Carlson Hotels, Inc. and its subsidiaries Radisson Hotels International, Inc. and PPK Holding, LLC v. Zhou Jun / Hui Ya Jiu Dian Guan Li You Xian Gong Si / Wu Xue Hong / Guang Zhou Shi Lv Yue Shang Wu Fu Wu You Xian Gong Si / Hui Ya Jiu Dian Guan
Claim Number: FA1505001619759
Complainant is Carlson Hotels, Inc. and its subsidiaries Radisson Hotels International, Inc. and PPK Holding, LLC (“Complainant”), represented by Travis Bachman, Minnesota, USA. Respondent is Zhou Jun / Hui Ya Jiu Dian Guan Li You Xian Gong Si / Wu Xue Hong / Guang Zhou Shi Lv Yue Shang Wu Fu Wu You Xian Gong Si / Hui Ya Jiu Dian Guan (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <radissonblu-hotel.com>, <radissontianjin.com>, <radisson-hangzhou.com>, and <liting-hotel.com>, registered with Foshan YiDong Network Co., LTD.
The undersigned certifies that he or she 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015. The Complaint was received in both Chinese and English.
On May 28, 2015, Foshan YiDong Network Co., LTD confirmed by e-mail to the Forum that the <radissonblu-hotel.com>, <radissontianjin.com>, <radisson-hangzhou.com>, and <liting-hotel.com> domain names are registered with Foshan YiDong Network Co., LTD and that Respondent is the current registrant of the names. Foshan YiDong Network Co., LTD has verified that Respondent is bound by the Foshan YiDong Network Co., LTD 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 May 29, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 18, 2015 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@radissonblu-hotel.com, postmaster@radissontianjin.com, postmaster@radisson-hangzhou.com, postmaster@liting-hotel.com. Also on May 29, 2015, the Chinese 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 June 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the RADISSON mark (e.g., Reg. No. 920,862, registered Sept. 21, 1971), as well as the RADISSON BLU mark (e.g., Reg. No. 4,070,968, registered Dec. 13, 2011). Complainant also owns a registration with China’s State Administration for Industry and Commerce (“SAIC”) for the 丽亭 (Li Ting) mark (e.g., Reg. No. 4419130, registered June 28, 2008) (hereinafter the “Li Ting mark”). All three marks are used on or in connection with the provision of hotel and lodging services. The <radissontianjin.com> and <radisson-hangzhou.com> domain names are confusingly similar to the RADISSON mark because both domain names contain the entire mark and add the geographically descriptive phrases “tianjin” and “hangzhou,” along with the generic top-level domain (“gTLD”) “.com,” and a hyphen. The <radissonblu-hotel.com> domain name is confusingly similar to both the RADISSON and RADISSON BLU marks because they contain both marks in their entirety and also add a hyphen, a descriptive term, and the gTLD “.com.” The <liting-hotel.com> domain name is confusingly similar to the Li Ting mark because it contains the entire mark and adds a hyphen, a descriptive term, and the gTLD “.com.”
Complainant further alleges that the Respondent has no rights or legitimate interests. Respondent is not commonly known as any of the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to webpages wherein Respondent is trying to pass itself off as Complainant. Also, Respondent’s use of the disputed domain names reveals an illegal scheme by which Respondent is selling Complainant’s own services.
Complainant finally alleges that the Respondent has engaged in bad faith registration and use. Respondent has created a likelihood of confusion and is commercially profiting in the process. Further, Respondent registered the disputed domain names with actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were registered as follows: <radissontianjin.com> was registered on January 7, 2014, <liting-hotel.com> was registered on June 24, 2014, <radisson-hangzhou.com> was registered on July 7, 2014, and <radissonblu-hotel.com> was registered on December 4, 2014.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel finds that there is sufficient nexus between the two Complainants to make it appropriate that the Panel treats them as one Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that there is sufficient nexus between the multiple Respondents to treat them as one. All four of the disputed domain names list an identical email address for the registrant and administrative contact (yiluxue2010@163.com) and that the whois records for all four of the domain names list identical name servers (“ns1.72dns.com” and “ns2.idcl.cn”). As such, it is reasonable to conclude that all four disputed domain names are controlled by a single entity.
