The Complainant is BD Hotels, LLC of New York, New York, United States of America, represented by Holland & Knight, LLP, United States of America.
The Respondent is POD Hotels Ltd of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with 123-Reg Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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.
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 June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. On June 23, 2016, the Respondent requested four additional calendar days to file its Response. In accordance with paragraph 5(b) of the Rules, the Center granted this request. The Response was filed with the Center on June 27, 2016. The Complainant filed a Supplemental Filing with the Center on July 1, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on July 6, 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 has since 2007 operated a chain of boutique hotels in New York City, including the Mercer, Jane, Maritime and Greenwich Hotels, as well as POD 39 and POD 51 and in 2015 announced together with its licensee a plan to open POD DC, a Washington DC based hotel. The Complainant owns two trade mark registrations for THE POD HOTEL under trade mark registration numbers 3575140 and 3575141, both filed on March 4, 2008. It also owns an EU Trade Mark registration for POD HOTELS under registration number 014285332 which was filed on June 23, 2015.
The Respondent was incorporated in the United Kingdom in May 2005 under the name “Pod Rooms Limited” and subsequently changed its name to “Pod Hotels Limited” in January 2007. The disputed domain name was registered on July 16, 2004 by a web designer, Eric Murphy of “ejm web”. It was subsequently transferred to the Respondent’s director, Mr. Jonathan Murphy in or about September 2012 and then to the Respondent in or about March 2014. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights for THE POD HOTEL in the United States and for POD HOTELS in the European Union, as set out above. It says that the disputed domain name is identical or confusingly similar to its registered trade mark rights.
The Complainant further says that it has not authorised the Respondent to use its marks and neither is the Respondent commonly known by the disputed domain name or any similar mark. It says that the Respondent is a dormant company and notes that it has been claiming “dormant” status in its tax returns since 2006. It says that the website associated with the disputed domain name consists of a single page with an image of what appears to be a hotel lobby and a “LOG IN” link which resolves to a “parked” webpage, with click-per-view advertising, at “”. However says the Complainant, the website displays the Respondent’s address which is not the address of a hotel, features a copyright notice dating back to 2013 and in addition there is no online reservation system. Accordingly, the Complainant submits that the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name.
As far as bad faith is concerned the Complainant submits that the Respondent first registered the disputed domain name on March 25, 2014, more than seven years after the Complainant began using its mark THE POD HOTEL and more than five years after the registration of this mark. The Complainant asserts that its mark became well- known during this period of prior use and that the Respondent’s use only serves to confuse Internet users.
The Complainant also submits that the Respondent has employed metatags in the source code for the webpage displayed at the disputed domain name and that this implies an association with the Complainant when no such association exists. Specifically, it says that the Respondent has embedded the mark THE POD HOTEL, as a keyword, as well as the geographical term “New York,” the site of the Complainant’s well-known POD 39 and POD 51 hotels but in circumstances that the Respondent does not have any connection to New York. The Complainant submits that this is evidence of the Respondent’s registration and use in bad faith.
Further, the Complainant says that the registration of the disputed domain name was made by the Respondent in full knowledge of Complainant’s rights and with the express primary purpose of selling or renting the disputed domain name to the Complainant or to one of its competitors for valuable consideration in excess of its out-of-pocket expenses. The Complainant says that Jonathan Murphy, a prior registrant of the disputed domain name and a director of the Respondent, offered to sell the disputed domain name to the Complainant in October, 2009, for an amount not “much less than the $20,000 to $25,000 price range.”
Alternatively, Mr. Murphy offered to facilitate the hosting of the Complainant’s website at the disputed domain name for GBP 8,000, with an option for the Complainant to acquire the domain name after six months for an additional GBP 8,000. The Complainant says that Mr. Murphy expressly stated that his company’s “course of action” was to attempt to profit from the “growing interest” in the “new class of budget accommodations,” by “sell[ing] our pod hotel domain names” for an amount far exceeding out-of-pocket expenses to “one of the property companies,” i.e., the Complainant or one of its competitors, interested in the development of such establishments. The Complainant notes that at the time of Mr. Murphy’s offer, the Complainant owned registered rights in its THE POD HOTEL mark and had used its POD family of marks for almost three years. The Complainant therefore submits that the disputed domain name was renewed in the Respondent’s name, or transferred to the Respondent, with the express intent of extorting the Complainant or one of its competitors which amounts to registration and use in bad faith. B. Respondent
The Respondent submits that the words “pod” and “hotel” are commonly understood descriptive English words and that the idea of “pod” or “capsule” hotels is not new and that the concept was originally developed by Japanese architect Kisho Kurokawa in the 1970s. It notes that the media has used the term “pod hotels” for many years to describe hotels with very small rooms. Use of the term “pod hotels” by the media predates the Complainant’s use of the word “pod” in connection with its own project.
