Morgans Hotel Group Co., Morgans Group LLC, Mondrian Holdings, LLC and Beach Hotel Associates LLC v. DNS Administration c/o Boulevards
Claim Number: FA0712001118747
Complainant is Morgans Hotel Group Co., Morgans Group LLC, Mondrian
Holdings, LLC and Beach Hotel Associates LLC (“Complainant”), represented by Adele
R. Frankel, of McDermott Will & Emery LLP, 227
West Monroe Street; Suite 4400, Chicago, IL 60606. Respondent is DNS Administration c/o Boulevards (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <delano.mobi> and <mondrian.mobi>, registered with Moniker.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2007.
On December 14, 2007, Moniker confirmed by e-mail to the National Arbitration Forum that the <delano.mobi> and <mondrian.mobi> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker registration agreement 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 December 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2008 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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Morgans Hotel Group Co. is the parent company of Complainants, Morgans Group LLC, Mondrian Holdings, LLC, and Beach Hotel Associates, LLC.
Beach Hotel Associates, LLC owns the Delano Hotel, and Mondrian Holdings, LLC owns the Mondrian Hotel.
Complainants registered the DELANO mark with the United States Patent and Trademark Office (“USPTO”) on November 25, 1997 (Reg. No. 2,115,849), with the European Union Office for Harmonization in the Internal Market (“EUOHIM”) on October 13, 2000 (Reg. No.865,287), and with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,168,813).
Complainants registered the MONDRIAN mark with the USPTO on January 19, 1999 (Reg. No. 2,219,088).
Respondent has never been authorized by Complainant to use
Respondent is not commonly known by the disputed domain names.
Respondent registered the <delano.mobi> and <mondrian.mobi> domain names on September 27, 2006.
<delano.mobi> domain name previously
resolved to a website where Internet users could perform Google searches and
links to various sites including
The <mondrian.mobi> domain name also previously resolved to a website where Internet users could perform Google searches and links to unrelated websites and MONDRIAN real estate listings.
Respondent benefited commercially from these web sites by receiving “click-through” fees.
After Complainant initiated this Complainant, Respondent removed the original websites and replaced them with inactive websites.
<mondrian.mobi> domain names are identical to Complainant’s
Respondent does not have any rights or legitimate interests in the <delano.mobi> and <mondrian.mobi> domain name.
Respondent registered and used the <delano.mobi> and <mondrian.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are substantively identical 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 names; and
(3) the same domain names were registered and are being used in bad faith.
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 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. 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
It is undisputed that Complainant has registered the
The <delano.mobi> and <mondrian.mobi> domain names
incorporate Complainant’s entire marks and merely add the generic top level
domain name (“gTLD”) “.mobi.” They are substantivley
identical to the
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002): “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain names. Complainant must first present a prima facie case establishing that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant has met this initial burden, the burden shifts to Respondent to show that it nonetheless has rights to or legitimate interests in the disputed domains. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has made out a prima facie case pursuant to Policy ¶ 4(a)(ii). And, because Respondent has failed to respond to the Complaint herein, we may presume that Respondent lacks rights and legitimate interests in the disputed domain names. See 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.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the evidence of record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first observe that Complainant
contends, and Respondent does not deny, that Respondent has never been
authorized to use the
Furthermore, Complainant asserts, and Respondent does not deny, that Respondent has used the disputed domain names to host websites, which included links to unrelated sites and to those featuring Complainant’s products and services. Such use is not 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's purpose in selecting domain names was to cause confusion with a complainant's website and marks, its use of the names was not in connection with a bona fide offering of goods or services or any other fair use); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003): “Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”
Finally, it is undisputed that Respondent is currently using the <delano.mobi> and <mondrian.mobi> domain names to operate inactive websites. Such inactive use is also not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where a respondent advanced no basis on which a panel could conclude that it had a right or legitimate interest in domain names, and no commercial use of the domain names was established); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop a site demonstrates that a respondent had not established rights or legitimate interests in a domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously used the disputed domain names to redirect users to websites where links to other websites were displayed, including links to Complainant’s products and services. Complainant also alleges that Respondent benefited commercially by receiving “click-through” fees from these web sites. We conclude from the undisputed allegations of the Complaint that the disputed domain names were capable of creating confusion as to Complainant’s identity as a possible source, sponsor, affiliate or endorser of the websites that resolved from the disputed domain names. This use of the disputed domain names is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
We also conclude that Respondent’s unauthorized use of the disputed domain names stands as evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See, for example, S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website competing with a complainant’s business); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002): “Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”
We further note the
undisputed evidence to the effect that, after receiving notice of this
Complaint, Respondent changed the content of its websites by removing the links
to competing goods and services. This
current use also constitutes bad faith registration and use pursuant to Policy
¶ 4(a)(iii) because Respondent is not actively using
the disputed domain names. See DCI
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <delano.mobi> and <mondrian.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 28, 2008
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