DECISION

Ian Schrager Hotels, L.L.C., C.G. Holdings, Inc. v. Lost in Space, SA

Claim Number: FA0205000113281

PARTIES

Complainant is Ian Schrager Hotels, L.L.C., C.G. Holdings, Inc., New York, NY, USA (“Complainant”) represented by Ariana G. Voigt, of McDermott, Will & Emery.  Respondent is Lost in Space, Palma, SPAIN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <thehudsonhotel.com> and <asiadecuba.com>, registered with Intercosmos Media Group.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 7, 2002; the Forum received a hard copy of the Complaint on May 9, 2002.

On May 7, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain names <thehudsonhotel.com> and <asiadecuba.com> are registered with Intercosmos Media Group and that Respondent is the current registrant of the names.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@thehudsonhotel.com and postmaster@asiadecuba.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <thehudsonhotel.com> and <asiadecuba.com> domain names are identical to Complainant's THE HUDSON HOTEL and ASIA DE CUBA marks.  Respondent has no rights or legitimate interests in the disputed domain names.  Respondent registered and used the disputed domain names in bad faith.

B. Respondent did not file a Response.

FINDINGS

Complainant is the owner of several world-famous hotels throughout the United States.  Complainant bought The Henry Hudson Hotel of New York in 1998 and reopened the hotel as THE HUDSON HOTEL in 2000.  Complainant has invested a substantial sum of money and resources in order to create a large amount of goodwill behind the THE HUDSON HOTEL mark.

Complainant is the owner of a line of restaurants that are known under the mark ASIA DE CUBA.  The first ASIA DE CUBA opened in 1997.  The ASIA DE CUBA restaurants are featured in Complainant’s hotels as well as in other independent locations.  Complainant has registered the ASIA DE CUBA mark with the United States Patent and Trademark Office as Registration Number 2,346,145 on October 11, 2000.

Respondent registered the disputed domain names on November 7, 2001 and January 18, 2002.  Respondent is using the <asiadecuba.com> and <thehudsonhotel.com> in connection with an escort service.  Complainant sent cease and desist letters to the Respondent just as it did to the previous owner of the disputed domain names.  The domain name <thehudsonhotel.com>, once owned by Telmax Management, was transferred to Respondent after Telmax Management received Complainant’s cease and desist letters.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant has established that it has common law rights to THE HUDSON HOTEL mark through continuous use.  Complainant also established that it has rights to ASIA DE CUBA through registration with the United States Patent and Trademark Office.

The domain name registered by Respondent, <thehudsonhotel.com>, is identical to Complainant’s THE HUDSON HOTEL mark because it incorporates the entirety of Complainant’s mark and merely omits the spaces between words and adds the generic top-level domain name “.com.”  The omission of spaces and the addition of a top-level domain name do not create a distinct mark capable of overcoming a claim of identical or confusingly similar.  See Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Respondent’s <asiadecuba.com> domain name is identical to Complainant’s ASIA DE CUBA mark because it incorporates the entirety of Complainant’s registered mark and merely omits the spaces in-between the words and adds a generic top-level domain name.  As is the case above, the omission of spaces and the addition of a generic top-level domain name do not create a distinct mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent did not file a Response and therefore the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using two domain names that are identical to Complainant’s two marks in order to attract Internet users interested in Complainant’s businesses to Respondent’s adult-orientated escort service website.  The use of domain names identical to Complainant’s marks in relation to an adult orientated website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

The Panel knows Respondent only as Lost in Space.  No evidence on the record suggests and Respondent has not come forward to establish evidence that Respondent is commonly known as THE HUDSON HOTEL and ASIA DE CUBA or <thehudsonhotel.com> and <asiadecuba.com>.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent received possession of the <thehudsonhotel.com> domain name from an entity that had actual notice of Complainant’s rights in the disputed domain name and the Panel may therefore infer that Respondent had actual knowledge of Complainant’s rights in the THE HUDSON HOTEL mark when it registered <thehudsonhotel.com>.  Therefore, Respondent registered the <thehudsonhotel.com> domain name in bad faith.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, based on Complainant’s registration of ASIA DE CUBA on the Principal Register of the United States Patent and Trademark Office it can be inferred that Respondent had constructive notice of Complainant’s ASIA DE CUBA mark when it registered <asiadecuba.com>.  Therefore, Respondent’s registration of the <asiadecuba.com> domain name was in bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent has used both disputed domain names in connection with a commercial website featuring an escort service.  It can be inferred that Respondent is using Complainant’s goodwill for its own commercial gain by creating a likelihood of confusion between Complainant and Respondent.  This is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.  Accordingly, it is Ordered that the domain names <thehudsonhotel.com> and <asiadecuba.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 27, 2002.

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