The Complainant is Ennismore International Management Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Dechert LLP, United Kingdom.
The Respondent is Tanasia Park, Vassili Group LLC of Miami, Florida, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name (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 October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 21, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 16, 2015.
The Center appointed John Swinson as the sole panelist in this matter on November 19, 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 is Ennismore International Management Limited of the United Kingdom. The Complainant owns the "Hoxton" chain of hotels, the first of which was opened in Shoreditch (an area of London) in 2006. Further Hoxton hotels are now open in Holborn (London) and Amsterdam. The Complainant intends to open further hotels in 2016 in New York and Paris. Each hotel has a bar and restaurant that is open to the public.
The Complainant owns registered trade marks for THE HOXTON in a number of jurisdictions, including the United States, Europe and the United Kingdom (the "Trade Mark"). The earliest of these was registered on June 22, 2006. The services covered by these registrations include bar and restaurant services.
The Complainant also owns a domain name which incorporates the Trade Mark, being .
The Respondent is Tanasia Park of Vassili Group LLC. The Respondent did not provide a formal response to the Complaint, so the Panel has little further information about the Respondent.
The Respondent registered the Disputed Domain Name on October 3, 2012. The website at the Disputed Domain Name promotes a beach house-themed bar in Miami, United States known as "The Hoxton" (the "Respondent's Business"), which apparently is no longer operating.
Based on its review of the case file, the Panel understands that Vassili Group LLC owned and operated this business. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Complainant owns the goodwill in the Trade Mark internationally. The Complainant has developed a substantial reputation in the Trade Mark through continued use since 2006.
The Disputed Domain Name is identical and/or confusingly similar to the Trade Mark in which the Complainant has rights. The Disputed Domain Name consists of the dominant and distinctive part of the Trade Mark (HOXTON), along with the non-distinctive geographical suffix "Miami". These additions are not sufficient to avoid a finding of confusing similarity. Rights or Legitimate Interests
The website at the Disputed Domain Name promotes a restaurant and bar in Miami which is no longer operational.
Due to the international reputation of the Complainant's business, it is reasonable to infer that the Respondent, or the Respondent's organization, was aware of the Complainant's business and the Trade Mark at the time the Disputed Domain Name was registered. This inference is proved by the fact that articles from 2012 state that the Respondent's Business was inspired by places such as Shoreditch in London.
The Disputed Domain Name was chosen by the Respondent and the Respondent's organization to benefit from an unauthorized and unpermitted association with the Trade Mark by drawing Internet traffic and trade to the Disputed Domain Name and the Respondent's Business.
The Respondent's use of a confusingly similar domain name and website offering services identical to those provided by the Complainant under the Trade Mark cannot be considered a bona fide offering of goods or services, as this use was not authorized by the Complainant. As the Respondent has used the Disputed Domain Name for commercial purposes, the Respondent cannot argue that it is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark.
The Respondent's name does not include the Trade Mark or any similar term, and it is not commonly known by the Trade Mark. Registration and Use in Bad Faith
The Disputed Domain Name was registered and is being used in bad faith for the following reasons:
- The Respondent's use of the Disputed Domain Name to promote similar services to those offered by the Complainant is evidence that the Respondent registered and is using the Disputed Domain Name with knowledge of the Complainant and the Trade Mark, and indicates that the Respondent's primary intent is to trade off the value of the Trade Mark.
- The Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant's business. The Respondent's use of the Trade Mark in the Disputed Domain Name, and on the website at the Disputed Domain Name, is intended to divert Internet traffic from the Complainant, thereby interfering with the Complainant's business.
- The Respondent operates the Disputed Domain Name intentionally to attract for commercial gain Internet users to her website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent or the Respondent's Business.
- The Disputed Domain Name has been used in a way that is likely to dilute the reputation of the Trade Mark, which is evidence of bad faith.
- The Disputed Domain Name was registered approximately six years after the Complainant's business was established and the Complainant started trading under the Trade Mark. As such, in the absence of any legitimate interests of the Respondent in the Disputed Domain Name, the registration and subsequent use by the Respondent of the Disputed Domain Name cannot have been in good faith.
- The Respondent's registration and use of the Disputed Domain Name would give rise to an action in trade mark infringement, which is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response. A. Procedural Issues
The Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name wholly incorporates the Trade Mark, and combines the Trade Mark with a geographical description (being "Miami"). As the Complainant operates hotels in a number of locations, it is possible that a consumer would believe that a website at the Disputed Domain Name to be promoting another hotel in the Complainant's chain of hotels. As such, the addition of a geographical term adds to the confusing similarity.
It is more likely than not that a person would interpret the geographical abbreviation as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., Statoil ASA v. N/A Alex,WIPO Case No. D2013-0713).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent has no rights to or legitimate interests in the Disputed Domain Name for the following reasons:
- The Respondent was aware of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name. The Disputed Domain Name was chosen so that the Respondent's Business would benefit from its unauthorized association with the Trade Mark.
- The website at the Disputed Domain Name relates to a business with a name that is identical to the Trade Mark, and which offers some of the same services as covered by the trade mark registrations. As such, the use of this name is not bona fide, and the Respondent cannot be using the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Respondent is not commonly known by the Disputed Domain Name.
