Morgans Hotel Group Co., Morgans Group LLC, and Beach Hotel Associates LLC v. Damir Kruzicevic
Claim Number: FA0711001106477
Complainant is Morgans Hotel Group Co., Morgans Group
LLC, and Beach Hotel Associates LLC (“Complainant”), represented by Adele
R. Frankel, of McDermott Will & Emery, 227 West
Monroe Street; Suite 4400, Chicago, IL 60606. Respondent is Damir Kruzicevic (“Respondent”), represented by Ari
Goldberger, of ESQwire.com Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delanohotel.com>, registered with Fabulous.com Pty Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum
On November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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@<delanohotel.com> by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission was received from Complainant on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Morgans Hotel Group Co. and its related entities
(collectively Complainant”) are an international family of luxury hotel
companies. In particular,
Complainant states that the domain name incorporates and is confusingly similar to the Complainant’s marks and Complainant’s own domain name. Complainant alleges that Respondent’s domain name creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Complainant alleges that it has not consented to Respondent’s use of the domain name and that in response to inquiries by Complainant’s counsel, Respondent has indicated that he might be willing to sell the disputed Domain Name in a letter dated July 25, 2004: “We have reviewed your ‘generous’ offer of $500 for the above domain, and unfortunately must relate that it is not sufficient to motivate our client to transfer the domain to you or your client.”
Complainant alleges that Respondent is not commonly
known by the domain name, either as a business, individual, or other
organization. According to Complainant, Respondent
has been using its domain name to deceive consumers by redirecting
Complainant’s consumers and potential consumers to a commercial web site
offering hotel reservations, which is not affiliated with Complainant. In addition, Respondent is further leading
consumers to believe that such a site is somehow affiliated with, or otherwise
sponsored or approved by Complainant by using “DELANO HOTEL” as a meta-tag,
which redirects consumers who are conducting web searches for Complainant’s
Complainant states that Respondent has a prior history of registering domain names encompassing well-known company names, including <victoriasecret.com>, <ouimagazine.com>, <michaelholigan.com>, <absolutseries.com>, <laquintainns.com> and <aatravel.com >. All of these companies owning marks identical or confusingly similar to the domain names registered by Respondent filed actions against Respondent. In each case, Respondent was found to have registered the domain name in bad faith and ordered to transfer the domain name back to the company with the legitimate interest in the name.
Respondent states that he registered the domain name to promote hotels in the city of Delano, California as part of his network “of over 1,300 [city]-hotel.com domain names which Respondent operates through his Cheaprooms.com hotel reservation service.” Respondent states that he has registered 1,300 domain names which incorporate the names of major cities around the world.
Respondent states that his domain name is a geographically descriptive
domain name and thus he is entitled to register and use it in good faith. Respondent points out that Complainant
holds a trademark for
Respondent states that his reply to the offer to purchase the domain name is not evidence that Respondent registered the domain name for the purpose of selling it. Respondent rejected another offer to sell the domain name (which he believes was an offer made on behalf of Complainant) by stating the domain name “isn’t for sale.”
Respondent denies that he is misleading Internet users to believe the
site is affiliated with Complainant as the site “makes clear” that the users
can search for hotels in the city of
Respondent acknowledges that he previously had been unsuccessful in past UDRP cases. He admits he was wrong in some of those cases, not understanding at the time the intricacies of trademark law and its relationship to UDRP proceedings.
C. Additional Submissions Submitted by the Parties
In its Additional Submission Complainant states that even though it has
not registered a trademark for DELANO HOTEL, the addition of the word HOTEL to
its mark does not materially alter the mark to lessen the likelihood of
confusion between the domain name and its mark.
