Morgans Hotel Group LLC v. 1550507
Ontario Inc.
Claim Number: FA0505000488445
PARTIES
Complainant
is Morgans Hotel Group LLC (“Complainant”),
represented by Jennifer M. Mikulina, of McDermott Will & Emery LLP, 277 West Monroe, Suite 4400, Chicago, IL 60606. Respondent is 1550507 Ontario Inc. (“Respondent”), represented by Glen A. Bloom, of Osler, Hoskin &
Harcourt LLP, Suite 1500, 50 O'Connor
Street, Ottawa, Ontario K1P 6L2.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <clifthotelsf.com>
and <hudsonhotelny.com>, registered with Namescout.com.
PANEL
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.
Linda
M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On
June 1, 2005, Namescout.com confirmed by e-mail to the National Arbitration
Forum that the domain names <clifthotelsf.com>
and <hudsonhotelny.com> are registered with Namescout.com and
that the Respondent is the current registrant of the name. Namescout.com has verified that Respondent
is bound by the Namescout.com 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
June 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 21,
2005 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@clifthotelsf.com and postmaster@hudsonhotelny.com by
e-mail.
A
timely Response was received and determined to be complete on June 21, 2005.
Complainant
timely filed an Additional Submission on June 24, 2005. Complainant's Additional Submission
addresses issues raised in Respondent's Submission. Respondent timely filed an Additional Submission on June 30,
2005. Respondent’s Additional
Submission addresses issues raised in Complainant’s Additional Submission. Both of these Additional Submissions were
considered by the Panel.
On June 28, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent's <clifthotelsf.com>
and <hudsonhotelny.com> domain names are confusingly similar
to its registered CLIFT HOTEL trademark and its common law HUDSON HOTEL
trademark, that Respondent does not have any rights or legitimate interests
with respect to either domain name, and that the infringing domain names have
been registered and used by Respondent in bad faith.
B.
Respondent
Respondent
contends that the <clifthotelsf.com> and <hudsonhotelny.com>
domain names are not confusingly similar to any mark in which Complainant has
rights, that Respondent did not register the domain names in bad faith, and
that Respondent has a legitimate interest in the domain names.
C.
Additional Submissions
A
timely Additional Submission was received from Complainant on June 24,
2005. The submission addresses
Complainant’s rights to the CLIFT HOTEL and HUDSON HOTEL marks, asserts that
Respondent is not commonly known by the domain names, and asserts that Respondent’s
business benefits financially from the use of the domain names by creating a
likelihood of confusion with Complainant’s marks.
The
Panel received Respondent’s Response to Complainant’s Additional Submissions on
June 30, 2005. Respondent addresses the
Hickory Farms decision (Hickory
Farms, Inc. v. 1550507 Ontario Inc., FA 282454 (Nat. Arb. Forum July 12,
2004)).
FINDINGS
Complainant owns a U.S. trademark
registration for CLIFT HOTEL (U.S. Reg. No. 2,412,031) for hotel and restaurant
services. This registration states that
the CLIFT HOTEL mark has been used since 1915.
Complainant owns the Clift Hotel in San Francisco and the Hudson Hotel
in New York City. Complainant owns the
<hudsonhotel.com> and <clifthotel.com> domain names.
When a computer user enters <clifthotelsf.com>,
the screen features the headline “clifthotelsf.com” and the statement “This
domain was recently acquired by Pool.com.” When a computer user enters <hudsonhotelny.com>,
the screen features the headline “hudsonhotelny.com” and the statement “This
domain was recently acquired by Pool.com.”
Each website contains links to many third party websites, such as travel
services and hotel-finding services for the cities of San Francisco and New
York.
Respondent carries on the business of
operating a web site on the Internet under the domain name <pool.com>
which provides up-to-date information to Internet users on current affairs as
well as a search engine which enables users to locate and access other web
sites containing information of interest to them. Respondent generates revenue through its Pool.com service when
Internet users click on the links identified in the list of the search results
using the Pool.com search engine. As
part of its business, Respondent registers domain names that are released by
administrators of top level and country code domain names and that have traffic
generated to them. Respondent detects
these domain names automatically by multiple queries conducted through its
search engines.
The <clifthotelsf.com> and <hudsonhotelny.com>
domain names were identified by Respondent, via the above automated
process, as being domain names that would expire in the near future. Respondent used an automated query to
determine the traffic generated by each of the web sites and subsequently
placed a back order with Pool.com to register the domain names. After registering the domain names, the
domain names were associated with a website consisting of links to various
hotels, travel services, and other types of products and services.
In
July 2003, Complainant’s attorney sent a letter to Respondent, requesting the
transfer of the domain names.
