Loew’s Hotels, Inc. v. Yabani Eze / Sugarcane Internet Nigeria Limited
Claim Number: FA2005001898224
Complainant is Loew’s Hotels, Inc. (“Complainant”), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is Yabani Eze / Sugarcane Internet Nigeria Limited (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workdayloewshotel.com>, registered with Sav.com, LLC.
The undersigned certifies that he 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2020; the Forum received payment on May 29, 2020.
On June 2, 2020, Sav.com, LLC confirmed by e-mail to the Forum that the <workdayloewshotel.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 June 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2020 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@workdayloewshotel.com.
Also on June 4, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 disputed domain name <workdayloewshotel.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the LOEWS trademark acquired through its ownership of its portfolio of trademark registrations described below, the earliest of which was issued in 1990, and its use of the mark by its predecessors, and affiliated companies since 1962.
Complainant alleges that the disputed domain name <workdayloewshotel.com> is nearly identical and confusingly similar to Complainant’s registered marks arguing that the disputed domain name includes the entirety of the LOEWS mark with the addition of the terms “workday” and “hotel”.
Complainant submits that the word “workday” refers to Complainant’s own domain name <workday.loewshotels.com>, which is a website used by Complainant for human resource management, benefits and absence administration, payroll, and for recruiting purposes. The website to which Complainant’s <workday.loewshotels.com> resolves is the primary system of record for all personal information including compensation, benefits, social security numbers, and direct deposit information, and is accessed by Complainant’s team members and managers regularly.
Complainant submits that the addition of the term “workday,” does not distinguish the disputed domain from the Complainant’s LOEWS mark. See Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (Panel was “satisfied that ‘workday’ is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark.)
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that on information and belief, Respondent is not commonly known by the disputed domain name <workdayloewshotel.com>.
Complainant asserts that Respondent is neither an agent nor a licensee of Complainant, and therefore has no right to the use of the LOEWS marks or any variants in its domain name.
Complainant further claims the exclusive right to the use of LOEWS in an Internet domain name by virtue of Complainant’s registered trademark rights. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (finding Complainant had rights in the ALIBABA mark through registration with trademark authorities in numerous countries around the world).
Complainant submits that Respondent registered the disputed domain name <workdayloewshotel.com> more than fifty years after the mark LOEWS was first used by Complainant, and nearly thirty years after the mark was first registered with the U.S.P.T.O.
Complainant adds that the disputed domain resolves to a website that solely includes links to third-party websites and submits that there is no evident intention of use for the website to offer any bona fide offering of goods or services.
Complainant argues that because the disputed domain name is identical or confusingly similar to Complainant’s mark and Respondent is not licensed to use the mark, the burden shifts to Respondent to establish some right or legitimate interest. See, e.g., Retail Royalty Company and AEO Management Co. v Above.com Domain Privacy, No. 1357326 (Forum Dec. 16, 2010) (“Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain names under Policy).
Complainant submits that Respondent cannot meet its burden to demonstrate any legitimate rights to the domain name or show that, before any notice of the dispute, it used the disputed domain name in connection with a bona fide offering of goods or services.
Complainant submits that the disputed domain name was registered in bad faith, arguing that given the distinctiveness of the disputed domain name and its similarity to Complainant’s domain <workday.loewshotels.com>, Respondent had constructive, if not actual notice of the Complainant’s mark and website prior to registering the disputed domain name. ESPN, INC. v. Sonjoy Sutradhor, FA 1819948 (Forum Jan. 4, 2019). (“…it is evident (i) from the world-wide fame and notoriety of Complainant’s ESPN mark, (ii) from the fact that that mark was incorporated verbatim into the Domain Name, and (iii) from the fact that Respondent’s web site ultimately offers the same type of services and sports programming offered by Complainant that Respondent had actual knowledge of Complainant’s mark…when he registered the Domain Name.”).
Complainant submits that it is evident here, that Respondent mimicked Complainant’s existing domain <workday.loewshotels.com> hosting human resources and employment information of Complainant’s employees in creating the disputed domain name <workdayloewshotel.com>.
Complainant argues that because of its similarity with Complainant’s own website, visitors to Respondent’s website would assume that the website to which the disputed domain name resolves is affiliated with Complainant, and so, visitors would be more inclined to click on the third-party links available on Respondent’s website.
Complainant adds that such use could perhaps deceive users to enter or disclose personal information to websites not affiliated with Complainant. Any dissatisfaction with Respondent’s web site, or the services offered on the linked sites, would reflect upon and irreparably damage Complainant’s valuable and hard-earned reputation and goodwill associated with its LOEWS marks. This disruption of Complainant’s business is additional evidence of bad faith registration and use. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (“Generally, there is no restriction on what constitutes a disrupting of a Complainant’s business, and using a confusingly similar domain name to disrupt a complainant’s business can evince bad faith registration and use under Policy ¶ 4(b)(iii).”).