The Respondent says that it was incorporated in the United Kingdom with the objective of adapting the Japanese pod hotel concept specifically for the UK market. It says that by 2007 when the Complainant started to use the term, the Respondent had already been working on its own pod hotel project for several years and had a legitimate interest in the disputed domain name when it was registered in 2004.
The Respondent describes the history of its use of the “POD” name or mark as follows:
July 16, 2004: Eric Murphy of ejmweb (the Respondent’s web designer) registered on behalf of Jonathan Murphy, a Director of the Respondent;
May 24, 2005: The Respondent was successfully incorporated in the United Kingdom under company number 05461276 with Jonathan Murphy as a director. The company was initially called POD Rooms Limited and formally changed to POD Hotels Limited on January 25, 2007.
The Respondent says that it later assumed direct administrative control of the disputed domain name and there is a clear and unbroken chain of underlying ownership.
As a result the Respondent submits that as the disputed domain name was registered in 2004, three years before the Complainant asserts that it began to establish rights in connection with the word “pod”. The Complainant had no rights at the time that the disputed domain name was registered.
Neither submits the Respondent has it used the disputed domain name in bad faith. It says that the image displayed at the “www.” website is of design work prepared by the Respondent’s own design team and that the Respondent’s formal name, address, company number and company registration details are all prominently displayed on the website and have been present on the website since around the time it was first created. The Respondent says that it has always been clear that the website belongs to the Respondent and it is clearly evident that the Respondent is registered in England and Wales.
It further notes that there has been no intent to use the disputed domain name to generate any kind of advertising revenue. The Respondent explains that there is currently a broken link from the “LOG IN” button to an external page that no longer exists and as a consequence of the page link no longer existing, the link currently resolves to a domain parking page produced by a third party domain registrar. The Respondent says that it does not benefit from any advertising on the registrar’s domain name parking page and that there is no advertising on the website to which the disputed domain name resolves. It notes that as the disputed domain name is not used to generate advertising revenue, the Respondent therefore satisfies the accounting requirements of the UK Companies Act for filing dormant accounts.
The Respondent says that communication between the parties was initiated by the Complainant through an agent who approached the Respondent three times (first in 2007, again in 2012 and most recently in 2015). On each occasion the Complainant expressed interest in purchasing the disputed domain name but each time put forward a trivial offer that was not commercially acceptable and was therefore declined. The Respondent sets out the history of these offers as follows:
First Approach by Complainant in 2007;
October 3, 2007: The Complainant initiates contact with the Respondent (via the Complainant’s agent Hotel Internet Strategies) and expresses interest in purchasing the domain name. As the domain had not been registered with the objective of selling it, the Respondent did not reply.
Response by Respondent in 2009;
The Respondent eventually replied to the Complainant’s agent Hotel Internet Strategies in January 2009.
January 27, 2009: The Complainant offers USD 5,000 for the disputed domain name.
January 28, 2009: The Respondent declines. The option of licensing the disputed domain name is briefly raised later in this year, but is not of particular interest to either party and this has not been raised or discussed (by either party) since 2009.
Second Approach by Complainant in 2012;
Feb 20, 2012: The Complainant again contacts the Respondent (via the Complainant’s agent Hotel Internet Strategies) and expresses interest in purchasing the disputed domain name.
April 19, 2012: The Complainant offers USD 20,000.
April 20, 2012: The Respondent declines.
June 14, 2012: Email from the Complainant’s agent Hotel Internet Strategies:
“I met with the owner of the POD yesterday. He wanted me to let you know that he has no intention of going above the $20,000 mark. In fact, he seemed a little like he may not be interested at that price anymore.”
June 14, 2012: The Respondent replies to the Complainant’s agent:
“No problem. To avoid any bad feeling, I would like your client to understand that we secured in connection with our own projects and did not register this domain name with the objective of selling it.”
