The Complainant is Great American Hotel Group, Inc., United States of America (“United States”), represented by Greenspoon Marder, LLP, United States.
The Respondent is Domains By Proxy, LLC, United States / R Greene, United States. 2. The Domain Name and Registrar
The disputed domain name (the “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 July 11, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 17, 2019.
The Center verified that the Complaint together with the amendment to 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 July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. The Respondent sent an informal email communication to the Center on July 26, 2019. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that would proceed to panel appointment on August 9, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 20, 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. 4. Factual Background
The Complainant is a corporate group in the hospitality sector organized as a corporation under the laws of the State of Florida, United States and headquartered in Dover, New Hampshire, United States. It manages hotels and restaurants for third-party investors in several states in the United States and has served as a receiver in state courts. Formerly known as GAP Management and then as Ocean Hospitalities, Inc., the Complainant has operated under its current name since 2011.
The Complainant does not have a registered trademark but claims the name “Great American Hotel Group” as a common law mark since 2011. Attachments to the Complaint document the Complainant’s investment of some USD 50,000 in marketing and advertising under the GREAT AMERICAN HOTEL GROUP mark, as well as its recognition as a top-100 third-party hotel management company in the United States by 2013 (Hotel Management, March 2013 Special Report). The record also includes news stories about the Complainant, a listing in “Hospitality Online”, and a publicity profile piece. All use the mark without the formal “Inc.” attached from the official version of the company name.
According to the Registrar, the Domain Name was created on July 14, 2011. It was registered in the name of the Respondent domain privacy service, which has expressed no interest in the Domain Name in this proceeding. After being notified of this dispute, the Registrar identified the registrant as the Respondent “R Greene”, with no listed organization, of Portsmouth, New Hampshire, United States. However, the postal address given for the registrant is in fact the address of the Courtyard by Marriott Hotel, apparently one of the hotel properties with which the Complainant has been associated. “RJ Greene” has communicated with the Center after receiving notice of the Complaint in this proceeding, although he did not submit a substantive Response to the Complaint.
The Complaint attaches the Declaration of the Complainant’s president, President, William D. Akridge, who explains that in the summer of 2011, when the Complainant was rebranding to “Great American Hotel Group”, Robert J. Greene was vice president of the Complainant and responsible for information technology, including the Complainant’s domain names. Mr. Akridge selected the Domain Name reflecting the Complainant’s name, abbreviating “hotel group” to the initials “hg”. According to Mr. Akridge, the Respondent Mr. Greene registered the Domain Name at Mr. Akridge’s request and on behalf of the Complainant but did not inform Mr. Akridge that the registration was made in Mr. Greene’s name. The original registration was paid with a company credit card and using a company address as the registrant’s postal address.
In 2012 Mr. Greene modified the registration, placing it in the name of the Registrar’s domain privacy service. The registration was maintained in this form when Mr. Greene renewed it in 2013 and 2015, again paying with a company credit card.
The record shows that Mr. Greene treated the Domain Name as a company asset. He provided another officer with access to the registration account, and he instructed the Complainant’s digital marketing firm, Mannix Marketing, to launch the Complainant’s rebranded website using the Domain Name. An email from Mr. Greene to Mr. Akridge in August 2011 requested suggestions for keywords to include in “our site” for search engine optimization (“SEO”) purposes. The Akridge Declaration indicates that the Complainant continues to use the Domain Name for its website and continues to retain Mannix Marketing to promote the GREAT AMERICAN HOTEL GROUP mark online and for search engine optimization.
In 2015, according to Mr. Akridge, the Complainant began to have problems with Mr. Greene’s job performance, and his responsibilities were reduced. His administrative access to the Complainant’s website was revoked. In October 2015, Mr. Greene was suspended as an employee, and Mr. Akridge reminded him in an email dated October 5, 2015 that “[t]he domain and all email addresses are the property of Great American Hotel Group”, which Mr. Greene did not dispute. Mr. Greene was finally terminated as an employee in February 2016. Another officer of the Complainant was able to renew the Domain Name in 2017, still registered in Mr. Greene’s name behind the domain privacy service. However, according to the Declaration of the Complainant’s Corporate Director of Sales and Marketing, Linda Komornik, Mr. Greene evidently changed the password for the Registrar’s account so that the Complainant was unable to renew the Domain Name registration when it was set to expire in July 2019.
The Complainant’s counsel sent a letter to Mr. Greene in June 2019 requesting that he transfer the registration of the Domain Name to the Complainant. He did not respond. The Complainant then initiated the current UDRP proceeding, with the result that the Domain Name remains locked until the conclusion of the proceeding and the prevailing party has an opportunity to renew. The Complainant continues to use the Domain Name for its website at the time of this Decision. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its common law GREAT AMERICAN HOTEL GROUP mark, which the Respondent lacks permission to use and in which the Respondent otherwise has no rights or legitimate interests.
