The Complainant is Morgans Group LLC of New York, United States of America, internally represented.
The Respondent is Salman Malik Shah of Kuala Lumpur, Malaysia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2015, the Registrar 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 February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2015.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 27, 2015. 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 in this proceeding is Morgans Group LLC, hereinafter referred to as the “Morgans Group” or the “Complainant”. The Complainant is a fully integrated lifestyle hospitality company that operates, owns, acquires, develops and redevelops boutique hotels, primarily in gateway cities and select markets in the United States, Europe and other international locations.
The Complainant has proven that the trademarks ST MARTINS, ST MARTINS LANE and ST. MARTINS LANE HOTEL enjoy protection in many registrations.
The Complainant is inter alia the owner of:
Community Trademark Registration ST. MARTINS LANE HOTEL Application No. 001496017 registered on February 23, 2001 and covering services falling in class 42 (e.g. Hotel services etc.).
Community Trademark Registration ST MARTINS LANE Application No. 011867892 registered on October 15, 2013 and covering services falling in class 43 (Services for providing food and drink; temporary accommodation; accommodation bureaux [hotels, boarding houses]; etc).
The United Kingdom of Great Britain and Northern Ireland Trademark Registration ST MARTINS No. UK00002204622 registered on June 16, 2000 and covering services falling in class 42 (e.g. Hotel services etc.).
Additionally, the Complainant owns or partially owns and manages 18 hotels. These include the St Martins Lane and Sanderson hotels in London.
The Complainant’s trademarks registrations long predate the registration of the disputed domain name.
The disputed domain name was registered on October 28, 2014. The disputed domain name at present is not active, whereas it appears from the documents provided by the Complainant that previously it was used to post a counterfeit hotel booking website. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to Complainant’s ST MARTINS, ST MARTINS LANE and ST. MARTINS LANE HOTEL registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service 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. A. Identical or Confusingly Similar
The Complainant has established rights in the ST MARTINS, ST MARTINS LANE and ST. MARTINS LANE HOTEL trademarks.
This Panel agrees with the Complainant’s assertion that the addition of the geographical term “London” in the disputed domain name is irrelevant in the determination of the confusing similarity between the Complainant’s trademarks and the disputed domain name.
On the contrary, this Panel is of the opinion that the addition of the “London” term, is more likely to increase the likelihood of confusion rather than diminish it, owing to the fact that it precisely refers to a city where two of the Complainant’s hotels are located, namely the St. Martins Lane and Sanderson hotels.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademarks ST MARTINS, ST MARTINS LANE and ST. MARTINS LANE HOTEL in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “ST Martins Lane” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering that the Complainant’s trademarks have been registered and used for many years and thus long predate the disputed domain name’s registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s services and trademarks and deliberately intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e. to post a counterfeit hotel booking website, falls within the example of bad faith set out in paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Moreover, this Panel finds appropriate and agrees with the Complainant’s assertion that “Respondent’s attempt to capitalize on Complainant’s well-known trademarks by luring unsuspecting internet users to its website in order to obtain personal information, perhaps in conjunction with some further fraudulent activity, does not constitute a use in connection with a bona fide offering of goods and services, or any other legitimate use or interest in the disputed domain name”.
Indeed, it is the Panel’s opinion that the above represents evidence of registration and use of the disputed domain name in bad faith. The fact that the website at the disputed domain name is currently inactive does not affect the Panel’s findings above (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: March 4, 2015
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