The Complainant is BD Hotels, LLC of New York, New York, United States of America (“United States” or “U.S.”), represented by Holland & Knight LLC, United States.
The Respondent is Dong Lin, Lin Dong of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2016, 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.
On May 11, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 11, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on June 10, 2016. 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 a New York City-based chain of boutique hotels including the Mercer, Jane, Maritime and Greenwich Hotels, as well as POD 39 and POD 51.
The Complainant has used the POD marks in connection with hotels since 2007. The Complainant owns two U.S. trademark registrations for the mark THE POD HOTEL (U.S. Registration Nos. 3575140 and 3575141, both registered on February 17, 2009). The Complainant also owns a Community trademark registration for POD HOTELS.
In Spring 2015, the Complainant and its trademark licensee, a Washington D.C.-based lifestyle hotel group, Modus Hotels, and D.C.-based developer, Monument Realty, announced plans for “POD DC”, a Pod hotel set to open later in 2016. A ground-breaking ceremony was officiated by the mayor’s office and there were press accounts following the announcement.
The disputed domain name was registered on May 13, 2015 and does not link to any active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts, firstly, that the disputed domain name is identical and/or confusingly similar to a trade mark in which it has rights.
The disputed domain name has been formed by appropriating, in its entirety, the Complainant’s mark, POD DC, which it has used in connection with its highly-publicized new hotel, POD DC, and adding the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name is also confusingly similar to the Complainant’s THE POD HOTEL and POD HOTELS registered marks, and to its POD 39 and POD 51 marks. The addition of the element “DC” in the disputed domain name constitutes an addition of merely descriptive matter, namely the geographical description of the site of the Complainant’s newest hotel.
The Complainant asserts, secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The grounds for this contention are as follows:
(i) The Complainant has not authorized the Respondent to register or use the disputed domain name;
(ii) There is no connection between the Complainant and the Respondent;
(iii) The Respondent is not commonly known by the disputed domain name; and
(iv) The Respondent has made no legitimate non commercial use of the disputed domain name.
The Complainant asserts, lastly, that the disputed domain name was registered and is being used in bad faith. The Complainant has registered rights in THE POD HOTEL and prior use rights in the marks POD 39 and POD 51 for years prior to the Respondent’s registration of the disputed domain name. The Respondent did not register the disputed domain name until immediately after press reports publicizing the development of the POD DC hotel. The Complainant’s THE POD HOTEL mark became well known during the period of prior use, as did its internationally-acclaimed POD 39 and POD 51 marks. The registration of a domain name that is confusingly similar to a well-known mark is indicative of bad faith. The passive holding of the disputed domain name is also evidence of bad faith registration and use. Further, the Respondent has registered more than 70 domain names, many of which include the trade marks of third parties, e.g., , , and . This pattern of conduct provides further support for a finding of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complaint was submitted in English. However, the language of the Registration Agreement is Chinese.
Paragraph 11 of the Rules states that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant requested that English be the language of the proceeding. The Complainant is a U.S. entity and it (and its representative) are unable to communicate in Chinese; the Complainant would be prejudiced if the proceeding were to be conducted in Chinese. The facts indicate that the Respondent is able to understand and communicate in English: the disputed domain name is rendered in the English alphabet and combines the Complainant’s English language word mark, “POD DC” with the gTLD “.com”; the Respondent has registered multiple domain names with the registrar GoDaddy, LLC, of which the registration agreement is in English. All of these domain names are rendered in the English alphabet, and at least one of them contains English words. Substantial additional expense and delay would be incurred if the Complaint had to be translated in Chinese.
The Respondent did not reply on this issue.
The Panel is of the view that it would be appropriate for English to be adopted as the language of the proceeding. Notably, as pointed out by the Complainant, the disputed domain name and many of the other domain names associated with this Respondent consist of a combination of English language trade marks and terms. The GoDaddy, LLC registration agreement are, moreover, in the English language. These facts demonstrate a level of comfort and familiarity with the English language on the Respondent’s part, which it has not disputed.
As provided for in the Rules, the Panel has to ensure that the administrative proceeding takes place with due expedition. To require the Complainant to translate the Complaint and accompanying evidence into English would unduly delay the proceeding.
The Panel therefore determines that English should be the language of the proceeding in this case. B. Identical or Confusingly Similar
The Complainant has established it has rights in the marks THE POD HOTEL and POD HOTELS, and also in POD 39 and POD 51. The “POD DC” mark, at the time of the registration of the disputed domain name, had not, strictly speaking, been used as yet. The Panel therefore is of the view that the issue to be determined is whether the disputed domain name is identical or confusingly similar to all or any of the THE POD HOTEL, POD HOTELS, POD 39 and POD 51 marks (“the POD marks”) in which the Complainant has established it has rights.
In this regard, the Panel finds that the disputed domain name is confusingly similar to the POD marks. The primary and distinctive element in the POD marks lies in the word “pod”. This distinctive word has been incorporated into the disputed domain name. The addition of the letters “dc”, descriptive of the location, Washington, D.C., and the gTLD “.com” are insufficient to remove the confusing similarity with the Complainant’s POD marks. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case in support of its allegations that the Respondent does not have rights or legitimate interests in the disputed domain name. The burden accordingly shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has not authorized or licensed the Respondent to use or apply the POD marks in a domain name. There is no evidence of any business relationship between the Complainant and the Respondent. The Respondent does not appear to be using the disputed domain name for a bona fide offering of goods and neither is there evidence that it is commonly known by the disputed domain name.
The Respondent has not filed any response to rebut the Complainant’s contentions. In the absence of any evidence to the contrary, the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been established. D. Registered and Used in Bad Faith
The Panel also concludes that the disputed domain name has been registered and is being used in bad faith. The Panel finds that the Respondent has, by using the disputed domain name, “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy) and/or, based on the observation of the pattern of conduct shown by the Complainant, the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names (per paragraph 4(b)(i) of the Policy). “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
The timing of the registration of the disputed domain name and the specific combination of the word “pod” and abbreviation “dc” in the disputed domain name are suspicious and indicative of bad faith on the Respondent’s part. See e.g., SBE Hotel Licensing, LLC v. SITCO, Michael Shaya and Shaya International Trading Corporation d/b/a “SITCO”,WIPO Case No. D2011-2254; NUBECO, LLC v. , WIPOCase No. D2008-1056.
The Respondent has not sought to explain its position and to proffer evidence showing any right or legitimate interest in the disputed domain name, nor to show that its registration and use have been in good faith. It is reasonable to infer, in the circumstances, that the Respondent was aware of the Complainant’s POD marks and its plans to open the new POD DC hotel later in 2016 when it registered the disputed domain name. The Panel accordingly finds that the third element of paragraph 4(a) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: June 12, 2016
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