Complainant is Proper Hospitality, LLC, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
Respondent is Lisa Banks, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2019, 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 Respondent of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. Emails were received on May 9, 10 and 31, 2019 from Respondent. However, no formal Response was filed with the Center. As such, on May 31, 2019 the Center notified the Parties of the Commencement of Panel Appointment Process
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 11, 2019. 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.
On June 21, 2019 Complainant sent the Center an email advising that Respondent had registered on May 18, 2019 four additional domain names, namely , , , and , and requesting that these domain names be added to pending proceeding. Respondent sent the Center an unsolicited email response on June 25, 2019 and on June 28, 2019, Complainant filed an unsolicited supplemental submission. On July 10, the Panel issued Procedural Order No. 1 and allowed the addition of the disputed domain names , , , and to the instant proceeding and provided Respondent until July 20, 2019 to file a response to Complainant’s supplemental filing. Respondent submitted an email response on July 24, 2019, which the Panel accepted. 4. Factual Background
Complainant, Proper Hospitality, LLC, designs and operates hotels and residences. Complainant is based in Santa Monica, California and currently operates, or is in the process of opening, several hotels under the name and mark PROPER in San Francisco, Santa Monica, Austin and downtown Los Angeles. Complainant owns a number of registrations for the PROPER mark in connection with its hotel and residence services in the United States, the earliest of which issued to registration on May 16, 2017 (Registration No. 5205225). Complainant also owns registrations in Mexico for the PROPER mark, the earliest of which issued to registration on May 26, 2015 (Registration No. 1540984). Complainant also owns and uses the domain name to provide information regarding its hotels and to allow users to book reservations at Complainant’s hotels.
Respondent is an individual with an address in Santa Cruz, California. In May 2018, Respondent incorporated a company by the name of Clocktower Enterprises Inc. in California. Respondent registered the disputed domain name on August 13, 2018. The disputed domain name has not been used by Respondent for an active website, but has resolved to a parked page provided through GoD, the registrar for the disputed domain name.
Complainant, through its attorneys, sent a demand letter to Respondent on October 15, 2018 concerning the disputed domain name. Respondent does not appear to have responded to the demand letter and a further letter was sent to Respondent by Complainant’s attorneys on October 29, 2018. The Parties thereafter had some communications regarding the disputed domain name, but could not resolve the matter.
On December 4, 2018, Respondent filed for the fictitious business name “Santa Cruz Proper” for her Clocktower Enterpises Inc. company with the Santa Cruz, California County Clerk. On or about January 22, 2019, Respondent advised that she had listed the disputed domain name for sale as “a premium listing through go daddy”. The disputed domain name appears to have been offered for sale for USD 25,000 in February 2019.
On May 19, 2019, Respondent registered the four additional disputed domain names, , , , and . These additional disputed domains have not been used by Respondent for any active websites, but currently resolve to parked pages provided by GoD. 5. Parties’ Contentions A. Complainant
Complainant asserts that it is the owner of all rights in the PROPER name and mark in connection with hotel and residence services and other hotel and resort-related services, and that such rights arose before Respondent registered the disputed domain name. Complainant further asserts that it has extensively promoted and marketed its PROPER hotel and residence services and that as a result the PROPER name and mark has garnered much media attention and become known and recognized by travelers.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s PROPER mark as it fully incorporates the PROPER mark with the non-distinguishing geographic term “Mexico.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no relationship with complainant and never obtained consent from Complainant to register the disputed domain name, (ii) is not commonly known by the disputed domain name, and (iii) has not made any legitimate or bona fide use of the disputed domain name, but has simply sought to intentionally trade on the PROPER mark for profit.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith and with full knowledge of Complainant’s rights in the PROPER mark. In that regard, Complainant maintains that given the renown of the PROPER mark, and Complainant’s prior registered rights in PROPER, it is inconceivable that Respondent registered the disputed domain name without a design to exploit the PROPER mark. Complainant also contends that Respondent’s bad faith is established by Respondent’s failure to host a website at the disputed domain name and subsequent attempt to sell the disputed domain name for USD 25,000. B. Respondent
Respondent did not file a formal response. However, Respondent sent the Center an email on May 31, 2019 in which Respondent asserts that it bought the disputed domain name over a year ago, owns other domain names that contain the term “proper,”, has a company by the name of Santa Cruz Proper and intends to use all of her domain names in connection with her business as it expands. Respondent further contends that she has done nothing to misuse the disputed domain name. C. The Parties’ Supplemental Submissions
The Parties, as noted above in Section 3 above, have submitted a number of additional unsolicited submissions that pursuant to Procedural Order No. 1 have been accepted in this proceeding. The contentions in these submissions can be summarized as follows:
Complainant in its June 21, 2019 submission contends that after Complainant commenced this proceeding on May 2, 2019, Respondent registered on May 18, 2019 the four additional disputed domain names, , , , and . Complainant maintains that these four additional disputed domain names are all based on the same format as the disputed domain name, and are likewise confusingly similar to Complainant’s PROPER mark as they each consist of the PROPER mark followed by the name of a geographic location. Complainant asserts that because Respondent was well aware of Complainant’s rights in the PROPER mark when she registered the additional disputed domain names on May 18, 2019, Respondent had no legitimate basis for registering these additional disputed domain name and was acting in bad faith with the intent of trading upon the goodwill associated with Complainant’s PROPER name and mark.
