Loew’s Hotels, Inc. v. Shota Hashida / Gran Net Co.,Ltd
Claim Number: FA2010001915726
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loewshotelscatering.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
On October 5, 2020, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <loewshotelscatering.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@loewshotelscatering.com. Also on October 12, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Loew’s Hotels, Inc., operates upscale hotels and resorts. Complainant has rights in the LOEWS and LOEWS HOTELS marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,601,550, registered June 12, 1990; Reg. No. 6,161,857). Respondent’s <loewshotelscatering.com> domain name is nearly identical and confusingly similar to Complainant’s LOEWS and LOEWS HOTELS marks since it includes the entirety of the marks, merely adding the generic term “paradise” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <loewshotelscatering.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s LOEWS mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent has used the domain to offer the domain name for sale and display unrelated information.
Respondent registered and uses the <loewshotelscatering.com> domain name in bad faith. Respondent passes off as Complainant to trade upon Complainant’s goodwill. Additionally, Respondent had actual knowledge of Complainant’s rights in the LOEWS mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Loew’s Hotels, Inc. (Complainant), of New York, NY, USA. Complainant is the owner of domestic and international registrations, including Japanese registrations, for the mark LOEWS and variations thereon, comprising the family of LOEWS marks. Complainant has used its marks continuously since at least as early as 1962 in connection with its provision of hotel goods and services. Complainant also owns numerous domain name registrations for its marks including <loewshotels.com>.
Respondent is Shota Hashida / Gran Net Co.,Ltd (Respondent), of Osaka, Japan. Respondent’s registrar’s address is listed as unknown; however its email address uses the top-level domain country code designation for Japan. The Panel notes that the disputed domain name was registered on or about April 28, 2020.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the LOEWS and LOEWS HOTELS marks based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its USPTO registrations (e.g., Reg. No. 1,601,550, registered June 12, 1990; Reg. No. 6,161,857). The Panel here finds that Complainant has rights in the LOEWS marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <loewshotelscatering.com> domain name is nearly identical and confusingly similar to Complainant’s LOEWS and LOEWS HOTELS marks since it includes the entirety of the marks, merely adding the generic term “catering” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD is generally insufficient to overcome confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The Panel here finds that the disputed domain name is identical and/or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <loewshotelscatering.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s LOEWS mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Shota Hashida / Gran Net Co., Ltd,” and Complainant contends, and Respondent does not dispute, that Complainant did not authorize Respondent’s use of the LOEWS marks. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has used the domain to offer the domain name for sale and display unrelated information. Use of a disputed domain name to redirect users to an unrelated webpage may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or 4(c)(iii). See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Similarly, use of a disputed domain to offer the domain for sale does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots of pages resolving at the disputed domain over the course of Respondent’s ownership of the disputed domain name. The first shows a website offering the disputed domain name for sale. The other screenshot shows an unrelated webpage discussing open source software in Japanese. The Panel here finds that Respondent’s use does not amount to a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <loewshotelscatering.com> domain name in bad faith because Respondent passes off as Complainant to trade upon Complainant’s goodwill. Use of a disputed domain name to suggest affiliation with a complainant may be evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant claims that Respondent capitalizes on the goodwill associated with Complainant’s LOEWS marks to mislead users and enhance the value of the disputed domain name before selling it. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the LOEWS mark when it registered the <loewshotelscatering.com> domain name. While constructive notice is insufficient for a finding of bad faith, actual knowledge of a Complainant’s rights in a mark may demonstrate bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent must have had knowledge of Complainant’s rights in the LOEWS marks based upon Complainant’s longstanding use of the marks and Respondent’s inclusion of the related term “catering” in the disputed domain name. The Panel here finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <loewshotelscatering.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 19, 2020
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