Ian Schrager Hotels, L.L.C. and Beach
Hotel Associates Limited v. Jay Taylor
Claim Number: FA0307000173369
PARTIES
Complainants
are Ian Schrager Hotels, L.L.C. and Beach Hotel Associates Limited, New
York, NY (“Complainant”) represented by Ariana
G. Voigt of McDermott, Will &
Emery. Respondent is Jay Taylor,
Fort Lauderdale, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <paramounthotelnewyork.com>,
<paramounthotelnyc.com> and <delanohotelsouthbeach.com> registered
with Intercosmos Media Group, Inc. d/b/a Directnic.com.
PANEL
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.
Jeffrey
M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainants
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 25, 2003; the Forum received a hard copy of the
Complaint on July 28, 2003.
On
July 28, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain names <paramounthotelnewyork.com>,
<paramounthotelnyc.com> and <delanohotelsouthbeach.com> are
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
August 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 27,
2003 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@paramounthotelnewyork.com, postmaster@paramounthotelnyc.com
and postmaster@delanohotelsouthbeach.com by e-mail.
A
timely Response was received and determined to be complete on August 27, 2003.
Complainants
submitted a timely and complete Additional Submission on September 2, 2003.
On
September 9, 2003, an Additional Submission was timely received from Respondent
and determined to be complete.
On September 11, 2003, pursuant to Complainants’ request
to have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey M.
Samuels as Panelist.
RELIEF SOUGHT
Complainants
request that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainants
Complainant
Ian Schrager Hotels, LLC ("ISH") is an internationally known, premier
hotel company. ISH, through various
affiliated entities, owns several world-famous hotels, including the Paramount
in New York City and the Delano in Miami Beach. The Paramount opened in 1990, and Complainants have used the mark
PARAMOUNT in connection with hotel and restaurant services since at least the
hotel's opening. The Delano Hotel
opened in 1995. The mark DELANO, owned
by Complainant Beach Hotel Associates Limited Partnership, of which ISH is the
managing member, is the subject of U.S. Trademark Registration No.
2,115,849. The registration certificate
indicates that the mark was first used in commerce in connection with hotel
services in June 1995.
According
to Complainants, Respondent is using the disputed domain names in connection
with hotel reservation websites.
Complainants
contend that each of the domain names fully incorporates and is confusingly
similar to Complainants' marks, insofar as each name consists entirely of
either Complainants' DELANO or PARAMOUNT mark along with generic terms.
Complainants
further argue that Respondent has no rights or legitimate interests in the
domain names. According to
Complainants, despite Respondent's contention to the contrary, Complainants
have not consented to Respondent's use of the domain names in dispute. Finally, Complainants maintain that
Respondent is not commonly known by any of the domain names and is not making a
legitimate noncommercial or fair use of the names.
With
respect to the issue of "bad faith" registration and use,
Complainants insist, inter alia, that Respondent has engaged in a
"pattern of conduct" in order "to prevent the owner of the
trademark[s] from reflecting the mark in corresponding domain name[s]” in
violation of paragraph 4(b)(ii) of the Policy; that Respondent's registration
of the domain names has disrupted the legitimate business of ISH and its
ability to conduct its own hotel reservation services with registered and
authorized travel agencies in violation of paragraph 4(b)(iii) of the Policy;
and that Respondent has "intentionally attempted to attract, for
commercial gain, internet users to [its] web site . . . by creating a
likelihood of confusion with the Complainants' mark[s] as to source, sponsorship,
affiliation, or endorsement of [its] web site" in violation of paragraph
4(b)(iv) of the Policy.
B.
Respondent
Respondent
asserts that it used the disputed domain names as an Iatan-authorized travel
agent on behalf of Complainants, among others, and that ISH has compensated
Respondent for its hotel reservation services through the payment of commission
checks. According to Respondent, its agents simply take a customer's credit
card and other information and forward that information to the reservation clerk
at the Paramount and Delano hotels.