Third Approach by Complainant in 2015;
June 16, 2015: The Complainant again contacts the Respondent (via the Complainant’s agent Hotel Internet Strategies) and expresses interest in purchasing the disputed domain name:
“My client is again interested in purchasing the name. He is very serious. Could you please provide me a price at which you will sell the domain?”
The Respondent, not seeking to sell the disputed domain name, did not reply.
June 19, 2015: Further email from the Complainant’s agent Hotel Internet Strategies:
“My client is very interested in purchasing the POD Hotels domain you own. Are you interested in selling it? If so, can you please let me know what price you are interested [sic] in selling at?”
June 23, 2015: The Respondent replies to the Complainant’s agent and clearly reiterates that the disputed domain name was not registered with the objective of selling it.
July 11, 2015: The Complainant offers USD 10,000.
The Respondent, not seeking to sell the disputed domain name, did not reply.
The Respondent submits that the Complainant first approached the Respondent in 2007 and was therefore aware of the legitimate domain registration (and unbroken chain of ownership) since that time and submits that the delay in bringing the Complaint since that time is prejudicial to the Respondent’s case.
The Respondent says that the Complainant is aware of the chain of underlying ownership and is aware that Eric Murphy of ejmweb originally administered the disputed domain name on behalf of the Respondent’s director and/or the Respondent. It says that this is evident from email correspondence in 2007 and in 2012 between the Complainant’s agent Hotel Internet Strategies and Eric Murphy of ejmweb (the Respondent’s web designer). By way of example it notes the correspondence of October 18, 2007 by email from Eric Murphy of ejmweb (the Respondent’s web designer) to the Complainant’s agent Hotel Internet Strategies: “Hi, I admin the site for a client. I will forward your email to them. Eric Murphy, web design: ”
In summary the Respondent submits that the disputed domain name was legitimately registered three years before the Complainant asserts that it began to establish rights in connection with the word “pod” and that therefore it is not possible for the disputed domain name to have been registered in bad faith because the
Respondent could not have contemplated the Complainant’s then non-existent rights. 6. Discussion and Findings
The Complainant made a late supplemental filing on July 1, 2016. This filing contained legal arguments but discloses no new material of which the complainant could not have been aware at the time of filing its Complaint. As a result the Panel does not consider it appropriate to enter this filing into the record. In any event, it would not have changed the result. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for THE POD HOTEL under trade mark registration numbers 3575140 and 3575141, both filed on March 4, 2008. It also owns an EU Trade Mark registration for POD HOTELS under registration number 014285332 which was filed on June 23, 2015. Other than the “.com” top level domain name element the disputed domain name is identical to the Complainant’s EU trade mark registration and differs by only one letter. As a result the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade marks and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that it has not authorised the Respondent to use its marks and neither is the Respondent commonly known by the disputed domain name or any similar mark and that the disputed domain name is not being used for a noncommercial or legitimate purpose. Essentially it says that at the date of transfer of the disputed domain name to the Respondent in 2014, the Complainant had already been using its marks POD HOTEL and THE POD HOTEL for at least five years and the Respondent had not used the disputed domain name to that point.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name but, for the reasons described under Section C below, the Respondent has successfully rebutted the Complainant’s case. In short the Panel finds, as discussed further below, that the transfer in 2014 was not to a new and separate owner but was rather effected by the Respondent’s agent, Mr. Eric Murphy. Mr. E. Murphy had registered the disputed domain name on the Complainant’s director’s behalf in 2004 and this was made apparent from the original correspondence between the Complainant’s agent and the Respondent’s agent in 2007. Upon original registration on 2004, the Complainant had no registered trade mark rights in its POD HOTEL and THE POD HOTEL marks and there is no evidence to suggest that it had obtained common law rights at this stage. As noted below the evidence put forward by the Respondent suggests that the term “pod” in relation to hotels had been used in a generic (or at least highly descriptive) manner to that point and therefore the Complainant’s case that the Respondent had no rights or legitimate interests in the disputed domain name whether in 2014, or in 2004, has not been made out. Accordingly, the Complaint fails under the second element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was originally registered in 2004 before the Complainant had made application for either of the registered marks noted above. There is no evidence that the Complainant had made substantial use of or developed common law usage rights in either of the marks at that date and it appears in any event that the Complainant did not commence its business until 2007. Indeed, the various media articles submitted in evidence by the Respondent support the view that the term “pod hotels” had been used up to 2004 to refer generally to hotels with very small rooms. As a result the Panel finds that the registration of the disputed domain name in 2004 could not have been made in bad faith as the Complainant had no registered marks or rights to any identical or confusingly similar mark or name at that date.
