Loew’s Hotels, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2010001918085
Complainant is Loew’s Hotels, Inc. (“Complainant”), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loewshotelrelief.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2020; the Forum received payment on October 23, 2020.
On October 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <loewshotelrelief.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@loewshotelrelief.com. Also on October 27, 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 November 19, 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 be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the LOEWS, LOEWS HOTELS and LOEWS HOTELS & CO trademarks acquired through its ownership of the portfolio of registered trademarks described below and asserts that since at least 1962, Complainant, its predecessors, and affiliated companies, have continuously used LOEWS in connection with the services they offer, in signage and other materials at its hotels, and in advertisements in print and online, including on its website at <www.loewshotels.com>, as part of its company name, on its corporate letterhead, and in other promotional materials.
Complainant submits that the disputed domain name <loewshotelrelief.com> is nearly identical and confusingly similar to Complainant’s registered marks and with Complainant’s domain <loewshotelsrelief.com> which resolves to a website hosted by Complainant for the Loews Hotels Disaster Relief Fund providing qualified need-based disaster relief payments to employees facing financial hardship due to the ongoing COVID-19 pandemic.
Complainant submits that the disputed domain name is confusingly similar to its registered trademarks described below because it includes the LOEWS mark in its entirety with the addition of the term “relief” and the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant submits that the addition of the term “relief” and gTLD extension <.com> do not distinguish the disputed domain from the LOEWS marks. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Complainant adds that visitors to the website which the disputed domain name <loewshotelrelief.com> resolves are likely to believe that the website and its content are sponsored, controlled or approved by Complainant. Further increasing the risk of confusion is the fact that the disputed domain name is virtually identical to <loewshotelsrelief.com> which is the address of a webpage dedicated to Complainant’s COVID-19 Disaster Relief Fund.
Complainant submits that removing the letter “s” to make “hotel” singular does not distinguish <loewshotelrelief.com> from Complainant’s domain. See Belk Stores Services, Inc. v. Belks Media, FA 1222121 (Forum Nov. 21, 2008) (citing Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) in finding that a domain name which differs by only one letter has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain.
Complainant asserts that it has exclusive rights to the use of LOEWS and LOEWS HOTELS in an Internet domain name by virtue of the fact that Complainant and its affiliates have registered the trademark and domain name LOEWS alone and combined with generic terms for Complainant’s services, like “hotels.” See, e.g., 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 adds that Respondent is neither an agent nor a licensee of Complainant, and therefore has no right to the use of Complainant’s marks or any variants in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name <loewshotelrelief.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 asserts that upon information and belief, Respondent is not commonly known by the disputed domain name <loewshotelrelief.com>. The Registrar lists the registrant as “Domains by Proxy LLC.” This name bears no resemblance to the domain name and “UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.” ESPN, INC. v. Sonjoy Sutradhor, FA 1819948 (Forum Jan. 4, 2019); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as registrant of the disputed domain name). See Policy ¶ 4(c)(ii).
Complainant submits that the disputed domain name differs from Complainant’s LOEWS and LOEWS HOTELS marks by a single additional generic word in an apparent attempt to capitalize on users being led to believe that any domain name with “LOEWS” or “LOEWS HOTELS” is a site endorsed by Complainant.
Respondent is also relying on the possibility of a consumer misspelling or mistyping Complainant’s existing domain <loewshotelsrelief.com> to land on Respondent’s domain <loewshotelrelief.com>, and argues that the difference between the disputed domain name and Complainant’s domain name is only the single letter “s”.
Complainant alleges that this amounts to typosquatting which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Retail Royalty Company and AEO Management Co. v Above.com Domain Privacy, No. 1357326 (NAF, Dec. 16, 2010) (finding Respondent’s domain name that included common misspellings of Complainant’s mark to be typosquatting and further evidence that Respondent lacked rights and legitimate interests in its domain); Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Complainant argues that Respondent’s registration of the disputed domain name <loewshotelrelief.com> prevents valid use of the domain name by Complainant, and therefore wastefully restrains the legitimate and proper use of the disputed domain name and unlawfully tarnishes Complainant’s marks.
Complainant adds that Respondent’s registration of the disputed domain name prevents Complainant from using a domain name that users worldwide are likely to expect to be in use for Complainant’s own legitimate business purposes, given the nature of the <.com> gTLD, and the nearly identical nature of the disputed domain name and Complainant’s trademark.
