Complainant is Morgans Group LLC of New York, New York, United States of America, represented by Dentons US, United States of America.
Respondent is Sanderson Morrison of Wilmington, Delaware, United States of America / Domain Admin, PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 25, 2013.
The Center verified that the amended 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 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2013.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on September 6, 2013. 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
Complainant is a hospitality company that operates boutique hotels worldwide, including the Sanderson Hotel in London, United Kingdom. Complainant has operated the Sanderson in London under the names and registered marks SANDERSON or SANDERSON HOTEL since the hotel’s opening in April 2000. Complainant has rights in the names and registered marks SANDERSON and SANDERSON HOTEL, as follows:
Trademark
Country
International
Class
Registration Number
Registration
Date
SANDERSON
United States
43
4,200,881
September 4, 2012
SANDERSON
European Community
36, 37, 43
9258997
February 22, 2011
SANDERSON HOTEL
European
Community
42
1496215
February 23, 2001
SANDERSON HOTEL
United Kingdom
43, 44, 45
2204608
March 29, 2002
SANDERSON
Russia
35, 37, 43
394832
November 27, 2009
SANDERSON
Turkey
35, 36, 37, 43
2011/74015
October 22, 2012
Complainant is the registrant of the domain name , and has operated the Sanderson website at this address since 2005.
Respondent created the Domain Name on January 16, 2013.
The Domain Name uses Complainant’s registered marks, SANDERSON and SANDERSON HOTEL, with the additional geographically descriptive term, London. London describes the location of Complainant’s Sanderson hotel.
Respondent has used the Domain Name to create at least one email address ending in “@”. The email address has been used to send emails purporting to be from Complainant’s Sanderson Hotel which are not in fact from that hotel. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to trademarks or service marks in which Complainant has rights.
Complainant contends that the Sanderson has developed a reputation as one of the leading boutique hotels in London since its opening in London in 2000, with over 50,000 guests and revenues in excess of US D15 million in 2012.
Complainant owns trademark registrations for the SANDERSON and SANDERSON HOTEL marks, with in the United States of America (“U.S”), (where Respondent is located), European Community Trademark (CTM), United Kingdom, Russia and Turkey. Complainant has used and advertised its SANDERSON and SANDERSON HOTEL marks for its well-known hotel, in the United States and elsewhere.
As a consequence of its trademark rights and use, Complainant contends that it has acquired a substantial reputation and goodwill associated with the names and registered marks SANDERSON and SANDERSON HOTEL, and has established rights in the registered marks SANDERSON and SANDERSON HOTEL under paragraph 4(a)(i) of the Policy.
The Domain Name consists of Complainant’s entire registered marks, SANDERSON and SANDERSON HOTEL, followed by the geographically descriptive term “London” and the .org top level domain. The addition of a geographically descriptive term such as “London”, which describes the location of Complainant’s Sanderson hotel, is insufficient to avoid a finding of confusing similarity to the marks in which Complainant has rights. The addition of the top level domain is a requirement of domain name registration and does not serve to identify a specific service provider. A domain name must include some form of top level domain. Therefore, the differences between the Domain Name and the trademarks are without legal significance.
In addition, Complainant contends that Respondent has used the Domain Name to send fraudulent emails to people containing false offers of employment at the Sanderson hotel. Respondent’s scheme is intended to create confusion with Complainant’s marks and to cause recipients of these emails to believe that the employment offers come from the Sanderson hotel when that is not true.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
Respondent does not operate a hotel known as “Sanderson”, “Sanderson Hotel”, “Sanderson London” or Sanderson Hotel London”, and is not otherwise known by the name “Sanderson”, “Sanderson Hotel”, “Sanderson London” or “Sanderson Hotel London”.
Respondent created the Domain Name 13 years after Complainant opened its Sanderson hotel, and many years after the Sanderson hotel became widely known as a London hotel.
In using the Domain Name to try to deceive victims into sending money and personal information to Respondent based on their false belief that they are dealing with Complainant’s Sanderson hotel, Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant contends further that Respondent registered and is using the Domain Name in bad faith to perpetrate an elaborate fraudulent scheme. Respondent uses an email address operated from the Domain Name such as “Sanderson Hotel ”, together with other references to Complainant’s marks, to offer “employment opportunities” at Complainant’s Sanderson hotel with the intent of deceiving members of the public into paying an upfront “Accommodation Registration Fee” and other fees to Respondent based upon the false employment offer.
Complainant contends that Respondent was aware of Complainant’s trademark rights when it registered the Domain Name. Respondent registered the Domain Name within months after Complainant obtained its U.S. trademark registration, and, shortly thereafter, Complainant became aware of Respondent’s use of the Domain Name in a fraudulent scheme to impersonate the Complainant or its Sanderson hotel for commercial gain. Respondent’s use of the Domain Name together with other references to Complainant’s registered SANDERSON and SANDERSON HOTEL marks to deceive victims into believing they have been offered employment at Complainant’s Sanderson hotel shows the Domain Name was registered and is used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent did not respond to the Complaint; therefore, the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint and in Respondent’s registration information available in the publicly available WhoIs database and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding and appears from the record to have achieved actual notice to PrivacyP.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has legal rights in its trademarks SANDERSON and SANDERSON HOTEL by reason of registration of those marks on the Principal Register of the USPTO, in the United Kingdom, the European Community and other national jurisdictions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1 (Ownership of a registered trademark generally satisfies the Policy requirement of having trademark rights). The evidence of record also establishes Complainant’s extensive use of the marks in commerce over a period of years predating Respondent’s registration of the Domain Name.
The Domain Name is confusingly similar to Complainant’s trademarks SANDERSON and SANDERSON HOTEL, incorporating both of those marks in their entireties and without variance in spelling. Prior UDRP panels have found such entire incorporation of another’s trademarks to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
The addition of the word “london” to the trademarks as part of the Domain Name does not negate confusing similarity but rather enhances it in that London is a geographic term that identifies the place where Complainant’s Sanderson Hotel is located. The top level domain “.org” is likewise ineffective to negate confusion.
Complainant has proved that the Domain Name is confusingly similar to trademarks in which it has rights, the first element of its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview 2.0, paragraph 2.1. However, where Complainant makes a prima facie case that Respondent does not possess such rights or legitimate interests, the burden of production shifts to Respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, Respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or legitimate interests, Complainant’s prima facie case will usually be found sufficient to meet Complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that Respondent may demonstrate rights or legitimate interests in the Domain Name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent use 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 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 consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, which Complainant has done in this case. There is nothing in the record to suggest that Respondent has ever been commonly known by the Domain Name.
The use of the Domain Name being made by Respondent, sending fraudulent emails to members of the public using the Domain Name to indicate falsely that the communication is from the Sanderson Hotel in an attempt to obtain funds from the recipient under false pretenses, is clearly not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name that would confer upon Respondent rights or legitimate interests in the Domain Name. See WIPO Overview 2.0, paragraph 2.6.
Complainant has established the second element of its case. C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith, and has clearly done so here.
Respondent used Complainant’s trademarks without alteration to create and register a Domain Name which Respondent then used to send emails that appeared to come from Complainant’s Sanderson Hotel making false offers of employment at the hotel and attempting to obtain payments from the recipient for employee housing at the hotel. There is no nuance here whatsoever. The record before the Panel, to which there has been no response, clearly establishes a fraudulent intent on the part of Respondent to create and exploit confusion as to the source of the email for unlawful commercial gain and, therefore, bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy.
The Panel concludes that Complainant has established the third and final element of its case. 7. Decision
For 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.
John R. Keys, Jr.
Sole Panelist
Date: September 20, 2013
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