Respondent in her June 25, 2019 submission contends that she has been purchasing domain names with the word “proper” for the last 18 months and that she has the right to continue to do so. Respondent maintains that she has a company with the name “Santa Cruz Proper” and that she has plans to use domain names that consist of the word “proper” followed by a city or country name in the future. Respondent further contends that she was not aware of Complainant when she purchased the disputed domain name and that Complainant was likewise not aware of Respondent’s company with the word “proper” until Complainant attempted to acquire the disputed domain name and then started to harass Respondent with a threat of legal action.
In Complainant’s June 28, 2019 Supplemental Submission, Complainant further requests that the four additional disputed domain names, , , , and be added to the proceeding. Complainant also argues that (i) Respondent has failed to prove the existence of an alleged company called “Santa Cruz Proper, Inc.,” (ii) searches for the alleged “Santa Cruz Proper” company in the California and Delaware Secretary of State websites have revealed no such entity, (iii) the domain name that Respondent claims to own does not resolve to an active website but to a parked page, and (iv) Respondent has failed to identify or provide anything regarding the nature of Respondent’s alleged business.
Respondent in her July 24, 2019 Supplemental Submission argues that Respondent incorporated a company in California in May 2018 by the name of “Clocktower Enterprises, Inc.” and that the company has been operating locally in Santa Cruz, California under the fictitious business name “Santa Cruz Proper,” a name that Respondent filed for in December 2018. Respondent maintains that she did not file for trademarks that include the word “proper” or “clocktower” as she was told that there were thousands of businesses and companies that use either “proper” or “clocktower” in their name. Respondent asserts that she has been registering domain names that include the word “proper” with a city or country name for the past 18 months and that Respondent has done so to hopefully build Respondent’s company globally. Lastly, Respondent contends that she has the right to register domain names for use at another time as she builds her business. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names are registered and are being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the PROPER mark in connection with its hotel and residence services and that it owns numerous trademark registrations for the PROPER mark in the United States and Mexico that issued before Respondent registered the disputed domain names.
With Complainant’s rights in the PROPER mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain such as “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is respectively low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s PROPER mark as they each fully incorporate the PROPER mark at the head of each disputed domain name. The addition of the geographic locations such as “Mexico,” “Detroit,” “Dallas,” “Los Angeles”, and “New Orleans” at the tail of the disputed domain names does not distinguish the disputed domain names from Complainant’s PROPER mark as these are merely a descriptive additions.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PROPER mark and in showing that the disputed domain names are identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In this proceeding, Respondent registered the disputed domain name on August 13, 2018 and has not, to date, used it with an active website. The evidence of record shows that in February 2019 the disputed domain name resolved to a generic parked page provided by GoD, the registrar for the disputed domain name. That web page did not contain any links to third party products or services and there is no evidence that the disputed domain name was ever used by Respondent in connection with hotel or residence services.
The evidence in the record shows that Respondent has made no use of the disputed domain name, or any other domain name that includes the word “proper,”, in connection with Respondent’s claimed business. The evidence before the Panel shows, however, that Respondent sought to profit from the disputed domain name. The evidence consists of (i) an email on January 22, 2019 from Respondent in which Respondent tells Complainant’s representative that based on advice she received she has listed the disputed domain name as a premium domain name through GoD, and (ii) a Whois record for the disputed domain name from DomainT, dated February 22, 2019, that includes a statement that the disputed domain name “is listed for sale at one of our partners for $25,000”. What is not altogether clear is whether the disputed domain name was in fact put up for sale by Respondent and listed in the amount of $25,000 USD on GoD or if that was simply a threat by Respondent to perhaps garner a response or monetary offer from Complainant.
Assuming that Respondent offered the disputed domain name for sale for USD 25,000, as Complainant alleges, the question is whether Respondent did so to take advantage of rights Respondent had in the disputed domain name. Complainant sent Respondent two demand letters in October 2018, which Respondent essentially ignored. The communications between the Parties after the demand letters were sent mostly concerned scheduling a call to discuss the matter and whether Respondent had retained counsel. There appears to be gaps in the correspondence and likely discussions between the Parties. It is unclear what the parties discussed, but Complainant apparently sought at some point a list of other domain names Respondent claimed she had registered that include the term “proper”. Respondent does not look to have responded or provided such a list, and, thereafter, Respondent sought to sell the disputed domain name as a premium domain name claiming that “after getting advice and understanding my rights – this seems to be the easiest way to handle the matter.”