As Respondent has failed to submit a Response in this matter, the Panel shall make its determination based on the uncontroverted and reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s famous trademarks, that the Respondent has no rights or legitimate interests in or to the disputed domain names, and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns USPTO registrations for the RADISSON mark (e.g., Reg. No. 920,862, registered Sept. 21, 1971), as well as the RADISSON BLU mark (e.g., Reg. No. 4,070,968, registered Dec. 13, 2011). Complainant also owns a registration with the SAIC for the LI TING mark (e.g., Reg. No. 4419130, registered June 28, 2008; see also Compl., at p. 8 (explaining that the 丽亭 (Li Ting mark is the Chinese translation for PARK PLAZA, another mark in which Complainant owns trademark rights). All three marks are used on or in connection with the provision of hotel and lodging services. Registrations with the USPTO and SAIC are both sufficient to establish rights in the Complainant’s trademark. See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <radissontianjin.com> and <radisson-hangzhou.com> domain names are confusingly similar to the RADISSON mark. Complainant notes that both domain names contain the entire mark and add the phrases “tianjin” and “hangzhou,” which are geographically descriptive because they are Chinese cities in which Complainant does business. Complainant also notes that both domain names add the gTLD “.com,” and the <radisson-hangzhou.com> domain name adds a hyphen. As a general rule, both gTLDs and punctuation-related alterations can never distinguish a domain name from the mark(s) at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Also, prior panels have found that the addition of geographically descriptive terms to a domain name that contains the entire mark(s) at issue creates a confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
Accordingly, the Panel finds that the <radissontianjin.com> and <radisson-hangzhou.com> domain names are confusingly similar to the RADISSON mark.
Next, Complainant argues that the <radissonblu-hotel.com> domain name is confusingly similar to both the RADISSON and RADISSON BLU marks. Complainant notes that the domain name contains both marks in their entirety, and also adds a hyphen, a descriptive term, and the gTLD “.com.” As mentioned supra, both gTLDs and punctuation-related alterations can never distinguish a domain name from the mark(s) at issue. Also, prior panels have found that the addition of a term to a domain name that is descriptive of the goods or services offered under the mark(s) at issue creates a confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Accordingly, he Panel finds that the <radissonblu-hotel.com> domain name is confusingly similar to both the RADISSON and RADISSON BLU marks.
Lastly, Complainant argues that the <liting-hotel.com> domain name is confusingly similar to the Li Ting mark. Complainant notes that “Li Ting” is the pinyin version of Complainant’s mark 丽亭, and that pinyin is the accepted method for writing the Chinese language in Roman characters. See Compl., at Attached Ex. E-7 (providing evidence of the Chinese to pinyin conversion of 丽亭 to Li Ting). Complainant notes that the domain name contains the entire mark and adds a hyphen, a descriptive term, and the gTLD “.com.” As mentioned supra, both gTLDs and punctuation-related alterations can never distinguish a domain name from the mark(s) at issue. Also mentioned supra, prior panels have found that the addition of a term to a domain name that is descriptive of the goods or services offered under the mark(s) at issue creates a confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Accordingly, the Panel finds that the <liting-hotel.com> domain name is confusingly similar to the Li Ting mark.
Complainant asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use any of Complainant’s marks in domain names. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. 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).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that the domain names resolve to websites where Respondent is attempting to pass itself off as Complainant. But further, Internet users can book what they believe to be superior quality hotel rooms at a certain price. When those users show up to check in at the hotel, they find that such websites used a third party online travel agency (“OTA”) to book them a lower quality room (which would normally sell for a lower price). Complainant argues that Respondent then pockets the difference in price and Complainant is charged a commission by the OTA. All of this, according to Complainant, is done without Complainant’s permission. Images on the resolving webpages contain all of Complainant’s trademarks at issue in this case. See Compl., at Attached Ex. F. Prior panels have found that attempts by a respondent to pass itself off as the complainant cannot amount to a bona fide offering a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Prior panels have also found that the “unauthorized booking of hotels under a confusingly similar domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.” See B Hotel Group, LLC v. Pierre Honore, FA 1564618 (Nat. Arb. Forum Aug. 1, 2014).
As such, as there is no evidence in the record to contradict Complainant’s reasonable claims, the Panel finds that the Respondent is running the scheme Complainant alleges. The Panel, therefore, finds that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant supports its argument for likelihood of confusion by noting that the resolving webpages contain images of all of Complainant’s marks at issue in this dispute. See Compl., at Attached Ex. F. Complainant also notes that Internet users are allowed to make hotel reservations on the resolving webpages. Id. Complainant further contends that Respondent’s commercial profit comes from the pocketing of the difference in price when Respondent tricks Internet users into booking hotel rooms. Prior panels have found that creating a likelihood of confusion for commercial profit consists of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
In this case, the Respondent seems to be intentionally creating the likelihood of confusion and purposefully profiting therefrom. As such, the Panel finds that Respondent has proceeded with intentional bad faith use and registration of the disputed domain name under Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had actual and/or constructive knowledge of Complainant's rights in the RADISSON, RADISSON BLU, and Li Ting marks when Respondent registered the disputed domain names. Complainant further argues that the advertisements on the resolving webpages indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, given the totality of circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s famous trademarks. As such, the Panel further finds that the Respondent registered and used the disputed domain names in bad faith according to 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 <radissonblu-hotel.com>, <radissontianjin.com>, <radisson-hangzhou.com>, and <liting-hotel.com> domain names be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: June 28, 2015
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