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CPS 1 Realty LP. v. DomainAgent.com [2005] GENDND 1962 (8 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CPS 1 Realty LP. v. DomainAgent.com

Case No. D2005-0869

1. The Parties

The Complainant is CPS 1 Realty LP., c/o The El-Ad Group Ltd., New York, New York, United States of America, represented by Reitler Brown & Rosenblatt LLC., United States of America.

The Respondent is DomainAgent.com, Gwacheon Gyeonggi, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <theplaza.com> is registered with HANGANG Systems Inc. dba Doregi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2005. On August 15, 2005, the Center transmitted by email to HANGANG Systems Inc. a request for a registration verification in connection with the domain name at issue. On August 17, 2005, HANGANG Systems Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient with respect to the language of proceeding, the Complainant filed its reply thereto on August 29, 2005. 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 September 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 27, 2005. The Response was filed with the Center on September 26, 2005.

The Center appointed Boh Young Hwang as the sole panelist in this matter on October 25, 2005. 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 the owner of the Plaza Hotel in New York City (“Plaza Hotel”) and registered and owned the word mark “THE PLAZA” and a designed mark “PP THE PLAZA” (collectively “Trademarks”) for hotel and restaurant services or any other product and services in the United States of America. The Plaza Hotel is one of the most famous hotels in the world, has been featured in various movies, plays, television shows and literature including but not limited to Hitchcock’s “North by Northwest”, Paul McCartney’s “Michelle” and “Plaza Suite” in Broadway, and is also famous as a symbol of the city of New York.

The domain name in dispute was registered by the Respondent in March 25, 2001, but has never been in use by the Respondent for the Respondent’s own business activities.

The domain name in dispute was originally registered with Onlinenic.com, a United States based registrar. After the Complainant contacted the Respondent on June 23, 2005, through an e-mail suggesting a mutual discussion for transfer of the domain name in dispute, the Respondent switched the registrar from Onlineinc.com to HANGANG Systems Inc. on July 12, 2005.

5. Parties’ Contentions

A. Complainant

The domain name in dispute is identical or confusingly similar to the Trademarks in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the domain name in dispute. The domain name has never been connected to a bona fide offering of goods or services. Instead, a web user who visits “www.theplaza.com” is redirected to a site controlled by “domainsponsor.com” which specializes in greeting ‘landing’ home pages that are generated off search engines. Landing home pages provide relevant links tied to the domain name, and offer the domain owner a ‘pay per click’ source of revenue. The Respondent is not making a legitimate non-commercial or fair use of the domain name without any intent for a commercial gain. Instead, the Respondent is misleadingly diverting consumers or tarnishing the trademark or service mark at issue.

The domain name in dispute was registered and is being used in bad faith by the Respondent. Using the domain name through redirection through the site of “domainsponsor.com”, the Respondent has intentionally attempted to attract Internet users to the Respondent’s or other on-line location for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s or location or of a product or service on the Respondent’s or location.

B. Respondent

The terms “plaza” and “the plaza” are generic words meaning the public square, market place or the place where the people gather. Therefore, the Complainant cannot assert any trademark right on such generic words. Further, the Complainant has not asserted its right in the domain name in dispute for more than 4 year and 6 months after its registration. It is unreasonable and should not be allowed for the Complainant to assert its right on the domain name after such long period of silence.

The Respondent registered the domain name in dispute for actual use in the future for the activities or business of establishing and managing a shopping mall, portal site, internet club site or general website. In fact, the Respondent tried to register the domain name <plaza.com> but found that it was already registered by MicroSoft. The domain name <theplaza.com> was the very natural next choice by the Respondent. Therefore, based upon this history and also the generic character of the words “plaza” and “the plaza”, the Respondent has a legitimate interest and the right to the domain name in dispute.

The term “the plaza” is now in use in more than 30 domain names by various entities which have nothing to do with the Complainant or the Plaza Hotel. The Complainant cannot assert its right on all such domain names. Also, the Plaza Hotel is not well known as “the plaza.” Therefore, asserting the Complainant’s right on the term “the plaza” and also on the domain name in dispute is absurd and far exceeding what the Complainant can assert.

The Respondent has not registered the domain name in bad faith. Registration of the domain name is for use with a legitimate purpose. The Respondent has never suggested it would sell the domain name to others. The use of the domain name through “domainsponsor.com” is just for parking and the Respondent did not know that the domain name was used in the way asserted by the Complainant. After having learning about such use, the Respondent promptly disconnected the domain name from “domainsponsor.com”.

