DECISION

 

Loew's Hotels, Inc. v. li fa

Claim Number: FA2312002076761

PARTIES

Complainant is Loew's Hotels, Inc. ("Complainant"), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is li fa ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loewsjerseycity.com>, registered with Gname 057 Inc.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 27, 2023; Forum received payment on December 27, 2023.

 

On December 28, 2023, Gname 057 Inc confirmed by e-mail to Forum that the <loewsjerseycity.com> domain name is registered with Gname 057 Inc and that Respondent is the current registrant of the name. Gname 057 Inc has verified that Respondent is bound by the Gname 057 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 December 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2024 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@loewsjerseycity.com. Also on December 28, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 18, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant operates distinctive and upscale hotels and resorts across the United States and Canada. Complainant also has trademark rights in the marks LOEWS and LOEWS HOTELS based on use in commerce since at least 1962. As a result of their substantial investments and extremely high-quality standards, the LOEWS mark is renowned in the industry and is recognized throughout the world as signifying the high quality of Complainant's services. Complainant has rights in the LOEWS and LOEWS HOTELS marks through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,601,550 registered June 12, 1990; Reg. No. 6,161,857 registered September 29, 2020). The LOEWS and LOEWS HOTELS marks have enormous value and goodwill and identify Complainant uniquely and exclusively as the source of services to which the LOEWS and LOEWS HOTELS marks are applied. The disputed domain name is confusingly similar to Complainant's LOEWS mark as it contains the LOEWS mark in its entirety and simply adds a geographic term "Jersey City" and a generic top-level domain ("gTLD").

         

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its LOEWS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The disputed domain name resolves to a website offering sports betting entertainment services. Respondent's use of Complainant's mark and the goodwill surrounding it as a means of attracting Internet users to its unrelated business is not a bona fide offering of goods or services.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupted Complainant's business by diverting users to its purported commercial website to offer business unrelated to Complainants' business. Respondent registered the disputed domain name with actual notice of Complainant's rights in the LOEWS and LOEWS HOTELS marks.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on September 23, 2023.

        

2. Complainant has established rights in the LOEWS and LOEWS HOTELS marks through its registration with the USPTO (e.g., Reg. No. 1,601,550 registered June 12, 1990; Reg. No. 6,161,857 registered September 29, 2020).

 

3. Respondent uses the disputed domain name to direct Internet users to a website offering sports betting entertainment services.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the LOEWS and LOEWS HOTELS marks based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). Complainant provides copies of its USPTO registrations for the LOEWS and LOEWS HOTELS marks (e.g., Reg. No. 1,601,550 registered June 12, 1990; Reg. No. 6,161,857 registered September 29, 2020). Therefore, the Panel  finds that Complainant has established rights in the LOEWS and LOEWS HOTELS marks under Policy ¶ 4(a)(i). 

 

Next, Complainant argues the disputed domain name <loewsjerseycity.com> is confusingly similar to Complainant's LOEWS mark as it incorporates the mark in its entirety and is differentiated only by the addition of a geographic descriptor "Jersey City" and the ".com" gTLD. The addition of a gTLD and a geographic or generic term fails to sufficiently distinguish a disputed  domain name from a mark per Policy ¶ 4(a)(i). See DBI Brands Management LLC v. Client Care / Web Commerce Communications Limited, FA 2059984 (Forum September 28, 2023) (finding that the <keds-espana.com> domain name is confusingly similar to the KEDS mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."). The Panel therefore finds that the disputed domain name is confusingly similar to the LOEWS mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant argues Respondent does not have any rights or legitimate interests in the disputed domain name. Where a respondent does not provide evidence to the contrary, evidence that a respondent is not commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is unrelated to a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The unmasked WHOIS information shows "li fa" as the registrant of the disputed domain name. Furthermore, Complainant asserts Respondent is not authorized or licensed to use Complainant's LOEWS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. Complainant submits that Respondent uses the disputed domain name to direct Internet users to a website offering sports betting entertainment services.

 

The Panel agrees and finds that Respondent's use of Complainant's mark and the goodwill surrounding it as a means of attracting Internet users to its unrelated business is not a bona fide offering of goods or services. See UUL Labs, Inc. v. Harry L. Werner, FA 1880938 (Forum Mar. 10, 2020) ("Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant's business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant's business in order to sell unauthorized products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii)"). 

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent disrupted Complainant's business by diverting users to its purported commercial website to offer business unrelated to Complainant's business. As previously noted, Respondent uses the disputed domain name to direct Internet users to a website offering sports betting entertainment services. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by trading off of the goodwill associated with Complainant's LOEWS mark for commercial gain, and thus Respondent registered and uses the disputed domain name in bad faith. See Todd McFarlane and TMP International LLC v. tim wang, FA 2073747 (January 1, 2024) ("Respondent disrupted Complainant's business by diverting users to its purported scam commercial website to sell products unrelated to the Complainant's business. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by passing itself off as Complainant for commercial gain, and thus Respondent registered and used the disputed domain name in bad faith.").

 

Next, Complainant argues Respondent registered the disputed domain name with constructive or actual notice of Complainant's rights in the LOEWS and LOEWS HOTELS marks. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given the longstanding use of Complainant's mark and the confusing similarity of the disputed domain name to Complainant's mark. The Panel infers, due to the notoriety of Complainant's mark that Respondent had knowledge of Complainant's rights in the LOEWS mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

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 <loewsjerseycity.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: January 18, 2024