Complainant is Morgans Group LLC of New York, New York, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Rodrigo Mattos of Miami Beach, Florida, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. The disputed domain name is registered with 1&1 Internet AG (collectively the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 26, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 26 and 27, 2015, the Registrars transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the Respondent's 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 proceeding commenced on October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. On October 29, November 19 and 20, 2015 the Respondent sent email communications to the Center. The Respondent did not however submit any formal response. Accordingly, the Center notified the Parties about the commencement of the Panel appointment process on November 19, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on November 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
Complainant is the owner of numerous registered trademarks throughout the world for MONDRIAN, including at least two United States trademark registrations. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Reg. No.
Mark
Classes
Date of Registration
United States
2219088
MONDRIAN
042
January 19, 1999
United States
3833225
MONDRIAN
036, 037, 043
August 17, 2010
As confirmed by the Registrars, the disputed domain names were registered as follows:
Disputed Domain Name
Date of Registration
October 12, 2011
February 28, 2011
March 8, 2011
While none of the disputed domain names presently resolve to an active website, Complainant has submitted evidence of use of the disputed domain names and , which appear to mimic Complainant's website. 5. Parties' Contentions A. Complainant
Complainant is the owner of various trademark registrations for MONDRIAN in Europe and elsewhere, including the United States.
Complainant is a fully integrated lifestyle hospitality company that operates, owns, acquires, develops and redevelops boutique hotels, primarily in gateway cities and select resort markets in the United States, Europe, and other international locations.
Complainant also operates, owns, acquires, develops and redevelops nightclubs, restaurants, bars, and other food and beverage venues in many of its hotels, as well as in hotels and casinos operated by MGM Resorts International in Las Vegas.
Complainant currently owns and manages 13 hotels that include over 3,000 rooms. In 2014, Complainant reported total hotel revenues of nearly USD 212.3 million and total revenues of USD 235 million. In addition to Complainant's existing hotel properties, Complainant has other hotels in various stages of development to be operated under management or franchise agreement, including properties in Qatar, Turkey and Colombia.
The disputed domain names are identical or confusingly similar to Complainant's MONDRIAN trademark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. Respondent repeatedly sent emails to the Center in which the entirety of the messages read, "I removed the websites. I can sell the domains." 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the MONDRIAN trademark and the disputed domain names are confusingly similar to Complainant's MONDRIAN trademark.
Complainant owns at least two trademark registrations for MONDRIAN in the United States. The relevant priority dates for both of these trademark registrations precede the dates upon which the disputed domain names were registered. Accordingly, Complainant has established rights in its MONDRIAN mark pursuant to Policy, paragraph 4(a)(i).
The disputed domain names, and are confusingly similar to Complainant's MONDRIAN trademark because the disputed domain names incorporate the entirety of Complainant's MONDRIAN trademark and merely adds a generic geographically descriptive term immediately behind the trademark (i.e., "miami" which is nothing more than the name of a well known city in the State of Florida), along with the generic Top-Level Domain (gTLD) ".com" and ".net" suffixes, respectively.
Neither the addition of a purely descriptive term to a well-known mark nor the addition of a gTLD suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, NET2PHONE INC. v. NETCALL SAGL,WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being confusingly similar); Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor "china" to form was confusingly similar to the CELLULAR ONE trademark); Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628 (finding confusingly similar to the WAL-MART trademark). The addition of the word "miami" directly behind the MONDRIAN trademark is insufficient to avoid a finding of confusing similarity.
The disputed domain name, is confusingly similar to Complainant's MONDRIAN trademark for these exact same reasons. Moreover, in regard to the disputed domain name , the addition of a hyphen is also insufficient to avoid a finding of confusing similarity. See F. Hoffmann-La Roche AG v. Brian Robinson,WIPO Case No. D2007-0659 (finding the domain name to be confusingly similar to Complainant's VALIUM trademark).
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a formal response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal response, Respondent has not provided any evidence that it is commonly known by any of the three disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words "mondrian", "miami" or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain names predates the establishment of Complainant's rights in its MONDRIAN trademark.
Respondent's decision to add common geographic descriptive terms (i.e., "miami") to a well-known trademark (i.e., MONDRIAN) for the purposes of attracting Internet users to Respondent's own websites does not instill Respondent with rights or legitimate interests in the disputed domain names. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP,WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of and to the complainant).
Complainant has provided unrebutted evidence showing that Respondent is operating counterfeit websites at and featuring images designed to confuse Internet users into believing that the websites are associated with Complainant, when the websites are not. Such activity and choices made by Respondent also does not instill Respondent with legitimate rights in the composite name or mark. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, supra.
Moreover, at these corresponding websites, Respondent is using Complainant's MONDRIAN trademark for a replica website posing as Complainant and offering Complainant's products, attempting to create an impression of affiliation with Complainant where none exists, which cannot be considered a bona fide offering of goods or services creating rights or legitimate interests in a corresponding domain name.
For the disputed domain name , Respondent is maintaining a passive and undeveloped website. In this case, Respondent's failure to develop an active website corresponding to this disputed domain name, coupled with Respondent's repeated statement that it has removed the websites, is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the dispute domain names. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
The Panel finds that Respondent likely chose the disputed domain names with full knowledge of Complainant's rights in the MONDRIAN trademark. This conclusion is based on the fact Respondent has developed websites that mimic Complainant's own genuine website. Such activity is evidence of bad faith registration and use.
Respondent's awareness of the MONDRIAN trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain names and since Respondent appears to be located in the city associated with Complainant's properties.
Complainant has alleged, and Respondent has not rebutted, that Respondent has linked websites to and designed to erroneously lead a visiting Internet user to conclude the websites are operated by Complainant. Complainant has also presented uncontested documentary evidence of this allegation. The Panel finds this unrebutted allegation, supported by documentary evidence, to be convincing and sufficient to establish the bad faith registration and use of these two disputed domain names.
The Panel also finds that Respondent's use of the disputed domain names and is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's MONDRIAN trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. This ongoing activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use.
In regard to , Respondent is maintaining a passive website associated with this disputed domain name. It is well settled that passive holding of a domain name does not prevent a finding of bad faith. Under the circumstances of this case, particularly in light of the two other disputed domain names and their use, the Panel finds this inactivity to be further evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia –Linee Aeree Italiane S.p.A. v. Colour Digital,WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there were no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose) and also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 names , and be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: December 11, 2015
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