ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Viceroy Hotels, L.L.C., Viceroy International Hotel Management LLC v. Joel Smith, Post Market Publishing LLC Case No. D2025-3182 1. The Parties The Complainant is Viceroy Hotels, L.L.C., Viceroy International Hotel Management LLC, United States of America, represented by Neal, Gerber & Eisenberg LLP, United States of America. The Respondent is Joel Smith, Post Market Publishing LLC, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2025. On August 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Withheld for Privacy ehf Kalkofnsvegur 2) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2025, 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 amended Complaint on August 19, 2025. The Center verified that the Complaint together with the amended 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 August 21, 2025. In accordance with the Rules, paragraph 5, the due date for submitting a response was September 10, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2025.
page 2 The Center appointed Joseph Simone as the sole panelist in this matter on September 17, 2025. 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 Complainants, Viceroy Hotels, LLC and Viceroy International Hotel Management LLC, are related companies known in connection with the provision of first-class hotel, resort, residential condominium and related goods and services. The Complainants operate throughout the United States of America and the world, including in Mexico, Saint Lucia, Serbia, Portugal and Panama. The Complainants have an extensive global portfolio of trade mark registrations incorporating the VICEROY mark in relation to hotel and related services, including the following: - United States of America Trade Mark Registration No. 5145031 for VICEROY in Class 43, registered on February 21, 2017 by Viceroy Hotels, L.L.C.; - United States of America Trade Mark Registration No. 2741530 for VICEROY in Class 43, registered on July 29, 2003 by Viceroy Hotels, L.L.C.; and - European Union Trade Mark Registration No. 004424453 for VICEROY in Classes 35 and 43, registered on August 26, 2009 by Viceroy International Hotel Management, LLC. The disputed domain name was registered on May 16, 2025. The evidence provided by the Complainants further indicates that prior to the filing of the Complaint, the disputed domain name resolved to a website populated with articles on home ownership, property taxes, and home décor. At the time of issuance of this Decision, the disputed domain name continued to resolve to said website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainants’ VICEROY trade marks, and that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis as to whether the disputed domain name is identical or confusingly similar to the Complainants’ trade marks. The Complainants assert that they have not authorized the Respondent to use the VICEROY mark, and there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainants also claim there is no evidence that the Respondent has any connection to the VICEROY mark, and that there is no plausible good faith reason for the Respondent to have registered the disputed domain name. The Complainants therefore argue that the registration and any use of the disputed domain name must be in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 6.1 Preliminary Procedural Issue: Consolidation of Multiple Complainants The Panel notes that the present Complaint has been filed by multiple Complainants. UDRP panels have articulated principles governing the question of whether a complaint filed by multiple complainants may be brought against one respondent. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11. In order for the filing of a single complaint brought by multiple complainants to be accepted, the complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. In the present case, the Panel is satisfied that both Complainants have rights in the VICEROY mark as set out in the Factual Background heading above. The Panel notes the Complainants’ assertions that they have been the target of common conduct by the Respondent, and that as there is a common grievance on the part of each of them in a single disputed domain name, and given the almost identical facts, it would be procedurally efficient to deal with all matters in a consolidated proceeding. The Panel finds that the Complainants have established that they have a common grievance against the Respondent, which would affect their individual rights on substantially the same basis. The Respondent has not indicated that it would suffer any prejudice from consolidation of the complainants, and no potential prejudice is apparent to the Panel. The Respondent has not otherwise contested the request for consolidation. Accordingly, the Panel considers it procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and believes that consolidation is fair and equitable to all of the Parties. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Panel acknowledges that the Complainants have established rights in the VICEROY trade mark in multiple jurisdictions around the world. WIPO Overview 3.0, section 1.2.1. Disregarding the gTLD “.com”, the disputed domain name incorporates the Complainant’s trade mark VICEROY in its entirety. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s VICEROY trade mark. The inclusion of the additional phase “hotelandresorts” does not prevent a finding of confusing similarity. WIPO Overview 3.0, sections 1.7, and 1.8. The Panel therefore finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing their rights in the VICEROY trade mark and in showing that the disputed domain name is confusingly similar to their mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In this case, the Complainants assert that they have not authorized the Respondent to use their trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Having reviewed the available record, the Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. Meanwhile, no evidence has been provided to demonstrate that the Respondent, prior to the notice of the dispute, had used or demonstrated its preparation to use the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence to show that the Respondent has been commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainants’ prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case. Accordingly, and based on the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third and final element that a complainant must prove is that the respondent has registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered as evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
page 5 The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. Other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (WIPO Overview 3.0, section 3.2.1). For reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name. When the Respondent registered the disputed domain name, the VICEROY trade marks were already widely known and directly associated with the Complainants’ activities. The Complainants’ registered trade mark rights in VICEROY for its products and services predate the registration date of the disputed domain name. A simple online search for the term “viceroy” would have revealed that it is an established brand. WIPO Overview 3.0, section 3.2.2. Moreover, the disputed domain name includes the phase “hotelandresorts” which directly reflects the Complainants’ business. Thus, the Respondent clearly was aware of the Complainants’ marks at the time of registering the disputed domain name. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Furthermore, the Panel finds that the use of the disputed domain name to bait Internet users who were seeking for the Complainant’s services to the Respondent’s website, and for the commercial benefit of the Respondent, falls directly under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name pursuant to paragraph 4(a)(ii) 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 name be transferred to the Complainant. /Joseph Simone/ Joseph Simone Sole Panelist Date: October 1, 2025
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