Complainant further argues that Respondent cannot 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. See Policy, para. 4(c)(i). Prior to Complainant’s notice to Respondent regarding the infringing use of its marks, Respondent’s website featured generic links to third-party websites featuring hotels and hotel booking services .Complainant submits that Respondent likely received pay-per-click fees from the linked websites. See TD Ameritrade IP Company, Inc. v. Zhichao Yang, FA 1541053 (Forum Mar. 20, 2014) (holding that when a disputed domain resolves to a website featuring generic links to third-party websites, some of which are in direct competition with Complainant’s business, the Panel will presume that Respondent receives pay-per-click fees from these linked websites).
Complainant alleges that Respondent cannot demonstrate legitimate rights in the disputed domain name because Respondent is not making a legitimate, non-commercial use of the disputed domain name. See Policy ¶ 4(c)(iii). As of October 16, 2020, the domain redirects users to various different websites featuring businesses unrelated to Complainant.
Complainant submits that in these circumstances 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, FA 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 ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names.”).
Complainant concludes that Respondent cannot meet its burden to demonstrate any legitimate rights to the disputed domain name
Complainant alleges that the disputed domain name was registered and is being used in bad faith. Given the particularity of the disputed domain name and its similarity to Complainant’s domain <loewshotelsrelief.com>, Complainant alleges that Respondent had constructive, if not actual notice of the Complainant’s mark prior to registering the 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 alleges that it is evident here, that Respondent mimicked Complainant’s existing domain name <loewshotelsrelief.com> hosting information regarding the Loews Hotels’ COVID- 19 Disaster Relief Fund and the means to apply for such funds and argues that the identical nature of the disputed domain name and Complainant’s domain name evidences actual notice and thus bad faith registration and use of the disputed domain name <loewshotelrelief.com> by Respondent.
Complainant further submits that the disputed domain name resolved to a website that solely includes links to third-party websites, and currently, simply redirects users to various third-party websites. There is no evident intention of use for the website to offer any bona fide goods or services. Complainant argues that such use demonstrates use of the disputed domain name <loewshotelrelief.com> in bad faith. Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, fa 1557007 (Forum June 6, 2014) (finding Respondent’s use of domain <dtaples.com> in bad faith under Policy ¶ 4(b)(iv) because Respondent was using the disputed domain name to host third-party links from which Respondent is presumed to have obtained some commercial benefit).
Complainant alleges that visitors to Respondent’s website would assume that the website is affiliated with Complainant and its COVID-19 Disaster Relief Fund, which was established to provide need-based disaster relief payments to eligible employees who are facing financial hardship due to the COVID-19 pandemic.
Complainant’s website <loewshotelsrelief.com> provides the means for team members to submit their applications and personal information to be reviewed for funding approval. Visitors who are looking for <loewshotelsrelief.com> are already in a vulnerable state and seeking relief, and an infringing domain such as Respondent’s <loewshotelrelief.com> would take advantage of those who have misspelled or mistyped the domain while looking for Loews’ COVID-19 Disaster Relief Fund.
Complainant adds that on October 16, 2020, access to the website to which the disputed domain name resolves through an iPhone redirected to the website <topdefence-formob.com>. Visiting the website through a desktop browser redirects the user to the website <enchangvjh.info>. There is no evident intention of use for this website to offer any bona fide goods or services.
Complainant submits that the disputed domain name was purposefully created to confuse users to associate this website with Complainant’s business and then lure users to external websites. Respondent may have also registered this domain name to mislead users and enhance the value of the domain name so that it could be sold for a higher price, thus exploiting Complainant’s history and goodwill in its marks. Such use cannot confer legitimate rights in the disputed domain names.
In conclusion, Complainant refers to a copy of a letter exhibited in an annex to the Complaint sent by Complainant’s agents in an attempt to contact Respondent through the Registrar and through email information provided for the registrant of the disputed domain in the WHOIS database, in which Complainant endeavored to resolve this dispute without the time and resources required in an arbitration proceeding. Respondent made no response to that outreach.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides hotel and resorts services across the United States and Canada distinguish by the LOEWS service mark and is the owner of a number of service mark registrations and pending applications including the following which predate the registration of the disputed domain name:
· United States registered service mark LOEWS, registration number 1,601,550, registered on the Principal Register on June 12, 1990 services in international class 42;
· United States registered service mark LOEWS, registration number 3,561,103, registered on the principal register on January 13, 2009 services in international classes 35, 39, 41, 43, 44 and 45;
· United States registered service mark LOEWS HOTELS & CO ESTABLISHED 1960, registration number 5,974,860, registered on the Principal Register on February 4, 2020 for services in international class 43;
· United States registered service mark LOEWS HOTELS & CO, registration number 5,974,861, registered on the Principal Register on February 4, 2020 for services in international class 43,
Complainant has an established Internet presence and together with its affiliates owns a portfolio of Internet domain name registrations including the following: <loews.com>, <loewshotels.com>, and <loewshotelsrelief.com>.