The Respondent submitted that the disputed domain name had been originally registered and administered upon its director’s behalf by Eric Murphy of “ejmweb”, being the Respondent’s web designer and that the transfer of the disputed domain name to the Respondent in 2014 was undertaken upon the Respondent’s request. The Panel notes that it was made clear from the original correspondence at the outset between the Complainant’s agent and the Respondent’s agent in 2007 that “ejmweb” was acting upon the behalf of a client, the inference being that this was the registrant, namely the Respondent’s director. The Respondent did not solicit the initial offer from the Complainant and the Respondent only replied some two years later. It appears from the Respondent’s time line of events (as set out above and which was not contradicted by the Complainant) that it was only after further emails from the Complainant’s agent that the Respondent entered into further discussion or negotiation, however the Respondent’s director made it clear on various occasions that he had registered the disputed domain name for his, or the Respondent’s own projects.
Under paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)theconsensus view of panelists as to whether or not a transfer of a domain name amounts to a new registration is noted as generally turning upon whether there has been an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name. Each case, including the various cases noted in the WIPO Overview 2.0, must be analysed on its own facts in order to assess whether there is evidence of supervening bad faith, including such as might fulfil any of the examples as set out under paragraph 4(b) of the Policy.
In the instant case, the original registration of the disputed domain name was made by the Respondent’s web designer on the Respondent’s director’s behalf. It was therefore made on an ordinary agency basis and was effectively held and managed in trust for the Respondent’s director until he directed that it be transferred to the Respondent, being a company which appears on the present record to have been controlled by him at all times. The transfer of the disputed domain name in 2014 was therefore to an entity controlled by the Respondent’s director and the control of the disputed domain name does not therefore appear to have moved beyond his effective control from original registration in 2004 until the date of the Complaint. The email evidence between the parties from as far back as 2007 supports the view and both the Respondent’s agent and the Respondent appear to have been clear and upfront with the Complainant in this regard. On this basis and unless there is some supervening evidence of bad faith intent by the Respondent and/or its moving spirit, the Respondent’s director, Mr. Jonathan Murphy, then the 2014 transfer should not amount to a new registration for the purposes of the Policy.
The Panel does not find that the evidence supports the Complainant’s allegation that the disputed domain name has been used in bad faith. Mr. Jonathan Murphy made it clear from the outset that he had registered the disputed domain name for his own projects which were subsequently to be undertaken through the Complainant. He did not initiate contact with the Complainant in order to sell the disputed domain name at a profit and it was some time before he appears to have been prepared to enter into further discussions with the Complainant. The fact that the Complainant would not agree to his requested transfer price or to his proposals to license the disputed domain name to the Complainant on a commercial basis, does not in all the circumstances necessarily impute bad faith and the Policy should not be capable of being used as a tool by a complainant to acquire a domain name where it was originally registered by the same entity, or “moving spirit” of that entity, in good faith and prior to the complainant having any competing rights or interest in the disputed domain name.
There is no other evidence here that the Respondent sought to target the Complainant. The disputed domain name resolves to a domain name holding page without any advertising and which originally included design work prepared by or for the Respondent and listing its contact details. Subsequently the Panel notes that it resolves to a holding page. The Complainant’s allegations that the Respondent has employed metatags in the source code for the webpage displayed at the disputed domain name and that this implies an association with the Complainant might have been of note had the Respondent been actively operating through its webpage or had there been advertising links at the webpage but in the circumstances the Panel does not find that this is sufficient to amount to use in bad faith.
Overall it seems to the Panel that the Complainant sought on several occasions starting in 2007 to purchase the disputed domain name and when it failed it then embarked upon this Complaint. In the circumstances as set out above there is in the Panel’s view no evidence of registration in bad faith in 2004 or that the 2014 transfer was made outside the same group. There is insufficient evidence to impute bad faith to the Respondent and accordingly the Panel finds that the disputed domain name was not registered and has not been used in bad faith. Accordingly, the Complaint fails under this element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: July 26, 2016
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