WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LXR Holdco, LLC v. Much Media S.A./WHOIS Identity Shield
Case No. D2008-0958
1. The Parties
The Complainant is LXR Holdco, LLC, New York, New York, United States of America, of United States of America, represented by Lydecker, Lee, Behar, Berga & DeZayas, LLC, United States of America.
The Respondent is Much Media S.A./WHOIS Identity Shield, Apartado, Panama.
2. The Domain Name and Registrar
The disputed Domain Name is registered with N LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2008. On June 25, 2008, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Name at issue. On June 26, 2008, N LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2008 providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 1, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2008.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of unregistered trade mark rights for Condado Plaza Hotel dating back to 1983.
The Respondent, based in Panama registered the Domain Name on June 5, 2008 and has not responded to the Complaint. The Respondent's web site attached to the Domain Name directs users to links for the Complainant's Condado Plaza Hotel. There are also several other links to direct competitors of the Complainant.
5. Parties' Contentions
A. Complainant
Submissions in the Complaint can be summarized as follows:
The Complainant has owned and operated the name “Condado Plaza Hotel” for its hotel, resort and casino services since 1983. As a result of its longstanding, consistent, and exclusive use, the Complainant has built up significant goodwill in its common law trade mark for Condado Plaza Hotel. The Complainant previously enjoyed, through its predecessor, a federal trade mark registration in the United States Patent and Trademark Office for Condado Plaza Hotel & Casino that was cancelled in 1999 for failure to renew. The Complainant did not renew the registration; however, the Complainant has common law trade mark rights in and to the name, which are protected under Policy and Rules.
The Complainant has enjoyed 11 years of rights in the Domain Name, had the Condado Plaza Hotel & Casino trade mark for 15 years and it is 25 years since the Complainant first used its “Condado Plaza Hotel” name through its predecessor in 1983.
The Domain Name wholly incorporates the Complainant's trade mark Condado Plaza Hotel. Members of the public are likely to be confused and assume the Domain Name is in some way connected with the Complainant when it is not.
The Policy is broad in scope in that the reference to a trade mark or service mark in which the complainant has rights means that ownership of a registered trade mark is not required – unregistered or common law trade mark or service mark rights will suffice to support a domain name complaint under the Policy. As a result of the Domain Name being identical to the Complainant's trade mark, the public could easily confuse the Complainant's trade mark with the Domain Name at issue.
The Respondent has no legitimate interests or rights in the Domain Name. Firstly, there are no offerings of goods or services on the site linked to the disputed Domain Name; secondly, the web site links to the Complainant's web site; and thirdly, the Domain Name is merely a parking space for advertisers for a fee to Respondent, evidenced by the several different links to other web sites. Further, the sponsored link activity on the web sites associated with the disputed Domain Name is not legitimate as it creates a false sense of association, affiliation or sponsorship with the Complainant.
The Complainant has at no time authorized the Respondent's use of its Condado Plaza Hotel trade mark. On all pages associated with the disputed Domain Name, when the user clicks on the link for Condado Plaza Hotel, the user is directed to another page that contains a link to the Complainant's hotel under the title “sponsored results for Condado Plaza Hotel” and the Complainant's “www.” URL appears and it does link to the Complainant's site. This further exaggerates the false impression to users that the Respondent's Domain Name is authorized, sponsored or endorsed by the Complainant.
Furthermore, the web site features several links to competitors of the Complainant and once the user clicks on those links, they are taken to pages offering hotel services not connected with the Complainant. This presents the idea to Internet users a connection between the Complainant and Respondent, which is clearly a false representation.
The Respondent registered the Domain Name and is using it in bad faith. The Domain Name is connected to a web site listing a number of third party web sites relating to hotel services in the same area of business as the Complainant and also links to the Complainant's site. Accordingly, the content advertised on the web site linked with the disputed Domain Name demonstrates the Respondent's knowledge of the Complainant's rights in the Condado Plaza Hotel trade mark. The Respondent intended to capitalize upon the Complainant's goodwill in its trade mark for Condado Plaza Hotel and with the expectation and intention that the similarity between the disputed Domain Name and Complainant's domain name would result in Internet users searching for information in relation to the Complainant and mistakenly arrive at the Respondent's disputed web site and it would profit by charging advertisers benefiting from such confusion.
B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's trade mark and the generic word “hotel” the business the Complainant is in. The addition of “hotel” does not serve to distinguish the Domain Name from the Complainant's mark, but indeed compounds the likelihood of confusion. As such the Domain Name is confusingly similar to the Complainant's trade mark and will be presumed by customers to be affiliated with the Complainant.
B. Rights or Legitimate Interests
The Respondent has offered no explanation to counter the Complainant's contention that it has no rights and legitimate interests in the Domain Name. It has used the Domain Name to point to web sites which offer competing hotel services to that of the Complainant as well as the Complainant's web site and has not given any explanation as to why it should be entitled to do so. As such, the Panel holds that based on the record the Respondent has not used the Domain Name in relation to the bona fide offering of services and has no other rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on [its] web site or location.”
The Domain Name has been used to link to a web site offering competing hotel services to those of the Complainant's. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its web site. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: August 19, 2008
Full & Egal Universal Law Academy