Complainant disputes Respondent’s argument that the domain name is
merely a geographic descriptive term because Complainant’s use of the
Complainant points out that as of the 2006 census, the population of
In his Additional Submission, Respondent disputes the contention that
he registered the domain name for the purpose of selling it to
Complainant. Respondent also denies he
had knowledge of Complainant’s hotel when he registered the domain name. Respondent also denies that he should have had
constructive knowledge of Complainant’s trademarks as he is a resident of
Respondent also states that the domain name is not confusingly similar
to Complainant’s marks because DELANO HOTEL does not refer exclusively to
Complainant’s location but to any generic hotel in
Morgans Hotel Group Co. and its
related entities (collectively Complainant”) hold several federal trademark
registrations containing the
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 contends that it has
established rights in the
The Panel further finds that
Respondent’s <delanohotel.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name includes Complainant’s
Contrary to Respondent’s assertion, UDRP
decisions have found that in appropriate cases geographic names can fall within
the scope of Policy ¶
4(a)(i). In support of his position, Respondent cites the decision in Sorel Corp. v. Domaine Sales Ltd., FA
96674 (Nat. Arb. Forum Mar. 28, 2001), a case in which the trademark
majority view is that geographical terms can be protected under the UDRP if the
complainant has shown that it has rights in the geographic term and that the
term is being used as a registered (or common law) trademark. See,
e.g., Skipton Building Society v. Coleman, D2000-1217 (WIPO Dec. 1, 2001);
Because the Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
A majority of the Panel rejects Respondent’s
contention that it has registered the domain name to promote hotels in the city
Thus, because hotels in Delano are an insignificant aspect of Respondent’s Cheaprooms.com hotel reservation service, the Panel draws the conclusion that Respondent’s use of the Complainant’s mark results in diverting Internet users looking for Complainant’s hotel, not to hotels in Delano, California, but ultimately to other hotels accessed through Respondent’s site, which potentially compete with the Delano Hotel owned by Complainant. Under these circumstances a majority of the Panel find that Respondent’s activities do no constitute a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i). See WHM L.L.C. v. Northpoint, Inc., D2005-1134 (WIPO Jan. 27, 2006)(use of complainant’s mark to direct Internet users to a web portal to obtain information about competing hotels was not a bona fide offering of goods and services under Policy ¶ 4(c)(i)).
Complainant has demonstrated that
Respondent has engaged in a pattern of registering domain names that
incorporate third-party marks as shown in at least five previous UDRP decisions
against Respondent. E.g., Oly Holigan, L.P. v. Damir Kruzicevic,
FA 97353 (Nat. Arb. Forum
Respondent states that his prior
UDRP disputes are irrelevant because the “only time other cases are relevant is
. . . where a domain name is registered to prevent the owner of a trademark
from reflecting the mark in a corresponding domain name provided the owner has
‘engaged in a pattern of such conduct.’” Although the Panel recognizes that each case
must be considered on its merits, a majority of the Panel finds that
Respondent’s conduct, on five occasions, of registering domain names found to
violate the rights of various complaining parties, constitutes a “pattern”
within the meaning of Policy ¶ 4(b)(ii).
E.g., Effems v. Weitner,
Finally, as stated above, given the
paucity of hotels in the small town of
Having established all three elements required under the ICANN Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delanohotel.com> domain name be TRANSFERRED from Respondent to Complainant.
and the Hon. Carolyn Marks Johnson (Ret.), Panelists
This panelist does not subscribe to the majority's interpretation of the term "bona fide offering of goods and services." I view the panel's role under 4(c)(i) as limited to a simple determination of whether the Respondent operates an active commercial enterprise or whether the enterprise is spurious, such as when a website has been hastily mounted to give a false impression that services are being offered.
Respondent has registered a large number of domains that reflect geographic hotel designations. This ownership is supported by a search of Whois records and a view of the relevant websites. I am persuaded that Respondent operates a bona fide concern and is therefore entitled to a defense under Section 4(c)(i). Whether his use of domains in this manner is an infringement of the trademark rights of the Complainant is, in my opinion, a question of trademark law more properly put before a court.
Diane Cabell, Panelist
Dated: January 30, 2008
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