Dig Eh Hotel LLC Delaware, Jumeirah Hospitality & Leisure (USA) Inc. and Jumeirah International LLC v. Liq-Wid Advertising Inc.
Case No. D2007-0573
1. The Parties
The Complainants are Dig Eh Hotel LLC Delaware, Jumeirah Hospitality & Leisure (USA) Inc, New York, New York, United States of America . and Jumeirah International LLC , Dubai, United Arab Emirates, represented by Clyde & Co., United Arab Emirates.
The Respondent is Liq-Wid Advertising Inc., Jamaica, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <essexhousehotel.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2007. On April 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 17, 2007, eNom 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2007.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 29, 2007. 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 First Complainant is the owner of the Essex House Hotel, an exclusive hotel in New York, and is the owner of the ESSEX HOUSE trademark and the <essexhouse.com> domain name. The Second Complainant is the operator of the Essex House Hotel, authorized to use the ESSEX HOUSE name. The Third Complainant holds the domain name <jumeirahessexhouse.com> used by the Second Complainant in the operation of the Essex House Hotel.
The First Complainant is the owner of U.S. Registration No. 1,750,657 for the trademark ESSEX HOUSE for use in connection with hotel and restaurant services. This Registration issued on February 2, 1993.
The Complainants and their predecessors in title started trading under the name of ESSEX HOUSE on or about 1 October 1931. The Complainants currently use the trademark in New York, where the Essex House Hotel is located, and worldwide, including over the Internet.
5. Parties’ Contentions
A. Complainants
Complainants contend that the domain name is identical or confusingly similar to Complainants’ ESSEX HOUSE trademark, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The disputed domain name incorporates Complainants’ ESSEX HOUSE trademark in its entirety, with the addition of the generic word “hotel.” Merely adding the generic word “hotel,” which obviously refers to the nature of Complainants’ business, does not avoid a finding of confusing similarity.
Thus, the Panel finds that the domain name is identical or confusingly similar to Complainants’ mark.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests with respect to the domain name.
Complainants have not provided Respondent with any permission to use the trademark and have no relationship with Respondent. Respondent has used the domain name in connection with escort and adult entertainment services, and links to numerous websites offering such services in New York, where Complainants’ hotel is located.
There is no evidence that Respondent has prepared to use or used the domain name in connection with any bona fide offering of goods or services related to the name or has made any noncommercial or fair use of the domain name. Rather, Respondent is using the domain name with the intention of misleadingly diverting consumers to the Respondent’s website featuring escort and adult entertainment services in New York, where Complainants’ hotel is located, thereby tarnishing Complainants’ reputation.
There is no evidence that Respondent is using the domain name in a bona fide manner. Respondent has acquired no trademark or service mark registrations for the domain name, and there is no evidence that Respondent has been commonly known by the domain name.
The Panel finds that Respondent lacks any right or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In this case, Respondent’s conduct indicates that the domain name has been registered in order to prevent the Complainants, as owners of the ESSEX HOUSE trademark, from reflecting that mark in a corresponding domain name. In this regard, the Respondent has engaged in a pattern of such conduct by registering the following domain names in which it clearly does not own legitimate rights:
<amazon-video.com>
<american-express.com>
<newyorkpalacehotel.com>
<wwwabc.net>
<wwwabcnews.net>
According to the Whois information, the Respondent is the registered holder of all of the above domain names, each of which incorporates a well-known trademark not owned by Respondent.
In addition, Respondent has been using the domain name to attract for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Specifically, the domain name comprises Complainants’ trademark ESSEX HOUSE with the addition of the generic word “hotel,” an obvious reference to Complainants’ services provided under the trademark. The escort and adult entertainment services offered on Respondent’s website are located in New York, where Complainants’ hotel is located. Respondent’s website is therefore causing Internet users to be confused into believing that Respondent’s website is somehow authorized by or associated with the Complainants, which is not true.
Accordingly, the Panel finds that Respondent registered and used the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <essexhousehotel.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: June 13, 2007
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