Respondent declined to do so, arguing that it had registered the domain
names for legitimate commercial purposes, in good faith and in furtherance of
its business plan and objectives.
Complainant’s attorney sent a follow-up letter in December 2004 but
received no response from Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 rights in the CLIFT HOTEL trademark.
Complainant relies upon U.S. Registration Number 2,412,031, which was
issued on December 12, 2000. The mark
is registered for “hotel and restaurant services,” and alleges a 1915 date of
first use. The registration has been
assigned to Complainant. The Clift
Hotel is located in San Francisco, California.
The Panel finds that Complainant has
established a presumption of valid trademark rights in the CLIFT HOTEL mark as
the result of registration and assignment of rights. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive; the respondent has the burden of refuting this assumption); see
also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that a trademark
registration with the United States Patent and Trademark Office creates a
presumption of rights in a mark).
Respondent’s argument that Complainant does not have rights to the CLIFT
HOTEL mark in Canada is not relevant in this matter.
Complainant
asserts common law rights in the HUDSON HOTEL trademark. Complainant alleges that the HUDSON HOTEL is
a large New York hotel and is a successor to a hotel that “had been a Manhattan
mainstay for almost sixty years before Morgans Hotel Group purchased it in
1998.” Based on the longstanding use of
the HUDSON trademark by Complainant (and Complainant’s predecessor), Complainant
concludes that common law trademark rights attach to the HUDSON HOTEL
mark.
The Panel finds that the HUDSON HOTEL
mark, having been used for over fifty years in connection with Complainant’s
(or a predecessor’s) hotel, has acquired secondary meaning. Thus, Complainant has established valid
common law rights in the mark. See
Gardner's Super Markets Inc. v. Ambassa
Holdings, Inc., D2002-0253 (WIPO June 14, 2002) (“In determining
whether the Complainant's mark has acquired secondary meaning, one must
consider a variety of factors, including, but not limited to, advertising,
promotion, sales, media coverage and the length, manner and exclusivity of use
of the mark by the Complainant.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
Complainant
argues that the disputed domain names, <clifthotelsf.com>
and <hudsonhotelny.com>,
are confusingly similar to Complainant’s CLIFT HOTEL and HUDSON HOTEL
marks. Specifically, Complainant
contends that the addition of the letters “sf” in the former domain, and “ny”
in the latter domain, fail to create sufficient differentiation between the
domain names and Complainant’s marks.
The
Panel notes that the disputed domain names, <clifthotelsf.com> and
<hudsonhotelny.com>, were the subjects of a prior UDRP default
decision. The prior Complaint was filed
by Complaintant’s predecessor in interest and and involved the two domain names
at issue here, as well as several similar hotel-related domain names. See Ian Schrager Hotels, L.L.C. v. R5
Group, FA 109370 (Nat. Arb. Forum May 30, 2002). In that case, the panel determined that, in the absence of a
response, the <clifthotelsf.com> and <hudsonhotelny.com> domain
names were confusingly similar to the CLIFT HOTEL and the HUDSON HOTEL marks
pursuant to Policy ¶ 4(a)(i).
In the two domain names at issue, Respondent has
merely added the geographic abbreviations “sf” and “ny” to Complaintant’s
marks. The Panel concludes that these
abbreviations are insufficient to avoid a finding of confusing similarity. See Prudential Ins. Co. of Am. v. credoNIC.com, FA 234367 (Nat. Arb. Forum Mar. 23,
2004) (finding in a default decision that the <prudentialsf.com> domain name was confusingly similar to the
complainant’s PRUDENTIAL mark, despite the addition of the geographic
abbreviation for San Francisco, “sf”); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of
the domain name <net2phone-europe.com> is confusingly similar to the
complainant’s mark because "the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s
VERISIGN mark and the <verisignindia.com> and <verisignindia.net>
domain names where the respondent added the word “India” to the complainant’s
mark).
Moreover,
the omission of the word “the” from THE HUDSON HOTEL mark does not materially
alter the mark so as to defeat Complainant’s claim of confusing
similarity. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent’s domain name <Marriott-hote.com>
is confusingly similar to the complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell,
AF-0298 eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Body Shop Int’l PLC v. CPIC NET
& Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain
name <bodyshipdigital.com> is confusing similar to the complainant’s THE
BODY SHOP trademark); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16,
2001) (finding that the domain name <wellness-international.com> is
confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK
mark).
In
view of the above, the Panel finds that the <clifthotelsf.com> and
<hudsonhotelny.com> domain names are confusingly similar to
Complainant’s marks, and that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent is
not making a bona fide offering of
goods or services, nor a legitimate noncommercial or fair use of the domain
names pursuant to Policy ¶¶ 4(c)(i) and (iii).
