Loew’s Hotels, Inc. v. enghao p / penghao / Ning Zhang / Bing Liu / Pan Fuzhang
Claim Number: FA2303002037757
Complainant is Loew’s Hotels, Inc. (“Complainant”), represented by Natasha Reed of Foley Hoag LLP, New York, USA. Respondent is enghao p / penghao / Ning Zhang / Bing Liu / Pan Fuzhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <loewshoteldoncesarresort.com>, <loewstampa.com>, <loewsstpetersberghotel.com>, <loewsstpetersberg.com>, <loewsstpete.com>, <loewshotelsdoncesar.com>, <loewshoteldoncesar.com>, <loewsdoncesarhotel.com>, <loewsdoncesar.com>, <loewstampahotel.com> (collectively “Domain Names”), registered with Hong Kong Juming Network Technology Co., Ltd and GMO Internet Group, Inc. d/b/a Onamae.com.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 28, 2023; Forum received payment on March 28, 2023.
On March 29, 2023 and April 4, 2023, Hong Kong Juming Network Technology Co., Ltd and GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <loewshoteldoncesarresort.com>, <loewstampa.com>, <loewsstpetersberghotel.com>, <loewsstpetersberg.com>, <loewsstpete.com>, <loewshotelsdoncesar.com>, <loewshoteldoncesar.com>, <loewsdoncesarhotel.com>, <loewsdoncesar.com>, <loewstampahotel.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars has verified that Respondent is bound by their 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 April 10, 2023, Forum served the Complaint and all Annexes, including a Japanese and English Written Notice of the Complaint, setting a deadline of May 1, 2023 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@loewshoteldoncesarresort.com, postmaster@loewstampa.com, postmaster@loewsstpetersberghotel.com, postmaster@loewsstpetersberg.com, postmaster@loewsstpete.com, postmaster@loewshotelsdoncesar.com, postmaster@loewshoteldoncesar.com, postmaster@loewsdoncesarhotel.com, postmaster@loewsdoncesar.com, postmaster@loewstampahotel.com. Also on April 10, 2023, the Japanese and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
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.”
Complainant contends that the registrants for the Domain Names are related because the Domain Names follow a similar naming pattern (incorporating the LOEWS mark and geographic terms referring to Florida [or a resort previously owned by Complainant in Florida]). The Domain Names were registered with the same two Registrars over a two day period and a number of the Domain Names (<loewstampa.com>, <loewsstpetersberg.com>, <loewsstpete.com>, <loewshotelsdoncesar.com>, <loewsdoncesarhotel.com>, <loewsdoncesar.com>, and <loewstampahotel.com> (“Active Domain Names”)) have redirected to redirect or have redirected to similar sports betting websites (the “Respondent’s Websites”). This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register 10 similar domain names targeted at the same entity over a two-day period and point 7 of them to similar websites operating on the same business model.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
Preliminary Issue: Language of Proceeding
The language of the registration agreements for the domain name <loewshoteldoncesarresort.com> is Japanese. The remaining Domain Names are registered using an English-language registration agreement. The Complaint is in English and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Japanese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. 9 of the 10 Domain Names were registered through an English-language registration agreement. Furthermore, the Domain Names themselves contain English words and phrases. The Panel also notes the absence of any response by Respondent indicating a preference that the proceeding continue in Japanese. After considering the circumstances of the present case, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, Loew’s Hotels, Inc., operates upscale hotels and resorts. Complainant has rights in the LOEWS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,601,550, registered June 12, 1990). Respondent’s domain names are confusingly similar to the LOEWS mark as they include the entire LOEWS mark and add geographic terms or generic terms that relate to Complainant’s services or properties once owned by Complainant, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the Domain Names since Respondent is not licensed or authorized to use Complainant’s LOEWS mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. None of the Domain Names are presently active and the Active Domain Names have been previously used to redirect users to a third-party gambling website unrelated to Complainant for which Respondent presumably receives revenue.
Respondent registered and uses the Domain Names in bad faith by disrupting Complainant’s business and causing consumer confusion for commercial gain. Respondent failed to respond to Complainant’s cease-and-desist letter. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the LOEWS marks given the nature of the Domain Names, which include terms that reference Complainant’s services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LOEWS mark. Each of the Domain Names is confusingly similar to Complainant’s LOEWS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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”).
Complainant has rights in the LOEWS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 1,601,550, registered June 12, 1990). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to the LOEWS mark as they each incorporate the entire LOEWS mark while adding generic and/or geographic terms (“hotel”, “St Petersburg” and “don cesar” [a hotel property that Complainant used to own] for example) and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the LOEWS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “enghao p / penghao / Ning Zhang / Bing Liu / Pan Fuzhang” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive which by itself does not demonstrate rights or legitimate interests. Complainant provides evidence that prior to the commencement of the proceeding the Active Domain Names resolved to a website or websites offering commercial content unrelated to the Complainant’s business (namely gaming content) or any descriptive meaning of the Domain Names. The use of a domain name to divert users, for commercial gain, to a website containing unrelated content such as gaming content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). See also Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, July 21-22, 2022, Respondent had actual knowledge of Complainant’s LOEWS mark. There is no obvious explanation, and none has been provided by Respondent, for a party to register 10 domain names that consist of the registered LOEWS mark and various geographical terms or terms that relate to Complainant’s business and redirect a number of those Domain Names to websites offering gaming content unrelated to any descriptive meaning of those terms absent any awareness of Complainant and its LOEWS mark (and intention to capitalize on Complainant’s reputation in its LOEWS mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and has used the Domain Names in bad faith in order to resolve to websites that display gaming content for which Respondent would be expected to receive revenue. Use of confusingly similar domain names to attract users to a website through which Respondent may receive revenue through advertisements and other means can be bad faith per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA 1402001543807 (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.”).
The Panel finds 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 <loewshoteldoncesarresort.com>, <loewstampa.com>, <loewsstpetersberghotel.com>, <loewsstpetersberg.com>, <loewsstpete.com>, <loewshotelsdoncesar.com>, <loewshoteldoncesar.com>, <loewsdoncesarhotel.com>, <loewsdoncesar.com>, <loewstampahotel.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May, 11 2023
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