Radisson Hotels International, Inc. v. Uee Gleb
Claim Number: FA0811001233302
Complainant is Radisson Hotels International,
represented by Elizabeth C. Buckingham, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radissonescort.com>, registered with Estdomains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2008.
On November 21, 2008, Estdomains, Inc. confirmed by email to the National Arbitration Forum that the <radissonescort.com> domain name is registered with Estdomains, Inc. and that the Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, Inc. 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 November 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 15, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by email.
Respondent’s Response was received in electronic copy on November 28, 2008; however no hard copy was received prior to the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
On December 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On December 19, 2008 the National Arbitration Forum received Complainant’s additional submission in a timely manner according to Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant bases this Complaint on its RADISSON service mark which past UDRP decisions have characterized as both a famous and well known service mark. The RADISSON mark has been used in connection with hotel services offered by Complainant or its predecessors since at least 1909, and is still used for hotel, resort, and related services around the globe. The RADISSON mark is identified solely and exclusively with Complainant, a unit of Carlson Hotels Worldwide and a subsidiary of Carlson Companies, Inc.
Complainant is the owner of the United States Registration No. 920,862 for the RADISSON mark for the multiple services. Complainant owns approximately 250 pending applications or issued registrations throughout the world that consist of or contain the RADISSON mark. Complainant and its affiliates also own over 600 domain name registrations containing the RADISSON mark.
This proceeding concerns
the <radissonescort.com> domain name, registered by Respondent on
February 14, 2008. The domain name resolves to a website promoting an escort
service based in
The Complaint arises out of the bad faith registration and use by Respondent of <radissonescort.com>, which is identical or confusingly similar to the distinctive and famous RADISSON service marks and the numerous RADISSON domain names owned and used by Complainant.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered a domain name that is identical to Complainant's famous RADISSON mark with actual or constructive knowledge of Complainant's mark and is using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site. The at-issue domain name creates a likelihood of confusion with the Complainant's mark. Respondent's domain name registration and the website to which it resolves amounts to "pornosquatting," and such use is likely to tarnish or dilute Complainant's famous RADISSON mark.
Complainant currently operates a
RADISSON hotel in
Due to Complainant's extensive use and promotion in connection with hotels around the world, the term RADISSON has become associated exclusively with Complainant as its service mark and has no independent dictionary meaning. Therefore, Respondent has no reason to choose this name except to create an impression of an association with or to trade off of the goodwill of the Complainant.
Respondent is not a licensee or subsidiary of Complainant. Respondent has never been authorized to use Complainant's mark. Complainant's prior rights in the mark precede Respondent's registration of the domain name; and Respondent is not commonly known by the domain name in question.
Respondent is not making a legitimate noncommercial or fair use of the domain name and Respondent's domain name is likely to tarnish or dilute Complainant's mark by bringing the RADISSON mark into association with adult escort services.
The term RADISSON is not a descriptive word in which Respondent might have a claim to rights or use. Respondent's only connection with the RADISSON mark has been its registration and use of the disputed domain name, which does not demonstrate Respondent's rights under Paragraph 4(a)(ii) of the Policy.
Complainant asserts that Respondent registered and used the domain name in bad faith on several grounds. In sum, the notoriety of Complainant's RADISSON mark, Respondent's lack of any connection to Complainant, and the fact that Respondent registered a domain name that incorporates Complainant's RADISSON in its entirety all indicate bad faith.
First, in light of the
notoriety of Complainant's RADISSON mark, Respondent had actual or constructive
knowledge of such mark at the time of its registration. Registration with
actual or constructive knowledge of Complainant's marks is evidence of bad
faith pursuant to Paragraph 4(b) of the Policy. Even the most
perfunctory trademark or domain name availability search would have discovered
that Complainant had registered numerous trademarks and domain names
incorporating the RADISSON mark. Further, given that the Respondent is located
Respondent's decision to register a domain name that contains the RADISSON mark and the word "escort" results in the dilution of Complainant's famous RADISSON mark, while confusing Internet users as to the source or sponsorship of the <radissonescort.com> domain name. Finally, Respondent is using the RADISSON mark for its own commercial gain, through fees generated by the escort services offered on the website referenced by <radissonescort.com>. Nowhere on the actual website, other than in the domain name, is the term RADISSON used.
