Morgans Hotel Group Co. and Morgans Group LLC v. Wayne Nicholas d/b/a Beroca Holdings B.V.I. Limited
Claim Number: FA0708001066665
Complainant is Morgans Hotel Group Co. and Morgans Group LLC (collectively “Complainant”), represented by Adele R. Frankel, of McDermott Will & Emery LLP, 227 West Monroe Street; Suite 4400, Chicago, IL 60606. Respondent is Wayne Nicholas d/b/a Beroca Holdings B.V.I. Limited (“Respondent”), Suite 331, 8 Shepherd Market, Mayfair, London, W1J 7JY, UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganshotelgroup.mobi>, registered with EuroDNS S.A.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 20, 2007; the National Arbitration Forum received a hard copy of the Complaint August 21, 2007.
On August
24, 2007, EuroDNS
On September 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@morganshotelgroup.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <morganshotelgroup.mobi>, is identical to Complainant’s MORGANS HOTEL GROUP mark.
2. Respondent has no rights to or legitimate interests in the <morganshotelgroup.mobi> domain name.
3. Respondent registered and used the <morganshotelgroup.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant continuously has used the MORGANS HOTEL GROUP mark in connection with an international family of brands of premier luxury hotel companies. Complainant holds registrations of the mark with numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,536 issued Feb. 27, 2007, filed Sep. 30, 2005).
Respondent registered the disputed domain name, <morganshotelgroup.mobi>,
was registered September 26, 2006, and it contains links to various third-parties
who offer services in competition with those offered under Complainant’s
mark. On the same day Respondent
registered this disputed domain name, Respondent registered numerous other
domain names that have been the subject of dispute. Three of these domain names have been
transferred from Respondent. See Geiger Ltd. v. Beroca Holdings B.V.A.
Ltd., D2007-0195 (WIPO Apr. 17, 2007); see
also Kuoni Reisen Holding AG v. Beroca Holdings B.V.A. Ltd., D2007-0216
(WIPO Apr. 17, 2007); see also Advance Magazine Publishers Inc. v. Beroca
Holdings B.V.A. Ltd., D2007-0026 (WIPO Mar. 28, 2007).
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant sufficiently established its rights in the
MORGANS HOTEL GROUP mark through registration with the USPTO pursuant to Policy
¶ 4(a)(i). See
Moreover, these rights date back to the filling date of
Complainant’s application for registration with the USPTO. See J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration); see also Thompson v. Zimmer,
FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark
application was subsequently approved by the U.S. Patent and Trademark Office,
the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶
4(a)(i) dates back to Complainant’s filing date.”).
The disputed domain name that Respondent registered, <morganshotelgroup.mobi>,
contains in its entirety Complainant’s mark, omitting all spaces and including
the generic top level domain (“gTLD”) “.mobi”.
It is well established that inclusion of a gTLD and omission of spaces
in a mark do not distinguish a disputed domain name. As such, the Panel finds pursuant to Policy ¶
4(a)(i) that the disputed domain name is identical to
Complainant’s mark. See
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See
VeriSign Inc. v. VeneSign
Respondent did not submit a response to the Complaint. In such cases, the Panel is permitted to
presume that Respondent has no rights or legitimate interests in the <morganshotelgroup.mobi>
domain name. The Panel still considers
all available evidence in light of the factors listed under Policy ¶ 4(c) to
see if evidence in the record shows that Respondent has rights and
interests. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also
Am. Express Co. v.
Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever has been commonly known
by the disputed domain name. Moreover,
Complainant has not granted a license to Respondent to use its mark. Absent affirmative evidence to the contrary,
the Panel finds pursuant to Policy ¶ (c)(ii) that
Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name).
The disputed domain name, <morganshotelgroup.mobi>,
resolves to a website containing links to various third-parties, many of whom
offer services in competition with those offered under Complainant’s MORGANS
HOTEL GROUP mark. The Panel finds this
to be further evidence that Respondent has no rights or legitimate interests in
the disputed domain name, because Respondent’s use is not a bona fide offering of goods or service
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
On the same day the disputed domain name was registered,
Respondent registered numerous other disputed domain names. Three of these domain names have been
transferred from Respondent. See Geiger Ltd. v. Beroca Holdings B.V.A.
Ltd., D2007-0195 (WIPO Apr. 17, 2007); see
also Kuoni Reisen Holding AG v. Beroca Holdings B.V.A. Ltd., D2007-0216
(WIPO Apr. 17, 2007); see also Advance Magazine Publishers Inc. v. Beroca
Holdings B.V.A. Ltd., D2007-0026 (WIPO Mar. 28, 2007). The Panel finds that this conduct by
Respondent shows a pattern of preventing complainants
from reflecting their mark in a corresponding domain name by registering names
using the mark of another. This demonstrates pursuant to Policy ¶ 4(b)(ii) that Respondent has registered and is using the <morganshotelgroup.mobi>
domain name in bad faith. See Harcourt, Inc. v. Fadness,
FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of
registration of several infringing domain names satisfies the burden imposed by
the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that
registering multiple domain names in a short time frame indicates an
intention to prevent the mark holder from using its mark and provides evidence
of a pattern of conduct).
Respondent’s <morganshotelgroup.mobi> domain
name resolves to a web page featuring links to competitors of Complainant. Consequently, the Panel finds this to be
further evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Puckett, Individually
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Moreover, the Panel presumes that Respondent is financially
benefiting from providing links to competitors of Complainant through
“click-through fees.” Therefore, the
Panel finds additional evidence pursuant to Policy ¶ 4(b)(iv)
that Respondent registered and is using the disputed domain name in bad
faith. See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganshotelgroup.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 15, 2007.
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