WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lowe Wild Dunes Investors, LP, Commonwealth Washington Operating, Inc., Spruce Peak Realty, LLC, Squaw Creek Associates, LLC, L-O Tempe Hotel, Inc., Long Point Development, LLC v. Daniel Kirchhof, Unister GmbH Case No. D2010-0311 1. The Parties
The Complainants are Lowe Wild Dunes Investors, LP of Los Angeles, California, United States of America, Commonwealth Washington Operating, Inc. of Los Angeles, California, United States of America, Spruce Peak Realty, LLC of Stowe, Vermont, United States of America, Squaw Creek Associates, LLC of Olympic Valley, California, United States of America, L-O Tempe Hotel, Inc. of Tempe, Arizona, United States of America, and Long Point Development, LLC of Los Angeles, California, United States of America, represented by Manatt, Phelps & Phillips, LLP, United States of America.
The Respondent is Daniel Kirchhof, Unister GmbH of Leipzig, Germany. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and are registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2010. On March 1, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On March 2, 2010, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response, confirming that the 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, the Complainant filed an amendment to the Complaint on March 5, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2010.
The Center appointed David Perkins as the sole panelist in this matter on April 13, 2010. 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. Consolidation
4.1 The Complainants are 6 independent hotel operators, namely Lowe Wild Dunes Investors, LP (“Lowe”); Commonwealth Washington Operating, Inc (“Commonwealth”); Spruce Peak Realty, LLC (“Spruce”); Squaw Creek Associates, LLC (“Squaw”); L-O Tempe Hotel, Inc (“Tempe”); and Long Point Development, LLC (“Long Point”). Paragraph 4(f) of the Policy provides that in the event of multiple disputes with a respondent, the complainant may petition to consolidate such disputes before a single panel. Furthermore, paragraph 3(c) of the Rules provides
“(c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
4.2 General principles for establishing whether there may be multiple complainants have been given in Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331. Those general principles propose that if multiple complainants can show that they have a common grievance against the respondent and it would be equitable and procedurally efficient to permit to consolidation, consolidation may be appropriate. Moreover, to establish a common grievance against the respondent multiple complainants may demonstrate that they (i) have a common legal interest in the trade mark rights on which the complaint is based; or (ii) are the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.
4.3 Whether it is necessary for multiple complainants to meet the various criteria proposed by the general principles is, in this Panel's opinion, open to question. In any event, the allowability of multiple complainants should be determined on a case-by-case assessment of the facts. This Panel is wary of introducing complexities into the essentially simple and expeditious procedure, which is provided by the Policy and the Rules. As far as this Panel is concerned, one of the essential consideration is to ensure that there is no inequality involved in permitting multiple complainants to consolidate their individual complaints. That requirement will be met provided that the respondent is given a fair opportunity to present its case (See, paragraph 10(b) of the Rules). The Panel further notes in this regard that the Panel is specifically empowered to decide a request to consolidate multiple domain name disputes (See, paragraph 10(e) of the Rules). Provided the parties are treated with equality, the Panel has a wide discretion in relation to conduct of the proceeding as appropriate.
4.4. In this case all the disputed domain names were registered by the same Respondent over the period of July 17 to 21, 2009 the domain names are all similar to the Complainants' trademarks, and the Respondent is using the disputed domain names in precisely the same way. Namely, to mislead members of the public who make reservations for the Complainants' hotels through the Respondents' website at “” to which the disputed domain names all resolve into believing that they are dealing with the Complainants. In the circumstances, equity and procedural efficiency justify consolidation. 5. Parties 5.A The Complainants
5.A.1 The Complainants are owners and operators of hotels and resorts in the United States of America The Complainants' Trademarks
5.A.2 The Complainants are the proprietors of the following registered trademarks
Country Registrant Reg. No. Mark Class Dates of Application & Registration First Use
United States
Lowe
2,103,080
WILD DUNES & design
36
Filed: 1996/08/09
Registered: 1997/10/07
1984/03/01
United States
Lowe
2,681,427
WILD DUNES & design
36
Filed: 2002/05/07
Registered: 2003/01/28
1984/10/01
