The Mercer I, LLC v. Jason DeLorenzo
Claim Number: FA.1604001671426
Complainant is The Mercer I, LLC (“Complainant”), represented by Caitlin R. Byczko of BARNES & THORNBURG LLP, Illinois, USA. Respondent is Jason DeLorenzo (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <themercerhotelnyc.com>, registered with Godaddy.Com, Llc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 21, 2016; the Forum received payment April 22, 2016.
On April 21, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <themercerhotelnyc.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2016, 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@themercerhotelnyc.com. Also on April 25, 2016, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in This Proceeding:
Complainant uses its THE MERCER mark in connection with its hotel, restaurant, and bar services. Complainant registered the THE MERCER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,362,759, registered June 27, 2000), which demonstrates rights in the mark. Complainant supports this with attached Ex. D. Respondent’s <themercerhotelnyc.com> domain name is confusingly similar to the THE MERCER mark as it incorporates the entire mark except the space, and it adds the descriptive term “hotel,” the geographic term “nyc,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <themercerhotelnyc.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <themercerhotelnyc.com> domain name. Rather, the domain name resolves to a website that Respondent is attempting to pass off as belonging to Complainant by copying photographs and screenshots from Complainant’s own website. Complainant supports this at Attached Ex. E, the resolving page for <themercerhotelnyc.com> domain name and invites comparison with Attached Ex. F, Complainant’s own web offerings. Further, Respondent is using the domain name to host hyperlinks to the websites of Complainant’s competitors. See Compl., at Attached Ex. E and G.
Respondent passed off its site as belonging to Complainant and included pay-per-click links to Complainant’s competitors in order to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent has actual or constructive knowledge of Complainant's rights in the THE MERCER mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes, however, the correspondence in the record in which Respondent seems to consent to the transfer of the <themercerhotelnyc.com> domain name (Correspondence – Respondent, April 27, 2016). The Panel also notes that Respondent registered <themercerhotelnyc.com> domain name December 12, 2012.
PRELIMINARY ISSUE - Consent to Transfer
The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purported to consent to the transfer of the <themercerhotelnyc.com> domain name. The Panel notes that it is under no obligation to acknowledge any such documents; however, this Panel did review them. Respondent consents to transfer the <themercerhotelnyc.com> domain name; however, this consent occurred after initiation of this proceeding and Godaddy.Com, Llc had already placed a hold on Respondent’s account before such consent. Respondent cannot transfer the disputed domain name while this proceeding is pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel has authority to forego the traditional UDRP analysis and order an immediate transfer of the <themercerhotelnyc.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, the Panel notes that Complainant did not implicitly consent in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds additionally that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, the Panel finds that given the facts of this case, the Panel should review the case and make a determination on the merits to determine if the disputed domain name deserves to be transferred to Complainant and whether findings should be made in accordance with the Policy.
Therefore, the Panel analyzes the case under the elements of the UDRP and makes an appropriate determination.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain
name containing Complainant’s protect mark; but Respondent nevertheless registered
a disputed domain name that is confusingly similar to Complainant’s protected
mark.
Respondent registered and used this disputed domain name containing Complainant’s mark in its entirety in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant uses the THE MERCER mark in connection with its hotel, restaurant, and bar services. Complainant claims it registered the THE MERCER mark with the USPTO (Reg. No. 2,362,759, registered June 27, 2000), which it contends demonstrates rights in the mark. See Compl., at Attached Ex. D. in fact, registration with the USPTO is sufficient to establish rights in a trademark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant demonstrated rights and legitimate interests in the THE MERCER mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <themercerhotelnyc.com> domain name is confusingly similar to the THE MERCER mark as it incorporates the entire mark except the space, and it adds the descriptive term “hotel,” the geographic term “nyc,” and the gTLD “.com.” Such alterations to marks do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Skype Ltd. v. Sacramento, FA 747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel therefore agrees that Respondent’s <themercerhotelnyc.com> domain name is confusingly similar to the THE MERCER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that contains Complainant’s protected mark in its entirety and is confusingly similar to that mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <themercerhotelnyc.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the disputed domain name lists “Jason DeLorenzo” as registrant. Complainant also asserts that it has not given Respondent permission to use it’s THE MERCER mark. The Panel notes as well that Respondent did not file a Response in this proceeding. Therefore, in light of the available evidence, the Panel finds that no basis suggests that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <themercerhotelnyc.com> domain name. Rather, Complainant contends that the domain name resolves to a website that Respondent is attempting to pass off as belonging to Complainant by copying photographs and screenshots from Complainant’s own website. Compare Compl., at Attached Ex. E (resolving page for <themercerhotelnyc.com>), with Compl., at Attached Ex. F (Complainant’s web offerings). Complainant further contends that Respondent is using the domain name to host hyperlinks to the websites of Complainant’s competitors. See Compl., at Attached Ex. E and G. A respondent’s use of a domain either to pass itself as a complainant or to operate a pay-per-click website containing links to the services of a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Therefore, this Panel agrees that Respondent’s <themercerhotelnyc.com> domain constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent passed off its site as belonging to Complainant and included pay-per-click links to Complainant’s competitors in order to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain name to profit from users looking for Complainant’s site. The Panel agrees with Complainant and holds that Internet user confusion that results in the redirection to Respondent’s site with links to the services of Complainant’s competitors constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that its trademark registrations for the THE MERCER mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had constructive knowledge of Complainant's rights in the mark. Complainant also argues that Respondent had actual knowledge of Complainant's rights in the THE MERCER mark. Complainant argues that Respondent's use of pictures and screenshots from Complainant’s site at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although constructive notice will not support findings of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights as is evident from the use made of the disputed domain name and therefore determines that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <themercerhotelnyc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: June 3, 2016.
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