Respondent
emphasizes that a consumer assessing any of the disputed sites sees several
lines of text that read, "This site is operated by Net411.com and owned by
a travel agent, 10735712." The
site located at the <delanohotelssouthbeach.com> domain name also
contains a link to the Ian Schrager Official site. Moreover, according to Respondent, when its customers call
Respondent's agents, the agents never represent themselves as anything but
Respondent's agents for <hotel411.com> and the disputed sites do not
contain images from Complainants' sites.
Respondent further maintains that 70% of its customers that access the
disputed domain names do so only after first searching for "hotels in New
York." Respondent also notes that
a search for "Paramount Hotel" in "Google" on August 26,
2003, revealed the existence of other "Paramount" Hotels having no
connection with Complainants.
Respondent
argues that it has rights and legitimate interests in the domain names in issue
in that Complainants consented to Respondent's use of the domain names until
late 2002, and in view of the fact that Respondent spent nearly one year and
thousands of dollars creating the disputed sites. Respondent further maintains that it is commonly known by the
domain names and that it is making a legitimate commercial and fair use of the
names.
On
the issue of "bad faith" registration and use, Respondent asserts
that its registration of the disputed domain names has provided additional
positive exposure for Complainants' hotels.
Respondent concedes that it has "intentionally attempted to
attract, for commercial gain," internet users to its websites by creating
a network of city-specific hotel directories.
C.
Additional Submissions
In
their Additional Submission, Complainants note that Respondent does not argue
that the domain names are not confusingly similar to Complainants' marks and
contend that evidence that about one-third of Respondent's customers arrive at
its websites after searching the terms "Paramount" and
"Delano" demonstrates actual confusion.
Complainants
further maintain that Respondent's travel agent status offering reservation
services for Complainants' hotels does not give Respondent the right to use
Complainants' marks in a domain name.
They also insist, contrary to Respondent's assertion, that they have
never authorized or consented to Respondent's use of the disputed domain names
and never authorized Respondent to register the domain names. The Additional Submission includes a declaration
of James Schultenover, the chief marketing officer of ISH, to the effect that
ISH does not have any specific contractual relationship with Respondent, that
Respondent was not, and has never been, authorized to register and maintain the
domain names in dispute, and that Respondent was not, and has never been,
authorized to offer reservation services for ISH under the domain names.
With
respect to the "bad faith" issue, Complainants argue that
Respondent's assertion that it has "intentionally attempted to attract,
for commercial gain, internet users to Respondents websites by creating a
network of city specific hotel directories" is "exactly the type of
behavior prohibited by the Lanham Act."
Moreover, Complainants contend that each of the disputed sites provides
links to information and reservation services for hotels in competition with
Complainants. They further allege that
Respondent may be found in violation of the applicable Policy even if he assisted
in providing additional exposure to Complainants' hotels and even if
Complainants benefited from the services offered at the disputed sites. Finally, Complainants maintain that
Respondent's use of such phrases as "this site brought to you by the hotel
people at Hotel411.com" or "this site operated by Net411.com"
does not prevent a finding of bad faith, since such statements do not avoid
initial interest confusion.
In
his Additional Submission, Respondent argues that the disputed sites cannot
cause confusion because they are clearly marked, that he and his employees have
always acted in good faith, that he registered the domain names in dispute
before Complainants had any websites, and that, as a result, he, not
Complainants, is known by the domain names.
FINDINGS
Upon review of all the evidence, the
Panel finds that the disputed domain names are confusingly similar to marks in
which Complainants have rights; that Respondent has no rights or legitimate
interests in respect of the domain names; and that Respondent registered and
used the domain names in bad faith.
DISCUSSION
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.
Complainants have established their
trademark rights in the PARAMOUNT and DELANO marks through registration in the
U.S. Patent and Trademark Office of the DELANO mark and through substantial use
of both marks. While the evidence
suggests some third-party use of the PARAMOUNT mark outside of New York City,
it is uncontroverted that Complainants have used such mark in connection with
hotel services in New York City since 1990.
It thus appears that the PARAMOUNT mark enjoys secondary meaning in the
New York City metropolitan area and that, as a result, Complainants possess
common law rights in the mark.