United States
Lowe
2,975,307
WILD DUNES
35, 39, 41, 43-45
Filed: 2003/11/05
Registered: 2005/07/26
1980/03/31
United States
Lowe
2,975,308
WILD DUNES & design
35, 39, 41, 43-45
Filed: 2003/11/05
Registered: 2005/07/26
1980/03/31
United States
Commonwealth
3,599,238
SKAMANIA LODGE & design (“Lodge” disclaimed)
43
Filed: 2007/06/12
Registered: 2009/03/31
1993/12/31
United States
Commonwealth
3,671,110
SKAMANIA LODGE & design (“Lodge” disclaimed)
35, 41, 43-45
Filed: 2006/09/14 Registered: 2009/08/18
1993/02/23
United States
Spruce
3,502,974
STOWE MOUNTAIN LODGE (“Lodge” disclaimed)
43
Filed: 2004/12/03 Registered: 2008/09/16
2008/06/14
United States
Squaw
3,654,778
RESORT AT SQUAW CREEK (“Resort” disclaimed)
25, 36, 37, 41, 43, 44
Filed: 2005/07/20
Registered: 2009/07/14
1991/12/01
United States
Tempe
2,027,319
TEMPE MISSION PALMS
42
Filed: 1996/04/05 Registered: 1996/12/31
1992/01
United States
Tempe
2,074,016
TEMPE MISSION PALMS & design
42
Filed: 1996/08/13
Registered: 1997/06/24
1992/01
United States
Long Point
3,732,805
TERRANEA
21, 25, 35, 43, 45
Filed: 2005/05/06
Registered: 2009/12/12
2009/06/12
5.A.3 The Complainant Lowes' WILD DUNES Hotel is located in Isle of Palms, South Carolina, United States. 5.B The Respondent
5.B.1 No Response has been filed. Accordingly, the information relating to the Respondent is derived from the Complaint.
5.B.2 As noted in paragraph 4.4 above, the Respondent registered the disputed domain names between July 17 and 21, 2009. All of those domain names resolve to the Respondent's website at “”. That website posts pictures of each of the Complainants' hotels, solicits reservations to such hotel and requests the Internet users credit card particulars for the purpose of booking reservations at the hotel. Internet users making and paying for a reservation through the website arrive at the hotel only to find that the hotel has no record of the reservation.
5.B.3 In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,WIPO Case No. D2009-1661, the Respondent registered over 1500 domain names which were held to be confusingly similar to trademarks of the InterContinental Hotels Group, namely “InterContinental”; “Crowne Plaza”; “Holiday Inn”; “Holiday Inn Express”; “Candlewood Suites”; “Staybridge Suites” and “Hotel Indigo”. The majority of the disputed domain names in that case were registered in the period of July 17 and 21, 2009, the same period during which the disputed domain names in this case were registered. Those domain names also resolved to the website at “”, which contained photographs of hotels which were extremely similar to those appearing on the complainants' website and offered a reservation service at those hotels. 6. Parties' Contentions 6.A. Complainants Identical or Confusingly Similar
6.A.1 The Complainants are the proprietors of each of the registered trademarks set out in Section 5.A.2 above. First use of each of those trademarks predates registration of the disputed domain names over the July 17 and 21, 2009 period and the trademarks relied upon by the Complainants were all filed and/or registered before July 17, 2009.
6.A.2 In terms of confusing similarity, the Complaint helpfully provides the following chart:
6.A.3 As to the Complainant Lowe's WILD DUNES registered trademarks, one of the disputed domain names, , includes the location of the WILD DUNES resort at Isle of Palms: see, paragraph 5.A.3 above. Four of the disputed domain names are identical to the Complainants' registered trademarks. The remaining two include the descriptive suffix “resort” but are otherwise identical.
6.A.4 The use of hyphens to separate the words comprising the disputed domain names does not, the Complainants state, alter the contention that those domain names are, as it appears from the chart, either identical or confusingly similar to the Complainants' trademarks. Rights or Legitimate Interests
6.A.5 The Complainants say that the Respondent cannot demonstrate that any of the circumstances of paragraph 4(c) of the Policy apply.
6.A.6 Specifically, none of the Complainants have licensed or otherwise authorized the Respondent to use their respective trademarks for the disputed domain names. Consequently, the Respondent has no right to solicit reservations on the Complainants' behalf at their hotels by using the disputed domain names. The Respondent is, the Complainants state, using the identical and confusingly similar domain names to generate revenue through unauthorized and illegitimate solicitation and acceptance of reservations for the hotels. This, the Complainants state, amounts to defrauding the public, since the reservations made through the Respondent's website – to which the disputed domain names resolve – appear to be of no force or effect. This conduct cannot, the Complaint says, constitute use of the disputed domain names in connection with a bona fide offering of services. Nor, the Complaint states, is it a legitimate noncommercial or fair use of those domain names, since it is misleading consumers for the Respondent's commercial gain.
