Loew’s Hotels, Inc. v. yangcai dong
Claim Number: FA2111001974826
Complainant is Loew’s Hotels, Inc. (“Complainant”), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is yangcai dong (“Respondent”), 中国.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loewsgifts.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2021; the Forum received payment on November 29, 2021. The Complaint was received in English.
On December 1, 2021, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <loewsgifts.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 6, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 27, 2021 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@loewsgifts.com. Also on December 6, 2021, the Chinese and English language 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 December 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Preliminary Issue: Language of Proceeding
Complainant alleges that, because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). The Panel notes that the disputed domain name consists of the English word “gifts” and references Complainant, a U.S. company, and some of the content on the resolving website is in English. Therefore, the Panel determines that this proceeding will be conducted in English.
A. Complainant
1. Respondent’s <loewsgifts.com> domain name is confusingly similar to Complainant’s LOEWS mark.
2. Respondent does not have any rights or legitimate interests in the <loewsgifts.com> domain name.
3. Respondent registered and uses the <loewsgifts.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Loew’s Hotels, holds a registration for the LOEWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,601,550, registered June 12, 1990).
Respondent registered the <loewsgifts.com> domain name on January 20, 2021,and uses it to resolve to a pay-per-click website.
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 Panel finds that Complainant has rights in the LOEWS mark based on registration with the USPTO. See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent’s <loewsgifts.com> domain name uses Complainant’s LOEWS mark and simply adds the descriptive term “gifts” and the “.com” gTLD. The addition of a descriptive term and a gTLD to a mark is insufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”) Thus, the Panel finds that Respondent’s <loewsgifts.com> domain name is confusingly similar to Complainant’s LOEWS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <loewsgifts.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed Respondent to use the LOEWS mark. The WHOIS information of record identifies “yangcai dong” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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).
Complainant also argues that Respondent does not use the disputed domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain to redirect users to a rotating series of webpages that feature advertisements for unrelated goods and services. Using a disputed domain name to divert users to advertisements from which a respondent likely reaps click-through fees does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1784943 (Forum June 7, 2018) (“the <trulia.co> domain name resolves to a variety of pages, including real-estate-related advertising and to the website of a direct competitor of the Complainant in the online real estate field. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).”) Complainant provides screenshots of webpages the disputed domain name resolves to, featuring goods and services unrelated to Complainant. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <loewsgifts.com> domain name in bad faith because Respondent uses the disputed domain name to divert users to a rotating series of webpages that feature advertisements from which Respondent likely receives click-through fees. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also ESPN, Inc. v. Ballerini, FA 95410 (Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the LOEWS mark since it is similar to Complainant’s own <loewshotels.com> domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see additionally Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied 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 <loewsgifts.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 3, 2022
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