The domain names resolve to websites that offer various links to
hotel-related services in the cities corresponding to the domain names,
specifically, San Francisco and New York.
The Panel finds that this is not a bona fide offering of goods or services,
nor a legitimate noncommercial or fair use of the domain names pursuant to
Policy ¶¶ 4(c)(i) and (iii), because the services marketed at Respondent’s
websites compete with those offered by Complainant under its marks. See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(holding that the respondent’s appropriation of the complainant’s mark to
market products that compete with the complainant’s goods does not constitute a
bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO
Aug. 21, 2000) (finding that the respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona
fide offering of goods); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb.
Forum Dec. 5, 2003) (finding
that the respondent was not using domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
competing services with those offered by the complainant under its marks).
Complainant also asserts that
Respondent is not commonly known by the disputed domain names pursuant to
Policy ¶ 4(c)(ii). For example, nothing
in the WHOIS registration information for the disputed domain names implies
that Respondent is commonly known by either domain name. See Tercent Inc. v.
Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply). Moreover, as Respondent was not
commonly known by the domain names prior to their registration, Respondent
cannot satisfy Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Respondent’s use of domain names
confusingly similar to Complainant’s marks to promote competing hotel services
is not a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii).
The Panel
therefore finds that Respondent has no rights or legitimate interests in
respect of the disputed domain names and, thus, Policy ¶ 4(a)(ii) has been
satisfied.
Complainant
argues that Respondent’s bad faith is demonstrated by the following: 1)
Respondent was aware of Complainant’s marks (either before or after
Complainant’s letter in July 2003), yet Respondent refused to transfer the
domain names to Complainant; 2)
Respondent has engaged in a “pattern of conduct” in order to prevent
trademark owners from having domain names that include their trademarks; 3)
Respondent has violated the U.S. Anticybersquatting Consumer Protection Act;
and 4) Respondent’s domain names make “it more difficult for web users to
locate Complainant’s legitimate web sites,” and the domain names dilute the
distinctiveness of Complainant’s marks.
Respondent
counters each of the above arguments by stating: 1) Respondent was not aware of
Complainant or Complainant’s marks prior to the date that Respondent registered
the domain names because Respondent registered the domain names pursuant to an
automated system that monitors soon-to-expire domain names; 2) Complainant has
presented no evidence to establish a pattern of conduct; 3) the
Anticybersquatting Act does not apply to Respondent, a Canadian company; and 4)
despite Respondent’s activities, Complainant has been able to register the
<hudsonhotel.com> and <clifthotel.com> domain names.
The
Panel will not comment on each of the arguments set forth above. However, the Panel concludes that Respondent
has used and registered each of the domain names in bad faith.
In
view of the similarity between Complainant’s marks and the domain names, this
Panel concludes that Respondent is using the domain names to divert Internet users who may be searching for
Complainant’s hotels. Respondent’s
practice of diversion, which is possibly motivated by commercial gain, is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent had
engaged in bad faith use and registration by linking the domain name to a website
that offers services similar to the complainant’s services, intentionally
attempting to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with the complainant’s marks).
It
appears that Respondent has used and registered the domain names for the
primary purpose of redirecting Internet traffic intended for Complainant to
Respondent’s websites, i.e. websites that link to hotels that compete with
Complainant’s hotels. Registration of a
domain name for the primary purpose of disrupting the business of a competitor
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from the complainant's marks suggests that
the respondent, the complainant’s competitor, registered the names primarily
for the purpose of disrupting the complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent
had actual or constructive knowledge of Complainant’s marks when Respondent
registered and used the domain names, and actual notice was clearly established
by Complainant’s letter of July 2003.
Registration of a domain name confusingly similar to Complainant’s mark,
despite knowledge of Complainant’s rights, is evidence of bad faith
registration and use. See 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); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between the complainant’s
mark and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”).
It appears that
Respondent has registered and used the disputed domain names to misrepresent
itself as having an association with Complainant as well as to market
Complainant’s hotels and other hotels for profit. This behavior typifies bad faith within the meaning of Policy ¶
4(b)(iv). See Ian Schrager Hotels, L.L.C. v. R5 Group, FA 109370
(Nat. Arb. Forum May 30, 2002); Ritz-Carlton
Hotel Co. v. Jtravel, FA 105960 (Nat. Arb. Forum Apr. 30, 2002)
(finding bad faith pursuant to Policy ¶ 4(b)(iv) under nearly identical facts);
see also Fanuc Ltd v. Mach. Control Serv.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on its website at
<fanuc.com> because customer visiting the site were confused as to the
relationship between the respondent and the complainant).
In view of the above, this Panel
concludes that Respondent has used and registered each of the domain names in
bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <clifthotelsf.com> and <hudsonhotelny.com>
domain names be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: July 14, 2005
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