Respondent provides no information concerning these communications or what transpired and simply says that she registered the disputed domain name for an unspecified business she hopes to create, and that she owns other domain names that use the term “proper,”, including the additional disputed domain names , , and that were registered on March 18, 2019 (after this proceeding commenced). Notably, while Respondent claims to own and operate a business called “Santa Cruz Proper”, Respondent has provided no details regarding the nature of that business or showing that it even exists as a going concern. Respondent has disclosed that she incorporated a company by the name of “Clocktower Enterprises, Inc.” in March 2018 and that on December 4, 2018 she filed for the fictitious business name “Santa Cruz Proper” for that entity. That fictitious name filing, however, occurred about a month and a half after Respondent had received two demand letters from Complainant in October 2018.1
Based on what is before the Panel, it is questionable whether Respondent has a legitimate interest in the disputed domain names. It appears to the Panel that after receiving demand letters from Complainant, Respondent was clearly aware of Complainant’s claims regarding the PROPER name and mark and thereafter appears to have horsed around with Complainant for a period of time by not addressing Complainant’s contentions in Complainant’s demand letters or justifying her actions, communicating intermittently with Complainant’s representative about the matter, registering the fictitious name “Santa Cruz Proper” for her Clocktower Enterprises Inc. company in December 2018, announcing she was listing the disputed domain name for sale through GoDaddy and then, after this proceeding commenced, registering the four additional disputed names , , , and for an alleged business that Respondent provided no information about. Given these actions and the fact that Respondent has provided no evidence, despite being given multiple opportunities to do so, regarding the nature or activities of her claimed Santa Cruz Proper business, the Panel accepts that Respondent was not acting in a way that would support a finding that Respondent had a legitimate interest in the disputed domain names.
Given that Complainant has established with sufficient evidence that it owns rights in the PROPER mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Whether Respondent registered and used the disputed domain names in bad faith is a more complicated issue. Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. However, unlike the assessment of a respondent’s rights or legitimate interests in a disputed domain name, which has to be assessed at the time of the filing of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name, which in this case is August 13, 2018 for the disputed domain name and May 18, 2019 for the , , , and disputed domain names.
There is no evidence in the record that Respondent registered the disputed domain name for use with a website or web page that had content that took advantage of rights Complainant enjoys in the PROPER mark for hotel and residence services. The GoD parked page, as already discussed above, does not contain any links or other content that would suggest an attempt to profit from Complainant’s rights in the PROPER mark in connection with hotel and residence services.
That being said, Respondent’s actions suggest that Respondent registered the domain for profit, and subsequently registered the additional disputed domain names , , , and after this proceeding commenced opportunistically and likely in response to Complainant filing this proceeding. Respondent has claimed that she registered the disputed domain names for an alleged business, but has repeatedly failed to provide any evidence regarding the nature of her business and has provided no evidence establishing that she conducts any business that uses the name or mark PROPER. Notably, Respondent’s “Santa Cruz Proper” fictitious business name registration for her Clocktower Enterprises Inc. corporation occurred well after Respondent had received two demand letters from Complainant and had engaged in communications with Complainant regarding the disputed domain name. In total, Respondent’s claims appear to be pretextual. This is particularly so with regard to Respondent’s registration of the , , , and disputed domain names after this proceeding commenced to allegedly help her grow a business she has provided no details about.
The fact that Respondent (i) was seeking to sell the domain name for profit so quickly after being contacted by Complainant, (ii) has provided no information regarding her claimed business despite multiple opportunities to do so, (iii) registered the fictitious name “Santa Cruz Proper” after being contacted by Complainant and (iv) registered four additional domain names based on Complainant’s PROPER name and mark with a geographic location after this proceeding commenced, make it more likely than not that Respondent registered the disputed domain names to take advantage of Complainant’s rights in the PROPER name and mark and not for some alleged business purpose.
The Panel is mindful that the disputed domain names are made up of the common term “proper” with a geographic location. To be sure, the word “proper” has multiple dictionary meanings and depending on how it is being used can connote different things (for example, “proper” can mean appropriate for the purpose, belonging to one, conforming to established standards, fitting or right, or genuine). Consequently, there are many ways in which “proper” could be used, with a geographic term that conceivably could be legitimate for goods and services unrelated to Complainant, and which would not take advantage of Complainant’s rights in PROPER for hotel and residence services. However, here, Respondent has provided no evidence or explanation how the five disputed domain names relate to her claimed business, which remains a complete mystery despite three filings by Respondent in this proceeding. In total, the evidence before the Panel, Respondent’s noted actions, and the timing of such suggest that Respondent registered the disputed domain names in the format “proper”, with a geographic location not for any real business or legitimate purpose but in a bad faith attempt to profit from the likely association that such disputed domain names have with Complainant’s PROPER hotels and potential upcoming hotel projects in various locations.
Accordingly, the Panel finds that Complainant succeeds under this 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 names , , , , and be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: August 5, 2019
1 The Panel notes that Respondent’s emails to the Center and to Complainant’s representative from October 2018 to date have used an email address that is based on the domain name , a domain name that Complainant has not included in this proceeding.
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