Ian Schrager Hotels, L.L.C. v. Hotel
Distribution Network
Claim
Number: FA0307000167913
Complainant is Ian Schrager Hotels, L.L.C., New York,
NY (“Complainant”) represented by Ariana
G. Voigt, of McDermott, Will & Emery. Respondent is Hotel Distribution Network, Sanford, FL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <delano-hotel-miami-beach.com>, registered
with Alldomains.Com Inc.
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
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 3, 2003; the Forum received a hard copy of the Complaint
on July 7, 2003.
On
July 8, 2003, Alldomains.Com Inc. confirmed by e-mail to the Forum that the
domain name <delano-hotel-miami-beach.com> is registered with Alldomains.Com
Inc. and that Respondent is the current registrant of the name. Alldomains.Com
Inc. has verified that Respondent is bound by the Alldomains.Com Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
July 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 4, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@delano-hotel-miami-beach.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 11, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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."
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 makes the following assertions:
1. Respondent’s <delano-hotel-miami-beach.com>
domain name is confusingly similar to Complainant’s DELANO mark.
2. Respondent does not have any rights or
legitimate interests in the <delano-hotel-miami-beach.com> domain
name.
3. Respondent registered and used the <delano-hotel-miami-beach.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an internationally known premier hotel company. Complainant asserts that it owns the Delano Hotel and has used
the DELANO mark in conjunction with the hotel since its opening in 1995. Complainant contends that it holds a
registration for the DELANO mark with the U.S. Patent and Trademark Office,
which was registered on November 25, 1997 (Reg. No. 2,115,849).
Respondent
registered the <delano-hotel-miami-beach.com> domain name on
February 12, 2002. Respondent’s
disputed domain name resolves to a website that gives Internet users the
impression that they can make hotel reservations with the Delano Hotel via the
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."
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.
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.
Complainant
asserts that it has rights in the DELANO mark through its registration with the
U.S. Patent and Trademark Office (“USPTO”).
In a previous case, the Panelist determined that Complainant had
established rights to the DELANO mark through registration with the USPTO. See Ian Schrager Hotels, L.L.C. v. R5
Group, FA 109370 (Nat. Arb. Forum May 30, 2002) (holding that Complainant
established rights in the DELANO mark through registration with the U.S. Patent
and Trademark Office).
Complainant has
established that the DELANO mark is registered with the USPTO by providing a
copy of the mark’s registration document; however, the document fails to
establish Complainant as the owner of the mark because the document lists the
holder of the DELANO mark as Beach Hotel Associates. Accordingly, Complainant forces this Panelist to connect the dots
to establish the first element of the Policy.
Fortunately for the Complainant, this is a default proceeding and there
is no challenge from the Respondent.
Also, fortunately for the Complainant, Exhibit 7 to the Complaint is
deemed incorporated by inclusion and reference. Exhibit 7 is a letter from counsel for Complainant to the
Respondent wherein it is stated that:
ISH
has used the DELANO name in connection with its Miami hotel since at least
1995. In addition, an ISH affiliate
owns a federal registration for DELANO, Reg. No. 2,115,849, which issued on
November 25, 1997.
Although better
documentation of ownership of the mark, or at least an affidavit of ownership,
would have been preferable, under the circumstances, the Panel finds that
Paragraph 4(a)(i) of the Policy has been satisfied.
Respondent has
failed to respond to the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Further, the
Complainant alleges that it has not consented to use of the DELANO name and
that Respondent is not known by the domain name, either as a business or as an
individual.
Accordingly, the
Panel finds that Paragraph 4(a)(ii) of the Policy has been satisfied.
The Panel
presumes that Respondent either had actual or constructive knowledge of Complainant’s
rights in the DELANO mark because the mark is registered with the U.S. Patent
and Trademark Office and has been used in commerce worldwide since 1995. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See
Victoria’s Cyber Secret Ltd. P’ship v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Furthermore,
Respondent’s attempt to sell the disputed domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <delano-hotel-miami-beach.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 22, 2003
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