Complainant has established a COVID-19 Disaster Relief Fund to provide need-based disaster relief payments to eligible employees who are facing financial hardship due to the COVID-19 pandemic. Complainant’s website <loewshotelsrelief.com> provides the means for team members to submit their applications and personal information to be reviewed for funding approval.
The disputed domain name was registered on July 13, 2020 and resolves to a parked page with links to third-party web locations.
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 by the Forum for verification of the registration details of the disputed domain name. Respondent availed of a privacy service to conceal her identity on the published WHOIS, which was disclosed by the Registrar in response to the Forum’s verification request.
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 provided clear, convincing and uncontested evidence that it has rights the LOEWS, LOEWS HOTELS and LOEWS HOTELS & CO trademarks acquired through its ownership of the portfolio of registered trademarks described below. It is also provided evidence of extensive use of the LOEWS mark in its hotels and resorts business.
The disputed domain name <loewshotelrelief.com> is composed of LOEWS mark in its entirety combination with the term “relief” and the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant’s LOEWS and LOEWS HOTELS mark are the initial, dominant, and only distinctive element in the disputed domain name. The absence of the letter “s” in the disputed domain name from the descriptive element in the LOEWS HOTELS service mark makes no significant difference.
Neither the descriptive term “relief” nor the gTLD extension <.com> distinguish the disputed domain from the LOEWS marks.
This Panel finds therefore that the disputed domain name is confusingly similar to the LOEWS and LOEWS HOTELS marks 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, alleging
· that Complainant itself has exclusive rights to the use of LOEWS and LOEWS HOTELS in an Internet domain name because Complainant and its affiliates have registered the trademark and domain name LOEWS alone and combined with generic terms for Complainant’s services, like “hotels”;
· 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 Respondent registered <loewshotelrelief.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.;
· that upon information and belief, Respondent is not commonly known by the disputed domain name <loewshotelrelief.com>;
· that the Registrar’s WHOIS lists the registrant as “Domains by Proxy LLC.” which bears no resemblance to the disputed domain name;
· that the disputed domain name differs from Complainant’s LOEWS marks by a single additional generic word in an apparent attempt to capitalize on users being led to believe that any domain name incorporating the terms “LOEWS” or “LOEWS HOTEL” is a site endorsed by Complainant;
· that Respondent is relying on the possibility of a consumer misspelling or mistyping Complainant’s existing domain name <loewshotelsrelief.com> to land on Respondent’s website to which the disputed domain name <loewshotelrelief.com> resolves;
· that because the difference between the disputed domain name and Complainant’s own domain name is only the single letter “s”, the registration of the disputed domain name amounts to typosquatting which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name;
· that prior to Complainant’s notice to Respondent regarding the infringing use of its marks, Respondent’s website featured generic links to third-party websites featuring hotels and hotel booking services from which Respondent likely received pay-per-click fees from the linked websites.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove her 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 these 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).
Given the particularity of the disputed domain name <loewshotelrelief>, and its similarity to Complainant’s domain name <loewshotelsrelief.com> which is used as the address of a website established by Complainant to provide need-based disaster relief payments to eligible employees who are facing financial hardship due to the COVID-19 pandemic, it is improbable that the registrant of the disputed domain name was unaware of Complainant, its LOEWS mark, its goodwill and reputation as well as its specific activities supporting people distressed by the pandemic when the disputed domain name was registered.
This Panel finds that on the balance of probabilities therefore the disputed domain name was chosen and registered to target Complainant, its goodwill and reputation and in particular its endeavors to provide support for its vulnerable staff during the Covid 19 epidemic. It is particularly lamentable and shameful that Respondent should target such a vulnerable segment of the community who require relief during the present pandemic.
Respondent has used the disputed domain name to resolve to a website which merely has links to third-party web locations. There is no plausible reason as to why Respondent would cause, permit, or allow the disputed domain name to resolve this webpage other than to obtain commercial benefit. This Panel finds therefore that on the balance of probabilities Respondent is using the disputed domain name in bad faith to generate pay-per-click revenue from the website. It follows therefore that Respondent is taking advantage in bad faith of Complainant’s reputation and goodwill in order to divert Internet traffic to her website.
Additionally, Complainant alleges that on October 16, 2020, access to the website through an iPhone redirected to the third party website <topdefence-formob.com>. Visiting the website through a desktop browser redirects the user to the website <enchangvjh.info>.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loewshotelrelief.com> domain name be TRANSFERRED from Respondent to Complainant.
_______________________________________
James Bridgeman SC
Panelist
Dated: November 20, 2020
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