The disputed domain names clearly are
confusingly similar to Complainants’ marks.
The addition of the generic term “hotel” does not distinguish the domain
names from the marks, given its generic, and, thus, non-distinctive,
nature. See Marriott Int’l v. Café au lait, FA93670, Nat. Arb. Forum (Mar. 13,
2000) (finding that the Respondent’s domain name Marriott-hotel.com is
confusingly similar to Complainant’s MARRIOTT mark). Further, the addition of the non-distinctive geographic terms
“newyork,” “nyc,” and “southbeach” do not avoid a finding of confusing
similarity.
There is no demonstrable evidence to
support Respondent’s assertion that he is commonly known by the disputed domain
names and, as a result, such assertion must be rejected. See, e.g., Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (panel
transferred name to complainant because, although respondent claimed he was
known by the nickname "Red Bull," he provided no demonstrable
evidence of the nickname's use); Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eRes. Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to panel and respondent did not come forward
to suggest any right or interest he may have possessed).
While Respondent argues that he is making
a legitimate commercial and fair use of the disputed domain names, the
applicable Policy makes clear that only noncommercial use gives rise to
rights or legitimate interests.
Respondent’s principal argument with
respect to the issue of rights or legitimate interests appears to be that
Complainants “consented” to his registration of the domain names, presumably
through payment of commissions, and that Complainants have benefited from
Respondent’s activities through increased exposure and revenue as a result of
Respondent’s hotel reservation services.
However, prior panels have held, in similar situations, that such acts
constitute “classic trademark infringement, even if the ultimate result … is
that some revenue flows to the owner of the marks.” See, e.g., Gorstew
Ltd. v. Caribbean 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); DeLuxe Corp. v. Dallas Internet, FA
105216 (Nat. Arb. Forum Apr. 10, 2002) (finding respondent had no rights or
legitimate interests where it used the domain name deluxeform.com to redirect
users to complainant's deluxeforms.com domain name and to receive a commission
from complainant through its affiliate program); Ritz-Carlton Hotel Co., LLC v. Jtravel FA 105960 (Nat. Arb. Forum
Apr. 30, 2002) (finding no rights or legitimate interests in use of domain name
ritzcarltonhotels.com to promote travel and tour business). This Panel concurs with this position.
Moreover, the sworn declaration of ISH's
chief marketing officer establishes that Respondent was not, and has never
been, authorized to offer reservation services for ISH under the domain names.
The issue of "bad faith"
registration and use need not detain the Panel given Respondent's admission
that he has "intentionally attempted to attract, for commercial gain,
internet users to Respondent's web sites, by creating a network of city
specific hotel directories …as to reserve rooms for ISH in turn for a 10 to 15%
commission paid by ISH." Such action
constitutes evidence of the requisite bad faith under paragraph 4(b)(iv) of the
Policy. The fact that Respondent's
websites include such phrases as "this site brought to you by the hotel
people at Hotel411.com" or "this site operated by Net411.com"
does not avoid a finding of bad faith, given the initial interest confusion
generated through use of the disputed domain names. See Thomas &
Betts Int'l, Inc. v. Power Cabling Corp., AF-0274 (eRes. Oct. 23, 2000)
("initial interest confusion occurs when information may attract users who
are looking for a different web site, organization or product. While those users may rapidly realize that
the site is different from the one they were originally looking for, it is
possible that some users may simply remain at the site and never reach the
initially sought after site"); Paxton
Herald v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002)
(disclaimer on website irrelevant because of initial interest confusion); New York Times v. New York Internet Serv.
D2000-0172 (WIPO Dec. 5, 2000) (panel transferred domain name to trademark
owner even though respondent, who used domain name for criticism, had
disclaimers and redirected users to complainant's website); E & J Gallo Winery v. Spider Webs Ltd.,
286 F.3d 270 (5th Cir. 2002) (use of disclaimer on ernestandjuliogallo.com
website did not cure defendant's bad faith intent to profit).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paramounthotelnewyork.com>, <paramounthotelnyc.com> and <delanohotelsouthbeach.com>
domain names be TRANSFERRED from
Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: September 25, 2003