HLT Domestic IP LLC v. BORIS CHEVKOV / MACKY TONG
Claim Number: FA1405001558971
Complainant is HLT Domestic IP LLC (“Complainant”), represented by Carla H. Clements of Alston & Bird LLP, North Carolina, USA. Respondent is BORIS CHEVKOV / MACKY TONG (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hiltonhotel-kl.com> and <hiltonhotels-kl.com>, registered with eNom, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 14, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hiltonhotel-kl.com and postmaster@hiltonhotels-kl.com. Also on May 16, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
a) Complainant is a global leader in the hospitality industry, owning, managing, or franchising 4,000 hotels, resorts, and other temporary accommodations in more than 90 countries around the world. Complainant has been in business since at least 1925. Complainant has six hotels located in Malaysia, with one located in Kuala Lumpur.
b) Respondent is using the disputed domain names to engage in a fraudulent scheme that purports to offer employment opportunities at the Hilton Kuala Lumpur to job seekers. Respondent’s communications with job seekers originate from an email address connected to the disputed domain names, and Respondent has set the disputed domain names to resolve to Complainant’s actual webpage for the Hilton Kuala Lumpur. Respondent posts openings on various job seeking websites, represents itself as a human resources person for Complainant, and sends the job seekers employment application forms. After offering the job seekers a position, Respondent extracts money from them, which the job seekers are told is for travel accommodations for which they will be reimbursed upon beginning employment. At least six individuals have fallen victim to Respondent’s scheme. See Complainant’s Exhibit H-J.
c) Complainant has rights in the HITLON mark, used in connection with hotel services. Complainant owns registrations for the HITLON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,172 registered February 27, 1968).
d) Respondent’s <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names are confusingly similar to Complainant’s HILTON mark. The disputed domain names incorporate Complainant’s mark in its entirety while adding the generic term “hotel” or “hotels” and the geographic identifier “kl,” which stands for Kuala Lumpur.
e) Respondent does not have any rights or legitimate interests in the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names.
a. Respondent has no connection or affiliation of any kind with Complainant, and Complainant has not authorized Respondent to use its HILTON mark in any way.
b. Respondent is attempting to pass itself off as Complainant as part of a fraudulent marketing scheme designed to deceive job seekers into paying money for job opening that do not actually exist.
f) Respondent registered and is using the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names in bad faith.
a. Respondent is operating a fraudulent scheme to extract money from job seekers by posing as a human resources person for Complainant’s Kuala Lumpur hotel. Respondent uses an email address connected to the disputed domain names and resolves the domain names to Complainant’s actual webpage for the Kuala Lumpur hotel.
B. Respondent
a) Respondent did not submit a response in this proceeding.
b) The Panel notes that Respondent registered the <hiltonhotel-kl.com> domain name on September 29, 2013 and the <hiltonhotels-kl.com> domain name on December 4, 2013.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the (1) <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names are nearly identical, differing by only one letter, (2) the disputed domain names are both used to redirect Internet users to the webpage of the Hilton.com website for the Hilton Kuala Lumpur hotel, (3) both disputed domain names are registered through the same registrar, eNom, Inc., (4) both disputed domain names prior to filing were protected by the same privacy service, and (5) the fax numbers listed in the WHOIS records are the same false facsimile number (5555555555) with the only difference being that one beings with a “+1” and the other with a “+7.”
It is of the Panel’s view that the consolidation of the disputed domain names against multiple respondents should be allowed where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In circumstances indicating that a single person or entity has registered multiple domain names using fictitious names, common control or ownership has been found. See Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188.
Previous panels have rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587.
Previous Panels have also found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”. CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites).
The Panel notes that the disputed domain names are both used to redirect Internet users to the webpage of the Hilton.com website for the Hilton Kuala Lumpur hotel, both disputed domain names prior to filing were protected by the same privacy service, and the fax numbers listed in the WHOIS records are the same false facsimile number (5555555555) with the only difference being that one beings with a “+1” and the other with a “+7.”
