugatti Hotels and Resorts Ltd., an organization situated in Seychelles ("Bugatti Hotels Seychelles").

There was proof representing that Plaintiff found the utilization of the Bugatti trademark alluring as a result of the worldwide distinction and notoriety of the Bugatti mark as an extravagance brand. Plaintiff proposed and expected that its utilization of the Bugatti trademark would be seen and promptly comprehended by purchasers to be equivalent to the Defendant's Bugatti trademark, and accordingly, the business would appreciate a similar reserve and goodwill related with the Defendant's Bugatti brand name. There was additional proof that the Plaintiff had enrolled various domain names related to other notable brands.

The Trademarks Opposition board decided that Plaintiff's application must be dismissed as Plaintiff had applied for the brand name in dishonesty.

BY-

ANANYA PANDEY