Complainant states that its agents attempted to contact Respondent through the Registrar and through the registrant’s email information provided in the WHOIS database, in an attempt to resolve this dispute without the time and resources required in an arbitration proceeding, but Respondent made no response to that outreach.
Complainant further submits that visitors to the website to which the disputed domain name <workdayloewshotel.com> resolves are likely to believe that the website and its content are sponsored, controlled or approved by Complainant.
For all the foregoing reasons, the domain name should be considered as having been registered and used in bad faith, in violation of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates resorts and hotels using the LOEWS trademark and is the owner of an international portfolio or registrations including the United States, Canada, the European Union and the United Kingdom. The earliest registrations relied upon by Complainant include the following:
· United States registered service mark LOEWS, registration number 1,601,550, registered on June 12, 1990 on the Principal Register for services in international class 42;
· United States registered service mark LOEWS, registration number 5,356,103 registered on January 13, 2009 on the Principal Register for services in international classes 35, 39, 41, 43, 44 and 45;
· United States registered trademark LOEWS (design) registration number 3,807,648, registered on the Principal Register on June 22, 2010 for services in international classes 35, 41, 43, and 44.
Complainant has an established Internet presence and maintains websites to which its domain names including <loews.com> and <loewshotels.com>.
The disputed domain name <workdayloewshotel.com> was registered on April 16, 2020 and resolves to a webpage with links to other websites identified as “Online HR and Payroll System”, “Employee Benefits Management System”, “New Employee Onboarding Software” and “Remote Working Tools”.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the FORUM for the registration details of disputed domain name. Respondent availed of privacy service to conceal his identity on the published WhoIs.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced uncontested, clear and convincing evidence that it has rights in the LOEWS trademark established through its ownership of the abovementioned registered service mark and its use of the mark in its hotel and resort services including on its websites.
The disputed domain name <workdayloewshotel.com> consists of the entirety of Complainant’s LOEWS in combination with the terms “workday” and “hotel” and the <.com> gTLD extension.
Complainant’s mark is the dominant and only distinctive element in the disputed domain name. In the context of this Complaint, the elements “workday” and “hotel” are descriptive and generic and the <.com> gTLD extension would be understood to be a technical necessity with no distinctive character.
In these circumstances this Panel finds that the disputed domain name is confusingly similar to the LOEWS mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that on information and belief, Respondent is not commonly known by the disputed domain name <workdayloewshotel.com>; that Respondent is neither an agent nor a licensee of Complainant, and therefore has no right to the use of the LOEWS marks or any variants in its domain name; that Complainant owns the exclusive right to the use of LOEWS in an Internet domain name by virtue of Complainant’s registered trademark rights; that Respondent registered the disputed domain name <workdayloewshotel.com> more than fifty years after the mark LOEWS was first used by Complainant, and nearly thirty years after the mark was first registered with the U.S.P.T.O.; and that the disputed domain resolves to a website that solely includes links to third-party websites; that there is no evident intention of use for the website to offer any bona fide goods or services.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel finds that on the evidence adduced and on the balance of probabilities that the registrant of the disputed domain name had actual notice of the Complainant’s mark and the website that Complainant has established to manage its human resources aspect of its business when the disputed domain name was chosen and registered.
The similarity of the disputed domain name and Complainant’s domain name shows that the disputed domain name was registered with Complainant’s name, mark and domain name in mind.
This Panel finds therefore that the disputed domain name was registered in bad faith to target and take predatory advantage of Complainant, is business and its rights.
Furthermore, this Panel accepts Complainant’s submission that the disputed domain name is being used in bad faith. Internet users coming across the website to which the disputed domain name resolves would assume that the website to which the disputed domain name resolves is affiliated with Complainant and any dissatisfaction with Respondent’s web site, or the services offered on the linked sites, would reflect upon and damage Complainant’s valuable reputation and goodwill associated with its LOEWS marks.
The risk of such confusion among Internet users is enhanced by the intentional similarity between the disputed domain name and Complainant’s own corporate domain name <workday.loewshotels.com>.
As visitors to the website to which the disputed domain name <workdayloewshotel.com> resolves are likely to believe that the website and its content are sponsored, controlled or approved by Complainant, this Panel finds that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded also in the third and final element of the test in Policy ¶ 4(a)(ii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <workdayloewshotel.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: June 26, 2020
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