Ian Schrager Hotels, L.L.C. v. R5 Group
Claim Number: FA0204000109370
Complainant is Ian Schrager Hotels, L.L.C., New York, NY (“Complainant”) represented by Ariana G. Voigt of McDermott, Will & Emery. Respondent is R5 Group, Ermita, Manila, PHILLIPINES (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganshotelny.com>, <royaltonhotelny.com>, <hudsonhotelny.com>, <clifthotelsf.com>, <mondrianhotella.com>, <stmartinslanelondon.com>, <sandersonhotellondon.com>, and <delanohotelmiami.com>, registered with Stargate Communications, Inc., and <paramounthotelny.com>, registered with NameSecure.
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 (the “Forum”) electronically on April 8, 2002; the Forum received a hard copy of the Complaint on April 10, 2002.
On April 11, 2002, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain names <morganshotelny.com>, <royaltonhotelny.com>, <hudsonhotelny.com>, <clifthotelsf.com>, <mondrianhotella.com>, <stmartinslanelondon.com>, <sandersonhotellondon.com>, and <delanohotelmiami.com> are registered with Stargate Communications, Inc. and that Respondent is the current registrant of the names. On April 10, 2002, NameSecure confirmed by e-mail to the Forum that the domain name <paramounthotelny.com> is registered with NameSecure and that Respondent is the current registrant of the name. Stargate Communications, Inc. and NameSecure have verified that Respondent is bound by the Stargate Communications, Inc. and NameSecure registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2002 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The disputed domain names are confusingly similar to CLIFT HOTEL, THE ROYALTON, DELANO, MONDRIAN, MORGANS, THE PARAMOUNT HOTEL, THE HUDSON HOTEL, SANDERSON HOTEL, ST MARTINS, and ST MARTINS LANE HOTEL, all of which are marks in which Complainant holds rights. Respondent has no rights or legitimate interests in respect of the dispute domain names. Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant operates several hotels under the CLIFT HOTEL, THE ROYALTON, DELANO, MONDRIAN, MORGANS, THE PARAMOUNT HOTEL, THE HUDSON HOTEL, SANDERSON HOTEL, ST. MARTINS, and ST. MARTINS LANE HOTEL marks.
Complainant registered the CLIFT HOTEL, THE ROYALTON, DELANO, MONDRIAN, and MORGANS service marks on the Principal Register of the United States Patent and Trademark Office, with registration dates from 1992 to 2000. Complainant asserts, without challenge, that it also holds common law rights to THE PARAMOUNT HOTEL and THE HUDSON HOTEL in the United States, as these marks have been used continuously in commerce since at least 1990 and 1941, respectively.
Complainant registered the SANDERSON HOTEL, ST. MARTINS, and ST. MARTINS LANE HOTEL marks with the trademark registrar of the European Union. Complainant also currently has applications pending with the Patent Office, Trade Marks Registry in the United Kingdom for SANDERSON HOTEL and ST. MARTINS.
Respondent registered the disputed domain names in January and February of 2002 and has used them to host content lifted from Complainant’s website in connection with its competing hotel reservation services.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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.
Complainant has established its rights in its service marks registered with U.S. and E.U. trademark registrars. Complainant also asserts common law rights in the remaining marks and has provided evidence to support its claim. Because Respondent has not refuted Complainant’s assertions, the Panel will accept them as true. See 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”).
The disputed domain names are confusingly similar to Complainant’s marks. Each of the domain names includes a geographic reference such as “NY” or “London” and the generic top-level domain (“gTLD”) “.com.” The use of geographic terms does not distinguish a mark from a domain name. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).
The addition of the gTLD “.com” to the marks also does not distinguish the domain names from the marks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Finally, neither the addition of the word “hotel” to THE ROYALTON, DELANO, MONDRIAN, and MORGANS marks nor the omission of the word “the” from THE ROYALTON, THE PARAMOUNT HOTEL, and THE HUDSON HOTEL marks materially alter the marks so as to defeat Complainant’s claim of confusing similarity. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see alsoBody Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s THE BODY SHOP trademark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights to and interests in its marks. Because Respondent has not submitted a Response in this matter, the Panel may presume Respondent has no such rights or interests in respect of the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of domain names confusingly similar to Complainant’s marks to sell competing hotel services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding no rights or legitimate interests where Respondent, a travel agent, registered several domain names incorporating the SANDALS mark in order to make a commission by taking Internet reservations for SANDALS properties).
Further, no evidence suggests that Respondent is commonly known by any of the domain names at issue here such as would establish rights under Policy ¶ 4(c)(ii). Respondent is only known to this Panel as R5 Group. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and used the disputed domain names to misrepresent itself as being Complainant or as having an association with Complainant as well as to market Complainant’s hotels and other hotels for profit. This behavior typifies bad faith within the meaning of Policy ¶ 4(b)(iv). See Ritz-Carlton Hotel Co. v. Jtravel, FA 105960 (Nat. Arb. Forum Apr. 30, 2002) (finding bad faith pursuant to Policy ¶ 4(b)(iv) under nearly identical facts); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on its website at <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).
Further, by registering nine infringing domain names within such a short period of time, Respondent demonstrates bad faith within the meaning of Policy ¶ 4(b)(ii). See 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); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <morganshotelny.com>, <royaltonhotelny.com>, <hudsonhotelny.com>, <clifthotelsf.com>, <mondrianhotella.com>, <stmartinslanelondon.com>, <sandersonhotellondon.com>, <delanohotelmiami.com>, and <paramounthotelny.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 30, 2002
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