WIPO Domain Name Decision D2009-0962 for viceroyabudhabi.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viceroy Hotels, L.L.C., Kor Cayman Ltd. v. Mr. Syed Hussain Case No. D2009-0962 1. The Parties

Complainants are Viceroy Hotels, L.L.C. of Los Angeles, California, United States of America and Kor Cayman Ltd., George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Neal, Gerber & Eisenberg, United States.

Respondent is Mr. Syed Hussain, Closter, New Jersey, United States. 2. The Domain Name and Registrar

The disputed domain name is registered with Netfirms, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2009. On July 17, 2009, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On July 17, 2009, Netfirms, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 23, 2009. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 14, 2009.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 19, 2009. 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

Complainants own numerous issued and pending registrations for the service mark VICEROY in several countries. Complainant Viceroy Hotels owns United States Registration No. 2,741,530 for VICEROY as a service mark in International Class 43, registered July 29, 2003. Complainants also registered several domain names for their hotel and resort properties, which generally follow the pattern of .1

The disputed domain name does not presently route to an active webpage, however, Complainants annexed to their Complaint screen shots of the page as it appeared on April 21, 2009. At that time, the URL routed to a Sedo domain parking page, containing advertising links to third parties in competition with Complainants' hotel and resort chain. 5. Parties' Contentions A. Complainants

Complainant Viceroy Hotels contends that it owns the rights to a family of VICEROY marks in the United States used in connection with services related to the operation of boutique hotels and resorts. Complainants explain that Complainant Kor Cayman Ltd. is an affiliate under the same beneficial ownership as Complainant Viceroy Hotels, and that Kor Cayman Ltd. owns the rights to the VICEROY marks in many international jurisdictions. Complainants aver that Complainants have for several years used their VICEROY marks to promote branded hotel and resort properties and related services. At present, Complainants are operating or developing hotel and resort properties in Snowmass, Colorado, Mayakoba, Mexico, Danang, Viet Nam and Abu Dhabi, United Arab Emirates.

As supported in exhibits to the Complaint, Complainants aver that on April 18, 2009, Complainants publicly announced the plans to open a VICEROY-branded property in Abu Dhabi. Complainants also aver that Respondent registered the domain name the same day. Explaining that there was never consent to such registration, Complainants allege that their legal counsel sent a letter by Federal Express and email to Respondent on April 29, 2009 demanding that Respondent cease use of the domain name and immediately transfer it to Complainants. As supported by Complainant's Exhibit 9, Respondent replied by brief email the same day, refusing Complainants' demand to cease use of the disputed domain name and offering it for sale for USD 2,500.

Complainants also allege that shortly after receiving the April 29, 2009 demand letter, Respondent “attempted to obscure his ownership of the . . . domain name by employing a proxy registration service”. Complainants aver that their counsel sent a further demand letter on May 14, 2009 and that Respondent “again responded with a short email on the same day indicating that counsel for Viceory Hotels should either make an offer to purchase the . . . domain name or ‘take me to court.'” Complaint Exhibit 13.

Complainants contend that the disputed domain name is confusingly similar to the VICEROY service marks in which Complainants have rights; that Respondent has no rights or legitimate interests with respect to the disputed domain name; and that the domain name was registered and is being used in bad faith.

Complainants underscore their position by alleging that the website to which the disputed domain name routes was obviously registered and used in bad faith because: (1) it was registered in response to Complainants' April 18, 2009 launch announcement; (2) the website uses a domain name confusingly similar to Complainants' marks for the purpose of earning pay-per-click revenues (citing The Evening Store v. Henry Chan,WIPO Case No. D2004-0305); (3) Respondent was aware of Complainants' practice of registering domain names in the format and has therefore registered in order to prevent Complainants from registering the VICEROY mark specifying an Abu Dhabi development as a “.com” domain name; (4) Respondent has attempted to use a proxy registration service to obscure his identity; and (5) Respondent has been found to have a history of having engaged in abusive registration, as found by panels in prior cases (see Compagnie Gervais Danone v. Domain Management,WIPO Case No. D2008-1239).

On the basis of the above allegations, Complainants seek transfer. B. Respondent

Respondent did not reply to Complainants' contentions. 6. Discussion and Findings A. Notification of Proceedings to Respondent

The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The Center notified the proceedings to Respondent by using a courier service, directed to the address listed in the whois record for the domain name. The courier package was sent to Respondent's address, but Respondent, according to the courier company records, apparently refused delivery. The Center also notified Respondent by using the email addresses provided for the disputed domain name by the registrar in its verification response to the Center.