Respondent's registration also amounts to "pornosquatting." The RADISSON mark is used in connection with adult escort services, which are clearly commercial in nature. The risk of disparagement of the famous, highly-regarded RADISSON mark is greatly increased by the association of the RADISSON mark with the sale of sexual services, which are not legal in many, if not most, jurisdictions around the world.
Respondent contends as follows:
Respondent real name is Olga Radisson and that is why she named her web site Radisson Escort and bought domain name <radissonescort.com>. Complainant doesn’t provide sexual services only escort-dating service. Respondent only takes money from advertising on her web site. Respondent's father and grandfather have the surname “Radisson,” as well as Respondent. Respondent's passport shows that her real name is “Olga Radisson.”
C. Additional Submissions
In its additional submission Complainant contends as follows:
On November 28, 2008, "Olga Radisson" sent an email message to the dispute resolution provider. The case coordinator replied to "Olga Radisson." Respondent's email message should not be considered and the case should be decided solely on the basis of the Complaint.
The email from Respondent does not comply with ICANN UDRP or the dispute resolution provider's requirements. The dispute resolution provider invited "Olga Radisson" to send an email confirming that the November 28, 2008 email constituted her complete response or to submit a formal Response that is compliant with ICANN UDRP and the dispute resolution provider's requirements. Respondent did not reply nor was a formal Response filed by the deadline. The email from Respondent does not comply with ICANN Rule 5(b), and no weight should be given. Accordingly, the Panel should consider the merits of this case based solely on the Complaint and enter a default judgment against Respondent.
The party who sent the email message to the dispute resolution provider has no standing to respond even if the panel exercises its discretion and considers the email from Olga Radisson; the party who sent the email is not the Respondent, and therefore, has no standing to file a Response. The WHOIS information for the disputed domain name in this case identifies Uee Gleb as the domain name registrant. Therefore, the proper Respondent in this proceeding is Uee Gleb, not "Olga Radisson."
Even if Respondent satisfies the standing requirement or if the Panel considers the Olga Radisson email, Respondent has no rights or legitimate interests in Complainant's mark. Respondent cannot satisfy any of the UDRP circumstances, even assuming the email is considered. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using the website referenced by the disputed domain name to promote and solicit customers for an escort service. Nowhere on the website does the term RADISSON appear except in the domain name and in the website header at the top of the page.
The improper third-party respondent "Olga Radisson" alleges that: "My real name is Olga Radisson[. T]hat's why I named my web site Radisson Escort and bought domain name radissonescort.com.... Also my farther [sic] and grandfather have surname Radisson too.... [W]e have these surname more than 150 years!" Notwithstanding such claims, there is no mention of the proper Respondent Gleb's association with the alleged Radisson family. Accordingly, Complainant reasserts that Respondent had no reason to incorporate the RADISSON mark in the domain name except to create an impression of an association with or to trade off of the goodwill of the Complainant. Accordingly, the Panel should draw the inference that Respondent chose the disputed domain name based on Complainant's famous RADISSON trademark.
Given that "Olga Radisson" is not the proper respondent and has not demonstrated or alleged beneficial ownership of the domain name, her allegation that Radisson is her given surname does not have any bearing on this matter. Gleb is presumably the surname of the proper Respondent and there is no indication that Uee Gleb is currently or has ever been known by the name RADISSON.
While in some circumstances, panels have denied transfer of a domain name that contains or consists solely of a Respondent's surname, the common thread among these cases is that the domain name was used solely for non-commercial purposes such as creating family email addresses or a website devoted to the registrant's family or Respondent was able to demonstrate interest in the disputed domain name in that it is his surname and he has been using the name in connection with a business for several years prior to the dispute. No similar circumstances exist here.
"Olga Radisson" also admits that the <radissonescort.com> site is used for purely commercial gain. She admits that she only takes money from advertisements thus she is using the domain name for commercial gain and in a manner that tarnishes Complainant's famous mark. Therefore, Respondent has no legitimate interest in the domain name.
Finally, Complainant contends in its additional submission that from a pure policy standpoint, if the Panel were to accept "Olga Radisson's" surname defense, then future Respondents will be empowered to lodge a surname defense after-the-fact in virtually any like UDRP proceeding by finding a person with the same surname and then posing as that person for purposes of defending the UDRP.
