WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Soho House Limited v. Jack Mui Case No. D2008-1696 1. The Parties
The Complainant is Soho House Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, of London, United Kingdom.
The Respondent is Jack Mui, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008.
On November 6, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name.
On November 6, 2008 (with further clarification on November 11, 2008), GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 17, 2008.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any formal Response, although two informal email communications were received from the Respondent by the Center, on November 10, 2008 and December 10, 2008, respectively.1 Accordingly, the Center notified the Respondent's default on December 9, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on December 18, 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 Soho House, an internationally famous private members' club and hotel with locations in London and New York. The Complainant offers, inter alia, bar, restaurant, and accommodation services to its members under the SOHO HOUSE trade mark. The SOHO HOUSE brand is the Complainant's core brand. The Complainant is also the owner of other members clubs located in the United Kingdom including, Babington House (Somerset), Electric House (Notting Hill), High Road House (Chiswick) and Shoreditch House (Shoreditch, East London). The Complainant also owns SOHO HOUSE New York.
The Complainant owns, inter alia, the following trade mark registrations consisting of or including the words “SOHO HOUSE”:
1. United Kingdom Registration No. 2206659 for the mark SOHO HOUSE, filed August 24, 1999;
2. United Kingdom Registration No. 2206655 for the mark SOHO HOUSE (logo), filed August 24, 1999;
3. United States Registration No. 2610810 for the mark SOHO HOUSE, filed October 13, 1999; and
4. German Registration No. 39959994 for the mark SOHO HOUSE, filed September 28, 1999.
The Complainant is also the registrant of the domain names , and .
The Complainant has used the trading name SOHO HOUSE since 1995.
The Complainant has acquired a significant worldwide reputation in the mark SOHO HOUSE through its use over the past 13 years.
The Disputed Domain Name was registered on September 14, 2005.
The Respondent is Jack Mui.
The Complainant is seeking the transfer of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant asserts that it has acquired a significant and famous worldwide reputation in the mark SOHO HOUSE through its use over the past 13 years. The Complainant further asserts that the SOHO HOUSE brand is synonymous with an upscale private members' club with locations in New York and a top hotel in London. The Complainant contends that the significant reputation and consumer recognition of its mark gives rise to a protectable right. Through use of the SOHO HOUSE mark, extensive world-wide press and television coverage, and the reputation of services offered under the mark, the Complainant contends it has established a highly recognisable, distinctive and enforceable reputation in its mark in addition to its registered rights. The Complainant contends that the Respondent's use of the Disputed Domain Name amounts to a misrepresentation and takes unfair advantage of the Complainant, its' brand and its' rights in the brand.
The Complainant considers the Disputed Domain Name to be identical or confusingly similar in all material respects to SOHO HOUSE mark.
The Complainant believes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has registered the domain name for the purpose of commercial gain by providing advertising links to third party websites offering identical, similar or associated services to those provided by the Complainant. The Complainant adduced evidence that the Disputed Domain Name is for sale and the Complainant contends in this regard that it has to be assumed that the Disputed Domain Name has been registered for the purposes of transferring the Disputed Domain Name to the Complainant or to a competitor, for valuable consideration.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. 6. Discussion and Findings A. UDRP Elements
If the complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent. B. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of it's ownership of both registered and unregistered rights in the SOHO HOUSE trademark.
The Disputed Domain Name is not identical to the Complainant's mark. However the use of the words “SOHO” and “HOME” in combination and in particular in connection with the offer of accommodation services, including accommodation services located in London and New York, does suggest that the Disputed Domain Name is confusingly similar to the Complainant's mark. The word “SOHO” is the principal and distinctive element of the Disputed Domain Name. The word “home” is visually similar and conceptually identical to the word “house”. The Panel considers that the Disputed Domain Name would cause confusion in the minds of Internet users leading them to believe mistakenly that the Respondent's site is authorized by or associated with the Complainant.
The Panel considers that the Complainant has satisfied Paragraph 4(a)(i) C. Rights or Legitimate Interests
The Complainant must make out at least a prima facie case that the Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy (summarized below) gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) an indication that the registrant has been commonly known by the domain name even if has acquired no trademark rights; or
(iii) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as prima facie evidence proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. The Respondent appears to be operating a domain name parking site at the Disputed Domain Name. The Panel notes that the Disputed Domain Name is advertised for sale on S and the Respondent's site features inter alia links to competing accommodations. There is no evidence supportive of the premise that the Respondent is operating a bona fide business through its site, or that it is affiliated with, or authorised by, the Complainant. The Complainant has therefore made out a prima facie case.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether or not in this case the Respondent has no legitimate rights or interest in the Disputed Domain Name as a consequence of its actions. Previous panels have found that domain name parking is not necessarily indicative of bad faith. In this case the Disputed Domain Name is being used in connection with a site which has listed third party accommodation providers and in circumstances as further outlined below which are indicative of bad faith. In these circumstances the Panel finds that the Respondent's use is illegitimate. The Respondent has failed to adduce any evidence to persuade the Panel otherwise.
Therefore the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the respondent has] registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 the [respondent's] website or location or of a product or service on [respondent's] website or location.
For the purposes of paragraph 4(b)(i) of the Policy the Panel is persuaded to infer that the Disputed Domain Name was registered primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to either the Complainant itself or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name. The Respondent's site contains a banner hyperlink which states that the Disputed Domain Name “maybe for sale by its owner”. By clicking on said hyperlink the user is directed to S which advertises the Disputed Domain Name for sale.
For the purposes of paragraph 4(b)(iii) of the Policy the Complainant contends that the Respondent has used the Disputed Domain Name to re-direct traffic, for commercial gain, to third party websites, including websites which offer accommodation in London and New York. Certainly it appears that competing accommodation sites are linked to the Respondent's site at the Disputed Domain Name and that the Respondent is using the undisputed reputation of the Complainant's mark to profit from the obvious association with the Disputed Domain Name by attracting Internet users to the Respondent's website in order to generate hits on sponsored links at said site.
Additional evidence of bad faith can be adduced from the fact that the Complaint has been trading under the SOHO HOUSE name since 1995. The Respondent registered the Disputed Domain Name in 2005. The Panel considers that the Respondent was aware of the SOHO HOUSE mark and its extensive reputation at the time of registration. The Complainant has provided sufficient evidence showing that the SOHO HOUSE name was prevalent in United States publications including the Los Angeles Times, Daily Variety, and the San Francisco Chronicle covering the period 2003 onwards. The Panel notes paragraph 2(d) of the Policy which states that “…it is [the respondent's] responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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.
Alistair Payne
Sole Panelist
Dated: January 12, 2009
1 Those emails read: “please let me know how to defend my domain. i am the official owner of this domain . thank you” and “what happen to my case? am i lose my domain? that is not fair at all,”. The Center replied on November 11, 2008 and December 10, 2008 respectively, each time providing e.g., information and links for general UDRP information, and in particular, Response filing information and guidelines.
Full & Egal Universal Law Academy