The Complainant argues that the Respondent’s conduct in maintaining the registration of the Domain Name in his own name and declining to transfer it to his former employer on request reflects bad faith. The Complainant also cites the “passive holding” doctrine, as the Respondent has done nothing himself to use the Domain Name and has no conceivable good faith use for it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. A complainant may claim rights in an unregistered mark in a UDRP proceeding, but this requires additional proof:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” (WIPO Overview 3.0, section 1.3)
Despite the fact that the Complainant in this case evidently has not been asserting common law trademark rights until now (by placing “TM” symbols or legal terms on its website, for example), the Complainant has adduced sufficient evidence of use and publicity with the unregistered mark GREAT AMERICAN HOTEL GROUP since 2011 to establish the likelihood of common law protection and thus standing for Policy purposes.
The Domain Name incorporates the distinctive portion of the Complainant’s mark, GREAT AMERICAN, and the initials “hg” that were meant to represent the remaining two words, “Hotel Group”. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7. The Domain Name was chosen by the Complainant’s president to reflect its name, which is nearly identical to its mark, and it has been used for the past eight years for the Complainant’s website. Thus, it may safely be concluded that the Domain Name is confusingly similar to the Complainant’s mark.
The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and a lack of permissive use. This shifts the burden to the Respondent. It is undisputed that the Respondent acquired the Domain Name on the Complainant’s behalf and that the Domain Name has only been used for the Complainant’s website and email accounts. The Respondent has not come forward to assert any rights or legitimate interests of his own in the Domain Name.
Consequently, the Panel finds that the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. None of these examples are suited to the circumstances of this case, but they are not exclusive. There are instances, as the Complainant observes, where former employees or directors have been found to have acted in bad faith when they improperly retained control of domain names originally registered for their companies, sometimes using those as leverage in negotiations. See, e.g., Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad,WIPO Case No. D2017-1252 (“Parekh”); GFH Capital Limited v. David Haigh, WIPO Case No. D2014-2148 (“GFH”).
The problem for the Complainant is that the Policy requires bad faith in both the registration and the subsequent use of a domain name. There must be sufficient evidence to infer that a former employee acting under instructions to register a domain name for an employer did so with corrupt intent at the outset, an issue that sometimes arises as well with contractors such as website developers. In GFH, the panel acknowledged that absent the respondent’s dubious conduct from the beginning in connection with the disputed domain name, “the Panel may have had some difficulty finding that the registration had been undertaken in bad faith.” It was those “rather specific facts and circumstances” that allowed the panel to “infer that Respondent’s conduct has been at odds with the concept of good faith (not to mention duties owed to his employer” […] in “this rather finely nuanced case.” Among other things, in GFH the registrant was a solicitor with professional obligations toward the company, as well as subject to an employment contract obliging him to maintain and return the employer’s property. In Parekh, the respondent was a former director of the company of which the complainants were also directors. The decision treats the retention of domain names based on the company’s marks by a former employee or director as bad faith, without expressly addressing the issue of the respondent’s intent at the time of registration.
In this Panel’s view, the inference of bad faith at the time of registration must be assessed in light of the facts in each case. Here, the record shows that the Respondent Mr. Greene registered the Domain Name in July 2011 on behalf of the Complainant in the course of his duties as a company officer and employee and as instructed by the president of the company. He listed himself as the registrant, at the company’s address, but did not list an organization, and while this may raise a question, and his failing to do so is certainly not a corporate domain management best practice, there is no evidence that he was directed to do so or that the Complainant or its digital marketing consultants paid particular attention to the formalities of the Domain Name registration and renewals. The Respondent handled the Domain Name as a company asset, and it has been used ever since for the Complainant’s website and email addresses. Four years after the initial registration, the Respondent was suspended and subsequently terminated. The Panel finds nothing in the record suggesting that he was positioning himself four years earlier to compete with the Complainant or exert leverage over it by failing to list the Complainant as the registering organization. His changing the registration to a domain name privacy service in 2012 is ambiguous; it concealed the registrant’s identity from the general public but not from his employer, which continued to have access to the Registrar’s account and to pay for the registration renewals until June 2019.
In sum, the Panel does not find on this record that the Respondent, more probably than not, intended ultimately to misappropriate the Domain Name when he initially registered it. That assessment also precludes a finding of “passive holding”, i.e., that there was no conceivable good faith reason for the Respondent to register and retain a Domain Name that he has not put to use. See WIPO Overview 3.0, section 3.3. Unlike the “passive holding” cases, the Respondent appears from the record presented to have had a legitimate reason for registering the Domain Name in 2011 fulfilling his duties on behalf of the Complainant – despite the fact that he could not justify retaining the registration in his name when the Complainant requested its transfer.
The Panel finds bad faith in the use but not in the registration of the Domain Name. Consequently, the Complainant fails to establish the third element of the Complaint and must look to other legal or equitable remedies, which are not foreclosed by this proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: September 2, 2019
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