Given the circumstances above, the Panel finds that (i) the disputed domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation of all of the disputed domain names into the current proceedings would be fair and equitable to all parties. Accordingly, the Panel believes that Complainant has sufficiently presented evidence demonstrating that the disputed domain names are commonly controlled by a single Respondent who is using multiple aliases. Therefore, the Panel determines to permit the consolidation of all the disputed domain names against multiple respondents in the current proceedings.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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."
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:
(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.
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 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.”).
Complainant claims it has rights in the HITLON mark, used in connection with hotel services. Complainant states it owns registrations for the HITLON mark with the USPTO (e.g., Reg. No. 845,172 registered February 27, 1968). The Panel notes that the WHOIS record for the <hiltonhotel-kl.com> domain name lists Respondent’s country of operation as Russia, and the <hiltonhotels-kl.com> domain name lists Respondent’s country of operation as the United States. Regardless, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant owns a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the HILTON mark pursuant to Policy ¶ 4(a)(i) because Complainant holds registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names are confusingly similar to Complainant’s HILTON mark. Complainant observes that the disputed domain names incorporate Complainant’s mark in its entirety while adding the generic term “hotel” or “hotels” and the geographic identifier “kl,” which is an abbreviation for Kuala Lumpur, Malaysia. The Panel notes that both disputed domain names also include a hyphen and the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Next, the Panel finds that the addition of a geographic identifier to a trademark in a disputed domain name does not negate a finding of confusing similarity. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Further, the Panel finds that the addition of a hyphen and a gTLD are irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names are confusingly similar to Complainant’s HILTON mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent does not have any rights or legitimate interests in the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names. Complainant states that Respondent has no connection or affiliation of any kind with Complainant, and Complainant has not authorized Respondent to use its HILTON mark in any way. The Panel notes that the WHOIS record for the <hiltonhotel-kl.com> domain name lists “BORIS CHEVKOV” as the domain name registrant, and the WHOIS record for the <hiltonhotels-kl.com> domain name lists “MACKY TONG” as the domain name registrant. The Panel also notes that, based on Complainant’s contentions, it appears that Respondent is known by an email address connected to either one or both of the disputed domain names. However, even in such situations, past panels have looked to all the evidence on record in determining whether a respondent is in fact commonly known by a disputed domain name. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”). Therefore, the Panel finds that Respondent is not commonly known by the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names under Policy ¶ 4(a)(ii) based on the entirety of the information on record.
Complainant claims Respondent is attempting to pass itself off as Complainant as part of a fraudulent marketing scheme designed to deceive job seekers into paying money for job opening that do not actually exist. In PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014), the respondent was using an email address connected to the <ceo-pinebridge.com> domain name to persuade consumers to engage in financial and investment activities. The respondent used to email address to obtain information and documents from consumers, including passports and bank account information. There, the panel determined that the respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Here, Respondent is using a similar scheme to obtain funds from victims who believe they are paying for travel accommodations to Kuala Lumpur where they will begin working for Complainant. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is operating a fraudulent scheme to obtain money and information.
Complainant contends that Respondent registered and is using the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names in bad faith. Complainant asserts that Respondent is operating a fraudulent scheme to extract money from job seekers by posing as a human resources person for Complainant’s Kuala Lumpur hotel. Respondent uses an email address connected to the disputed domain names and resolves the domain names to Complainant’s actual webpage for its hotel located in Kuala Lumpur. Such schemes have been found to violate Policy ¶ 4(b)(iv) regarding bad faith via attraction for commercial gain. See PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014) (“[r]espondent is trying to confuse Internet users into believing that Respondent is in fact the CEO of [c]omplainant’s business, when it is not. The [p]anel finds that using a disputed domain name to attract Internet users to a website by confusing them as to the [c]omplainant’s affiliation with [r]espondent’s disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv)”). Therefore, the Panel finds Respondent registered and is using the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is operating a fraudulent scheme in which Respondent creates the false impression that it is affiliated with Complainant in an effort to extract money and information from job seekers.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hiltonhotel-kl.com> and <hiltonhotels-kl.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 23, 2014
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