- The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the Disputed Domain Name is being used for commercial purposes.
It is possible that the Respondent had knowledge of the Trade Mark at the time the Respondent's Business was named and the Disputed Domain Name was registered, and that the Respondent did so with the intention of taking advantage of, and to trade off, the Complainant's reputation in the Trade Mark.
However, it is also possible that the Respondent's Business was named after the area of London known as "Hoxton" (which is also home to Hoxton Street, Hoxton Square and Hoxton Markets). This area borders Shoreditch, and it is entirely possible (if not likely) that the Complainant's hotel chain was also named after this area.
The Complainant submitted that the Respondent is not commonly known by the Disputed Domain Name. However, the Panel infers that the Respondent registered the Disputed Domain Name on behalf of Vassili Group LLC. The Disputed Domain Name corresponds to the name of the business which is being promoted via the Disputed Domain Name and which, based on the case file, is owned by Vassili Group.
Paragraph 4(c)(i) of the Policy states that a respondent's rights to or legitimate interests in a relevant domain name can be demonstrated by evidence that, before any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(ii) of the Policy states that the relevant rights and interests can also be demonstrated by a respondent, or their business or organization, having been commonly known by the relevant domain name.
Paragraphs 4(c)(i) and (ii) may be relevant here, but the Respondent provided no evidence of its bona fides, or that it, or its business or organization, has been commonly known by the Disputed Domain Name.
The business to which the Disputed Domain Name relates is no longer operating. In Martomagic, S.L. v. Next Communications, Inc.,WIPO Case No. D2009-0521, the panel found in similar circumstances, that:
"[t]he Policy is not designed to allow third parties to indefinitely retain domain names which comprise the trade mark of another, where the third party has ceased having an interest in the domain name. Passively holding a domain name in such circumstances is not a legitimate interest."
See also the decisions in PAA Laboratories GmbH v. Printing Arts America,WIPO Case No. D2004-0338 and Pepper Australia Pty Ltd v. Massive Networks Pty Ltd, Scott Julian,WIPO Case No. DAU2012-0007, which both found that where the relevant respondent business is no longer operating at the time of the complaint, the respondent cannot have ongoing rights to or legitimate interests in the relevant domain name.
In light of the above decisions, the Panel accepts the prima facie case made out by the Complainant. The Panel finds that the Respondent's is no longer using the Disputed Domain Name, and that, based on the evidence before the Panel, the Respondent does not have ongoing rights to or legitimate interests in the Disputed Domain Name.
The Respondent failed to submit a Response to the Panel in these proceedings. Without further evidence from the Respondent in relation to ongoing rights or legitimate interests, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant opened its first hotel in 2006, and first registered the Trade Mark on June 22, 2006 in the United Kingdom. The Complainant has since opened further hotels.
The Respondent registered the Disputed Domain Name on October 3, 2012, which is six years after the Complainant began operating in the United Kingdom, but before the Complainant registered the Trade Mark in the United States, where the Respondent is based and where the Respondent's Business operated. The Trade Mark was filed in the United States in mid-2012, only a few months before the Disputed Domain Name was registered. The Complainant does not currently operate a hotel in the United States (but states that it has plans to open one in 2016).
The Complainant's submission, which is based on media reports, is that the Respondent (or the person responsible for creating Vassili Group LLC, the Respondent's employer) based the idea for the Respondent's Business on places they had travelled. These places reportedly include Shoreditch in London where the Complainant's first hotel is located, and as such, the Respondent had knowledge of the Trade Mark at the time the Disputed Domain Name was registered. The website at the Disputed Domain Name promotes a business with the same name as the Trade Mark, which offers some of the same services as covered by the Trade Mark. All of these factors are possible evidence of registration in bad faith, which has not been rebutted by the Respondent.
The Complainant further submits that the Respondent registered the Disputed Domain Name with the intention of taking advantage of the Complainant's or the Trade Mark's goodwill and reputation, or for the primary purpose of disrupting the business activities of the Complainant. Under paragraph 4(b) of the Policy, evidence of these factors is taken to be evidence of both registration and use of a relevant domain name in bad faith.
The Panel accepts that the Complainant's submissions comprise one possible theory as to how and why the Respondent came to register and use the Disputed Domain Name. It is entirely possible that the Respondent had knowledge of the Trade Mark at the time the Disputed Domain Name was registered, intended to divert Internet traffic from the Complainant to the Respondent's Business and to create confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent or the Respondent Business. These circumstances would not give rise to a bona fide use of the Disputed Domain Name or a legitimate interest, even if the Respondent's Business was still operating, and would constitute registration and use in bad faith.
As discussed in relation to the Respondent's rights and legitimate interests, it is also entirely possible that the Respondent's Business was simply named after "Hoxton", being an area of London which is adjacent to Shoreditch. However, again, without evidence from the Respondent, the Panel accepts the Complainant's version of events (which are not implausible).
Taking into account the Complainant's submissions and the information provided in the case file, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. If the Respondent had filed a response in these proceedings stating that the Respondent's Business was not based on the Trade Mark and providing other evidence to rebut the Complaint, the Panel may have found otherwise. However, the Panel is limited to the evidence on the record.
The Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: December 2, 2015
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