Loew’s Hotels, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2202001984558
Complainant is Loew’s Hotels, Inc. (“Complainant”), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loewhotel.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2022; the Forum received payment on February 16, 2022.
On February 22, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <loewhotel.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 February 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2022 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@loewhotel.com. Also on February 23, 2022, 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 March 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant operates distinctive and upscale hotels and resorts across the United States and Canada. Complainant has rights in the LOEWS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,601,550, registered June 12, 1990). Respondent’s <loewhotel.com> domain name is confusingly similar to Complainant’s LOEWS trademark. Respondent incorporates the trademark in its entirety, removes the letter “s” while adding the generic term “hotel” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <loewhotel.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the LOEWS trademark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a webpage that offers links to third party webpages that offer travel and hotel services that compete with Complainant’s business.
Respondent registered and use the <loewhotel.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers links to third parties that provide similar services to Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the LOEWS trademark due to the longstanding use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
No. 1,601,550 LOEWS (word), registered June 12, 1990 for services in Intl Class 42;
No. 5,974,860 LOEWS HOTELS & CO ESTABLISHED 1960 (word), registered February 4, 2020 for services in Intl Class 43;
No. 5,974,861 LOEWS HOTELS & CO (word), registered February 4, 2020 for services in Intl Class 43;
No. 6,161,856 LOEWS HOTELS (stylized), registered September 29, 2020 for services in Intl Classes 35, 41, 43, 44 and 45; and
No. 6,161,857 LOEWS HOTELS (word), registered September 29, 2020 for services in Intl Classes 35, 41, 43, 44 and 45;
The Complainant is also owner the following International trademark registrations:
No. 1533992 LOEWS HOTELS (stylized), registered March 6, 2020 for services in Intl Classes 35, 41, 43, 44 and 45, covering a number of countries and regions around the world – including European Union;
No. 1533179 LOEWS HOTELS (word), registered March 6, 2020 for services in Intl Classes 35, 41, 43, 44 and 45, covering a number of countries and regions around the world – including European Union.
Further, the Complainant is the owner the following European Union Trade Mark:
No 003929841 LOEWS (word), registered November 23, 2007 for goods and services in Intl Classes 16, 35, 41, 43, 44
The <loewhotel.com> domain name was originally registered on October 13, 2004 and updated on September 19, 2019.
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”).
The Complainant claims to have rights in the LOEWS trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of it’s USPTO registrations for the LOEWS trademark (e.g. Reg. No. 1,601,550, registered June 12, 1990), as well as copies of the registration of its LOEWS trademark, alone or in combination with other words, as International registrations and a European Union Trade Mark Registration. Therefore, the Panel find that Complainant has rights in the trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <loewhotel.com> domain name is confusingly similar to Complainant’s LOEWS trademark. Registration of a domain name that contains a trademark in its entirety, removing a single letter and adding a generic term along with a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”), see also 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)). Here, Complainant argues that Respondent incorporates the trademark in its entirety, removes the letter “s” while adding the generic term “hotel” along with the “.com” gTLD. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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).
Complainant argues Respondent lacks rights or legitimate interest in the <loewhotel.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the LOEWS trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD” and there is no other evidence to suggest that Respondent was authorized to use the LOEWS trademark or was commonly known by the disputed domain name. Therefore, the Panel find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a webpage that offers links to third party webpages that offer travel and hotel services that compete with Complainant’s business. Use of a disputed domain name to resolve to a webpage that offers links to services that compete with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy 4(c)(i) or (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with a screenshot of the <loewhotel.com> domain name’s resolving webpage that shows links to third party services that obviously compete with Complainant’s business. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <loewhotel.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers links to third parties that provide similar services to Complainant’s business. Use of a disputed domain name that resolves to a webpage that offers links to services that compete and are related to a complainant’s business may indeed be evidence of bad faith per Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Here, as noted above, Complainant has provided the Panel with a screenshot of its domain name’s resolving webpage that shows links to third party services that compete with Complainant’s business. Therefore, the Panel find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the LOEWS trademark at the time of registering the <loewhotel.com> domain name. The Panel have to disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Instead, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Based on the fact presented by the Complainant, the Panel findit obvious that Respondent did hade (and have) actual knowledge of Complainant’s right in the trademark, and thereby find bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loewhotel.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 24, 2022
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