DECISION
Hilton International Holding LLC v. Jonathan Stas
Claim Number: FA2412002130506
PARTIES
Complainant is Hilton International Holding LLC ("Complainant"), represented by Sarah H. Parker of Alston & Bird LLP, Georgia, USA. Respondent is Jonathan Stas ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waldorfnewyorkcity.com>, registered with GoDaddy.com, LLC.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 19, 2024. Forum received payment on December 19, 2024.
On December 19, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <waldorfnewyorkcity.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2025 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@waldorfnewyorkcity.com. Also on December 26, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Hilton International Holding LLC, is a leading global hospitality company with 21 brands comprising with its licensees and strategic partners more than 8,300 properties in more than 138 countries and territories around the world. Its portfolio includes many of the world's best-known and most highly regarded hotel brands, including WALDORF and WALDORF-ASTORIA ("the WALDORF marks"). The iconic New York City location of the Waldorf Astoria on Park Avenue in Midtown Manhattan is promoted through its own website located at the domain name <waldorfastorianewyork.com>.
Respondent is a former employee of Complainant who worked as the Marketing and Communications Manager of the Waldorf Astoria New York from 2006 to 2017. Respondent registered the domain name to promote the hotel but, unbeknownst to Complainant, Respondent registered the domain name in his own name. In 2020, Respondent placed his registration of the domain name behind a privacy service.
Until at least November 4, 2024, the domain name was used as the address for a website that promoted the Waldorf Astoria New York. However, Complainant recently discovered that, at some point in the last few weeks, the content of the website at the domain name had changed and that the domain name is now being used to redirect consumers to <hotels-new-york.org>, which serves as the address for an online travel agency website that promotes third-party hotels in the New York City area, including hotels such as the Park Lane New York Hotel that are competitors of the Waldorf Astoria New York. Clicking on any of the hotels listed on <hotels-new-york.org> takes the user to a page where the user can check the availability and book stays at the third-party hotels promoted on the site. Upon information and belief, Respondent generates revenue by redirecting Internet users to the <hotels-new-york.org> website.
Complainant has never consented to the registration of the domain name by Respondent in his own name, nor has Complainant authorized or consented to use of the domain name for its current purpose of redirecting Internet users to Complainant's competitors. Because the domain name is registered behind a privacy service, Complainant was uncertain of the identity of the current domain name registrant until after its initial filing of this Complaint with Forum. After learning that Mr. Stas is still the registrant, Complainant's counsel wrote him and requested that he transfer the domain name to Complainant. Respondent has to date failed to reply to the request or transfer the domain name.
Complainant has rights in its famous WALDORF-ASTORIA service mark, registered with the United States Patent and Trademark Office ("USPTO"). Respondent's <waldorfnewyorkcity.com> domain name is confusingly similar to the WALDORF-ASTORIA mark.
Respondent has no rights or legitimate interests in the domain name. Respondent is not and has not been known by the WALDORF marks. Respondent's registration of the domain name in his own name was neither authorized nor approved by Complainant nor was any renewal of the domain name after his departure from Complainant's employ in 2017. Respondent therefore lacked the authority to register, renew, or use the domain name in any manner other than for the benefit of Complainant. See John C. Peyton v. Robert Walker, FA 1998236 (Forum July 12, 2022); see also Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that "former employees of a company no longer hold any rights or legitimate interests in the company's mark"); Sci., Eng'g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006).
Respondent's current use of the domain name trades on the fame and goodwill of the WALDORF marks to lure individuals interested in booking a stay at the Waldorf Astoria New York and redirect them to third-party hotels for Respondent's financial gain. Such illegitimate commercial use of Complainant's marks for Respondent's commercial benefit does not give rise to bona fide rights or interests in the domain name.
Respondent has registered and used the <waldorfnewyorkcity.com> domain name in bad faith. Respondent was aware of Complainant's rights in the WALDORF marks when he registered the domain name as an employee at the Waldorf Astoria New York City. Because Respondent registered the domain name in his own name (in excess of the scope of the authority granted by Complainant) and renewed the domain name without Complainant's authorization after he was no longer employed by Complainant, such registration and renewal were in bad faith. See John C. Peyton, FA 1998236 (holding that former employee's registration, renewal and use of a domain name beyond the scope of the employer's authorization and use for any purpose other than for the benefit of the employer is bad faith); see also Sci., Eng'g & Tech. Assocs. Corp., FA 637300; Vetere, FA 1707259.
As to use, Respondent is clearly intending to capture Internet traffic looking for information about the Waldorf Astoria New York and then redirect that traffic to Complainant's competitors. Upon information and belief, Respondent profits from users to his site being redirected to <hotels-new-york.org>. It is well established that such conduct constitutes bad faith registration and use under the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has not established all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the WALDORF and WALDORF-ASTORIA marks through registrations with the USPTO (e.g., WALDORF-ASTORIA, Reg. No. 1,065,983, registered on May 17, 1977, and WALDORF, Reg. No. 1,519,383, registered on January 3, 1989 in the name Waldorf Hotels Corporation and subsequently assigned to Complainant).
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.
The Panel finds Respondent's <waldorfnewyorkcity.com> domain name to be confusingly similar to Complainant's WALDORF and WALDORF-ASTORIA marks, only differing from the former by the addition of the words "newyorkcity" and only differing from the latter by the omission of "astoria" and the addition of those words. These differences are insufficient to distinguish the domain name from Complainant's marks. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The relevant date to determine whether Respondent has rights to or legitimate interests in the domain name is the date of the filing of the Complaint in this proceeding.
The <waldorfnewyorkcity.com> domain name was registered on October 9, 2008, many years after the registrations of Complainant's famous marks. Until at least August, 2024 it resolved to a website promoting Complainant's Waldorf Astoria New York hotel. It currently resolves to a website at "www.hotels-new-york.org", promoting third party hotels which compete with Complainant.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <waldorfnewyorkcity.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used in bad faith". Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, namely:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
When the domain name was registered on October 9, 2008, Respondent was employed by Complainant as the Marketing and Communications Manager of the Waldorf Astoria New York hotel. According to the Complaint, Respondent registered the domain name to promote the hotel, albeit, unbeknownst to Complainant, in his own name. The domain name continued to be used by Respondent to promote Complainant's hotel for several years after Respondent ceased to be employed by Complainant in 2017, as Complainant was aware, since Complainant says that it recently discovered that, at some point in the last few weeks, the content of the website at the domain name had changed.
These circumstances persuade the Panel that, from 2008 to 2024, Respondent registered, renewed and until recently used the <waldorfnewyorkcity.com> domain name in good faith for the benefit of Complainant.
Respondent's current use of the domain name is clearly bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy, which provides that such use is evidence of both bad faith registration and bad faith use. However, such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
As stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085:
"Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that "If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith". In Teradyne Inc. Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would "extend the Policy to cover cases clearly intended to be outside its scope." Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met".
Accordingly, notwithstanding the cases cited by Complainant, the Panel finds that Respondent's current use of the domain name in bad faith does not turn his good faith registration into bad.
Complainant has not established this element.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <waldorfnewyorkcity.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: January 17, 2025
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