The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the whois records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent. B. Substance of the Complaint and Applicable Standards

The Rules require the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Complainants must establish these elements even if Respondent does not respond to the allegations of the Complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). C. Identical or Confusingly Similar

Although the disputed domain name is not identical to Complainants' trademarks, the Panel agrees with Complainants and concludes that Respondent's domain name is confusingly similar to Complainants' marks.

The disputed domain name is made up of the simple combination of the Complainants' VICEROY mark and the name of the United Arab Emirates city of Abu Dhabi.

Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan,WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).

Moreover, panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.

Consistent with previous decisions, the Panel agrees that the addition of a city name to Complainants' trademarks does not alter the confusion between Complainants' marks and the disputed domain name that Internet users would experience. NBC Universal, Inc. v. Web Advertising, Corp. a/k/a Maison Tropicale S.A., WIPO Case No. D2008-0865.

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainants' VICEROY marks. D. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).

Based on the annexes to the Complaint, Respondent's website was offering sponsored link advertising. By diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainants' marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.

In the absence of a Response, the Panel accepts as true Complainants' allegations that Respondent has no authorization to use the VICEROY mark in its domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainants' marks for Respondent's own commercial purposes.

The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.

Filing no Response, Respondent has not rebutted Complainants' prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the domain name.

Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

The Panel infers that Respondent registered the disputed domain name intending to trade on the reputation of Complainants' marks. As noted by Complainants, Respondent moved immediately to register the disputed domain name the same day that Complainants made their press announcements to launch their new hotel and resort property in Abu Dhabi. Based on the evidence submitted in the Complaint, Complainants' marks were registered internationally and widely used to market products and services before Respondent registered the disputed domain name. The timing of Respondent's registration can hardly be coincidence, and the Panel infers therefore that Respondent was aware of Complainants' VICEROY trademark when Respondent registered the disputed domain name.

The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainants' marks. This constitutes substantial evidence that Respondent registered and is using the domain names in bad faith. See, e.g., The Evening Store v. Henry Chan, supra.

Other circumstances, discussed below, also support the Panel's conclusion that Respondent registered and is using the disputed domain name in bad faith.

First, Respondent's failure to respond to the Complaint and its refusal to accept the notification sent by the Center constitute evidence of Respondent's use of the disputed domain name in bad faith. Telstra, supra.

Second, the Panel acknowledges that Respondent may have attempted to conceal its identity. The use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id. In this case, however, Respondent is a serial cybersquatter with a well-established history of abusing the trademark rights of others.2 Based on the record in this case, Respondent has an apparent bad faith motive for using a privacy registration service, to avoid responsibility for his abusive conduct. The Panel finds, therefore, that Respondent's use of a proxy service is cumulative evidence of Respondent's bad faith. See, e.g., Canadian Tire Corp. Ltd v. CK Aspen, WIPO Case No. DTV20007-0015) (also citing other decisions finding use of privacy registration services as indications of bad faith).

Third, several decisions under the Policy have found Respondent to have acted promptly to offer the sale of infringing domain names upon receiving demand letters from trademark holders, suggesting that Respondent is engaged in a regular practice of registering domain names simply for the purpose of selling them back to interested trademark owners. Compagnie Gervais Danone v. Domain Management, Syed Hussain, supra (noting that “panels have been highly critical of Mr. Hussain's behaviour and made adverse comments as to Mr. Hussain's honesty”); see also LSG Lufthansa Service Holding AG v. Syed Hussain WIPO Case No. D2009-0636 (“On this basis, the Panel is satisfied that such circumstances duly support the finding that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to it.”)

The record in this case demonstrates exactly the same conduct by Respondent. The Panel finds therefore that this is a clear case of bad faith registration and use within the meaning of 4(b)(i) of the Policy.

Finally, in addition to the decisions cited above, other available decisions under the Policy involving Respondent show that Respondent has engaged in a pattern of registering domain names which are confusingly similar to third party trademarks for abusive purposes. This is yet another confirmation of Respondent's bad faith. See, e.g., id (citingMyxer Inc. v. Marketing Total S.A., Domain Drop S.A., Keyword Marketing, Inc.,WIPO Case No. D2008-0169; Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,WIPO Case No. D2007-1236, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834).

In the absence of any attempt by Respondent to demonstrate otherwise, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is also satisfied. 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 Complainant, Viceroy Hotels, L.L.C.

Jeffrey D. Steinhardt
Sole Panelist

Dated: September 1, 2009

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