6.A.7 There is no evidence, the Complainants state, that the Respondent is commonly known by any of the disputed domain names. Registered and Used in Bad Faith
6.A.8 The Complainants say that the facts of this case fall within the circumstances set out in paragraph 4(b)(iv) of the Policy.
6.A.9 First, all of the marks – with the exception of TERRANEA – were registered before the disputed domain names were registered. As to TERRANEA, both the trademark application and first use predate the Respondent's registration on July 21, 2009 of the disputed domain name although the trademark was not registered until December 2009. Further, all the Complainants' trademarks are distinctive, because they are either arbitrary or suggestions of the goods and services offered by the Complainants.
6.A.10 Second, the Respondent has engaged in a pattern of similar conduct as is illustrated by Inter-Continental Hotels Corporation, Six Continents Hotels, Inc., supra (paragraph 5.B.3).
6.A.11 Third, the disputed domain names are being used in bad faith because the website to which they resolve purports to be the legitimate venue for making reservations for their hotels / resorts, when it is not so authorized. In so doing, the Respondent is taking advantage of the Complainants' reputation in its trademarks, without license or authorization, and is thereby creating a likelihood of confusion with Internet users accessing the Respondent's website (through the disputed domain names) in the mistaken belief that they are actually dealing with the Complainants or they are authorized by the Complainants to make reservations on the Complainants' behalf. 7. Discussions and Findings
7.1 The Policy, paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names were registered and are being used in bad faith.
7.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain names.
7.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain names in bad faith.
7.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
7.5 The Complainants have trademarks and service mark rights in the United States: see, paragraph 5.A.2 above.
7.6 With the exception of the hyphen, the following disputed domain names are identical to the following trademarks:
Disputed Domain Names Complainant's Registered Trademarks
SKAMANIA LODGE & design
STOWE MOUNTAIN LODGE
RESORT AT SQUAW CREEK
TEMPE MISSION PALMS
The addition of the hyphens is irrelevant in terms of finding identicality with the trademarks. Accordingly, the Complaint in respect of the above disputed domain names satisfies the requirements of paragraph 4(a)(i) of the Policy.
7.7. The disputed domain name incorporates the Complainant Long Point's TERRANEA registered trademark. The addition of the suffix “resort” to the domain name is merely descriptive and does not avoid the obvious confusing similarity of that domain name with the Complainant's mark. Accordingly, the Complaint in respect of that domain name also satisfies the requirements of paragraph 4(a)(i) of the Policy.
7.8 For the same reason, the Complaint in relation to the disputed domain name succeeds. That domain name is confusingly similar to the Complainant Lowes' WILD DUNES trademark.
7.9 The disputed domain name also incorporates the Complainant Lowes' WILD DUNES trademark. The addition of the prefix “isle-of-palms” is merely informative of the location of the well-known WILD DUNES resort which has been trading since 1984. That prefix does not avoid the obvious confusing similarity of the domain name with the WILD DUNES trademark. Accordingly, the Complaint in respect of that domain name also satisfies the requirements of paragraph 4(a)(i) of the Policy.
7.10 In sum, the Complaint satisfies paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
7.11 There is nothing on the facts of the way in which the disputed domain names are used which could, in the Panel's opinion, amount to use in connection with a bone fide offering of goods or services; paragraph 4(c)(i) of the Policy.
7.12 Nor is there any reason to suspect that the Respondent could bring himself within paragraph 4(c)(ii) of the Policy.
7.13 In the absence of a license or other authorization from the Complainants to use their trademarks, it is plain from the way in which the disputed domain names are used – as to which, see paragraphs 4.4 and 5.B.2 – that such use cannot constitute noncommercial or fair use for the purposes of paragraph 4(c)(iii) of the Policy.
7.14 Hence, there is nothing on the facts of the case as set out in the Complaint – to which no Response has been filed – which could give rise to a showing of rights or legitimate interests and, accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
7.15 The Panel finds the Complainants' case that the circumstances of paragraph 4(b)(iv) of the Policy apply on the facts of this administrative proceeding is made out. Those facts are summarized in paragraphs 4.4 and 5.B.2 above. Accordingly, the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 names (1) and be transferred to the Complainant, Lowe Wild Dunes Investors, LP; (2) be transferred to the Complainant, Commonwealth Washington Operating, Inc; be transferred to the Complainant, Squaw Creek Associates, LLC; be transferred to the Complainant, Spruce Park Realty, LLC; be transferred to the Complainant, L-O Tempe Hotel, Inc., and be transferred to the Complainant, Long Point Development, LLC.
David Perkins
Sole Panelist
Dated: April 28, 2010
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