6. Discussion and Findings

Selection of Language

The Complaint was filed in the English language. The Respondent asserts that all documents in the proceeding should be in the Korean language, which is the language of the registration agreement for the domain name in dispute, whereas the Complainant asserts that English should be the language of the proceeding.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses that may be incurred, the possibility of a delay in the proceeding if translations are required, and other relevant factors.

In the present case, it is without question that the registration agreement for the domain name in dispute was made in the Korean language. However, it is also apparent from the evidence submitted before this Panel that the domain name in dispute was originally registered at Onlinenic.com, a United States based registrar that used an English registration agreement, and Respondent only changed the registrar after learning about the Complainant’s wish and intention to obtain a transfer of the domain name. Therefore, it is strongly presumed that the Respondent’s replacement of the registrar was to prepare for a possible dispute proceeding and to obtain a procedural benefit within such proceeding.

The Complainant is unable to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the proceeding would inevitably be delayed unduly, and the Complainant would have to incur substantial expenses for such translations.

Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel has decided, under Paragraph 11 of the Rules, that English shall be the language of the administrative proceeding and the decision text in this case, but the Respondent’s response in Korean has been accepted to the casefile.

Transfer of the Domain Name in Dispute

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the domain name in dispute 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 in dispute; and

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

A. Identical or Confusingly Similar

The Complainant has registered and currently owns trademark rights on the word mark “THE PLAZA” and the design mark “PP THE PLAZA” with the word “THE PLAZA” in the designed center, and these registered marks, especially the word part, are in fact identical with the domain name in dispute excluding the “.com” extender which merely shows the character of the domain name. The non-existence of a space between “THE” and “PLAZA” in the domain name is due to the technical requirement, and it cannot change the finding that a confusing similarity exists between the Trademarks and the domain name in dispute. Further, existence of other domain names using the term “the plaza” and the Complainant’s silence on the Respondent’s registration of the domain name for a certain period of time cannot be the reason to deny the Complainant’s right to the Trademarks and a finding of similarity between the Trademarks and the domain name. Therefore, the Complainant has established this element.

B. Rights or Legitimate Interests

Based on the evidence submitted before the Panel, there is no evidence to show that the Respondent has any rights or legitimate interests in the domain name in dispute. The fact that the terms “plaza” or “the plaza” are generic can be reviewed and considered as matters pertaining to whether the Respondent acted in bad faith as discussed below, but such fact does not automatically give the Respondent the right or a legitimate interests in the domain name registration or its use. Further, the Respondent’s mere assertion of its pure and legitimate intention for future use also cannot be a rightful ground to grant the Respondent the right or a legitimate interest as required in paragraph 4(a) of the Policy.

Therefore, the Complainant has established this element of its case.

C. Registered and Used in Bad Faith

This Panel agrees with the Respondent’s assertion that the terms “plaza” or “the plaza” are generic on their face, and that they can be used by anybody. But, it is also true that not all use of a generic word in a domain name can be permitted or justified if the use of a generic term in domain name is for the purpose of (i) selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of actual out-of-pocket cost, (ii) preventing the trademark owner from reflecting its mark in a corresponding domain name, (iii) disrupting the business of a competitor, (iv) attracting, for commercial gain, Internet users to the of the registrant or other on-line location, by creating a likelihood of confusion with other mark, or (v) any other intentional free riding of other’s trademark or name.

In this case, the evidence submitted to this Panel clearly shows that the Respondent did not initiate the use of the domain name after its registration in March 2001. Rather, the Respondent put the domain name <theplaza.com> in use through a “landing” page, and redirected the Internet visitors to the website of the Complainant’s competitors using the Complainant’s mark or the name of the Plaza Hotel. The content and lay-out of the website made for such purpose shows that the Respondent or at least the builder of such website who is at least the agent of the Respondent knew very well the fame of the Plaza Hotel and the possible misleads that could arise due to the domain name in dispute with the business or activities of the Plaza Hotel. Therefore, the bad faith in the registration and the use of the domain name by the Respondent is apparent here, and the mere denials by the Respondent, without more, on such fact fall far short to reverse such finding.

The Complainant has also established this last element of its case.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Respondent to transfer the domain name <theplaza.com> to the Complainant.

Boh Young Hwang
Sole Panelist

Dated: November 8, 2005