Complainant has rights in a trademark which is confusingly similar to the at-issue domain name.
The only response to the Complaint was submitted by someone other than the nominal registrant.
Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent/registrant registered and is using the domain name in bad faith.
There is no credible evidence in support of denying the Complainant’s request to transfer the domain name.
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 canceled 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.
As a preliminary matter the Panel considered that the Response is formally defected in that there was no timely hard copy and further that the responding party was not the nominal registrant. However, the Panel nevertheless recognizes the informal response in view of the maxim that “the law abhors a default” and thereby relaxes the fact that this proceeding is primarily administrative in nature. See for example Garces v. Bradley, 299 A.2d 142, 144 (D.C. 1973) (recognizing well-settled rule that the "law abhors a default, and the corollary of the rule [is] that dispositions on the merits are favored"). Also see, J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant demonstrates that it has trademark rights in its RADISSON mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 920,862, issued on September 21, 1971). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <radissonescort.com> domain name is confusingly similar to Complainant's RADISSON mark. The <radissonescort.com> domain name differs from Complainant’s mark only in that the term “escort” has been added to the end of the mark; and that the generic top-level domain (gTLD) “.com” is thereafter appended. It is well settled that the addition of a descriptive term such as “escort” does not sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business). Likewise, it is a black letter rule in UDRP proceedings that the addition of .com, .net .org or the like gTLD is insufficient to distinguish a domain name from the mark it incorporates, since every domain name must include a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Additionally, the Respondent makes no contentions regarding this section of the Policy thereby admitting by silence that it agrees with Complainant’s position.
Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists Respondent as “Uee Gleb” despite Respondent’s contentions that the real Respondent is “Olga Radisson.” Complainant has not authorized Respondent to use its RADISSON mark. The self-serving contention by “Olga Radisson” that she is the real party in interest is given little or no weight and Complainant offers evidence that Respondent is using the disputed domain name for a website that among other things displays pay-per-click advertising links targeting Internet users likely seeking Complainant’s mark. Therefore, Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name. The burden thus shifts to Respondent to come forward with concrete evidence of its rights or legitimate interest in the domain name. See, e.g., GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007).
Respondent, ostensibly through the email response of Olga Radisson, contends that it has rights or interests in the disputed domain name because RADISSON is the real registrant’s surname and that she is using the domain name solely to identify herself as the source of services connected with the at-issue domain name. As mentioned above, the email bearing the self-serving after-thought that someone with the surname RADISSON is the real party in interest is tenuous. The slight “evidence” reviewed in favor of the Respondent's position is easily fabricated and as Complainant points out, a finding in favor of Respondent given the character and weight of the evidence presented here would invite fraud in virtually every UDRP proceeding. Therefore, the Panel finds that the emailed story is contrived and that it is more likely than not that the nominal registrant registered and uses the at-issue domain name because of the notoriety of Complainant's mark, rather than in spite of it.
Likewise, Respondent’s contention that the <radissonescort.com> domain name was registered for the purpose of advertising the Respondent's business is ineffective to demonstrate Respondent's rights or interest in the at-issue domain name. Respondent claims that because the disputed domain name describing Respondent’s business is used to advertise Respondent’s business, Respondent is thereby using the <radissonescort.com> domain name for a bona fide offering of goods or services under Policy ¶4(c)(i). However, such use of the <radissonescort.com> domain name is neither a bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the foregoing, Respondent fails to meet its burden to demonstrate rights or legitimate interest in the disputed domain name and the Panel concludes that Respondent has no rights or interest therein.
Respondent runs an escort service at a website referred by the disputed domain name. Respondent likely commercially gains by diverting some number of Internet users searching for Complainant’s business to Respondent’s website. Without having any right to use Complainant's mark, this activity demonstrates Respondent's use of the disputed domain name for commercial gain by exploiting a likelihood of confusion with Complainant’s mark. Pursuant to Policy ¶ 4(b)(iv), it shows Respondent’s registration and use of the disputed domain name is in bad faith. 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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radissonescort.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M, DeCicco, Panelist
Dated: Dec 30, 2009
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