DECISION

Ian Schrager Hotels, L.L.C. v. Hotel Distribution Network

Claim Number:  FA0307000167913

PARTIES

Complainant is Ian Schrager Hotels, L.L.C., New York, NY (“Complainant”) represented by Ariana G. Voigt, of McDermott, Will & Emery.  Respondent is Hotel Distribution Network, Sanford, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <delano-hotel-miami-beach.com>, registered with Alldomains.Com Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 3, 2003; the Forum received a hard copy of the Complaint on July 7, 2003.

On July 8, 2003, Alldomains.Com Inc. confirmed by e-mail to the Forum that the domain name <delano-hotel-miami-beach.com> is registered with Alldomains.Com Inc. and that Respondent is the current registrant of the name. Alldomains.Com Inc. has verified that Respondent is bound by the Alldomains.Com Inc. 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 July 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 4, 2003 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@delano-hotel-miami-beach.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 August 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <delano-hotel-miami-beach.com> domain name is confusingly similar to Complainant’s DELANO mark.

2. Respondent does not have any rights or legitimate interests in the <delano-hotel-miami-beach.com> domain name.

3. Respondent registered and used the <delano-hotel-miami-beach.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is an internationally known premier hotel company.  Complainant asserts that it owns the Delano Hotel and has used the DELANO mark in conjunction with the hotel since its opening in 1995.  Complainant contends that it holds a registration for the DELANO mark with the U.S. Patent and Trademark Office, which was registered on November 25, 1997 (Reg. No. 2,115,849).

Respondent registered the <delano-hotel-miami-beach.com> domain name on February 12, 2002.  Respondent’s disputed domain name resolves to a website that gives Internet users the impression that they can make hotel reservations with the Delano Hotel via the website. 

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 and/or Confusingly Similar

Complainant asserts that it has rights in the DELANO mark through its registration with the U.S. Patent and Trademark Office (“USPTO”).  In a previous case, the Panelist determined that Complainant had established rights to the DELANO mark through registration with the USPTO.  See Ian Schrager Hotels, L.L.C. v. R5 Group, FA 109370 (Nat. Arb. Forum May 30, 2002) (holding that Complainant established rights in the DELANO mark through registration with the U.S. Patent and Trademark Office). 

Complainant has established that the DELANO mark is registered with the USPTO by providing a copy of the mark’s registration document; however, the document fails to establish Complainant as the owner of the mark because the document lists the holder of the DELANO mark as Beach Hotel Associates.  Accordingly, Complainant forces this Panelist to connect the dots to establish the first element of the Policy.  Fortunately for the Complainant, this is a default proceeding and there is no challenge from the Respondent.  Also, fortunately for the Complainant, Exhibit 7 to the Complaint is deemed incorporated by inclusion and reference.  Exhibit 7 is a letter from counsel for Complainant to the Respondent wherein it is stated that:

ISH has used the DELANO name in connection with its Miami hotel since at least 1995.  In addition, an ISH affiliate owns a federal registration for DELANO, Reg. No. 2,115,849, which issued on November 25, 1997.

Although better documentation of ownership of the mark, or at least an affidavit of ownership, would have been preferable, under the circumstances, the Panel finds that Paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond to the allegations of the Complaint; therefore, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed). 

Further, the Complainant alleges that it has not consented to use of the DELANO name and that Respondent is not known by the domain name, either as a business or as an individual.

Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy has been satisfied.

Registration and Use in Bad Faith

The Panel presumes that Respondent either had actual or constructive knowledge of Complainant’s rights in the DELANO mark because the mark is registered with the U.S. Patent and Trademark Office and has been used in commerce worldwide since 1995.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also 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).

Furthermore, Respondent’s attempt to sell the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

 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 relief shall be GRANTED.

Accordingly, it is Ordered that the <delano-hotel-miami-beach.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  August 22, 2003

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