The Sheraton LLC v. Karim Hajj
Case No. D2006-0832
1. The Parties
The Complainant is The Sheraton LLC of White Plains, New York, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Karim Hajj of Beirut, Lebanon and Riyadh, Saudi Arabia.
2. The Domain Names and Registrars
The disputed domain names <phoenician.biz> and <phoenician.info> are registered with Register.com. The disputed domain names <phoenician.com> and <phoenician.net> are registered with Network Solutions.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 30, 2006 and in hard copy on July 5, 2006. The Center transmitted its standard requests for registrar verification to the registrars on June 30, 2006. Register.com responded by email the same day confirming that it was the registrar and the Respondent was the registrant of the domain names <phoenician.biz> and <phoenician.info>, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that they would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at its principal office; and providing the contact details in respect of these registrations in its WHOIS database. Network Solutions replied by email of July 3, 2006, confirming that it was the registrar and the Respondent was the registrant of the domain names <phoenician.com> and <phoenician.net>, that it would comply with paragraph 7 of the Policy, and that the registration agreement was in English and contained a submission to the jurisdiction at its principal office; and providing the contact details in respect of these registrations in its WHOIS database.
The Center verified that the Complaint satisfied the formal requirements of 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 July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 30, 2006. By telephone on July 24, 2006, and email of July 25, 2006, a representative of the Respondent requested an extension of time of 30 days in view of the armed conflict then taking place in the Lebanon. By email of August 2, 2006, the Center granted this request, extending time for the Response until September 1, 2006. No further extension was sought and a Response was filed by email on September 1, 2006, and in hard copy on September 5, 2006.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 11, 2006. 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.
Having reviewed the file, the Panel is satisfied that the Complaint and the Response complied with applicable formal requirements, were duly served and have been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant operates hotels including a hotel resort called THE PHOENICIAN in Arizona, United States of America. The Complainant owns several registered trademarks in the United States of America for THE PHOENICIAN, the earliest of which was filed on June 26, 1986, and registered on March 10, 1987. The Complainant also owns a registered trademark in the United States for THE PHOENICIAN RESORT filed on January 18, 1994, and registered on February 28, 1995. The Complainant promotes THE PHOENICIAN hotel resort through a website at “www.thephoenician.com”.
The disputed domain names <phoenician.com>, <phoenician.net>, <phoenician.info> and <phoenician.biz> were registered on July 19, 1998, November 26, 1998, September 19, 2001, and March 27, 2002, respectively.
At the date of the Complaint, the URLs “www.phoenician.com” and “www.phoenician.net” resolved to web pages headed “NetworkSolutions / This Site is Under Construction and Coming Soon”. This was followed by sponsored links, in particular to travel sites which promoted THE PHOENICIAN hotel resort of the Complainant as well as other hotels and tourist services of third parties. These URLs now resolve to a web page which merely says in several languages “This Site is Under Construction and Coming Soon” and “This Domain is registered with Network Solutions”.
The URL “www.phoenician.info” currently resolves to a page containing “phoenician” in green, followed by a dot in white, followed by “info” in red, on a black background. Until recently the URL “www.phoenician.biz” resolved to a web page containing links to hotels and travel-related services, but it is currently not pointed to any web page.
The Complainant wrote a cease and desist letter headed “without prejudice” to the Respondent on April 17, 2006, but did not receive any reply.
5. Parties’ Contentions
The Complainant contends that all of the disputed domain names are confusingly similar to its trademark THE PHOENICIAN in which it has registered rights; that the Respondent has no rights or legitimate interests in respect of the domain names since its only use of them or any corresponding name has been for the web pages described above, which do not constitute a bona fide offering of goods or services; and that the domain names were registered and are being used in bad faith, in particular to divert internet users to websites promoting the Complainant’s competitors.
The Complainant alleges that the Respondent must have been aware of its THE PHOENICIAN hotel resort when he registered the domain names, since it is very well-known as one of the top hotels in the United States.
The Complainant asks that the disputed domain names be transferred to it.
The Respondent points out that the word “Phoenician” describes the people who lived in the region of the Lebanon in ancient times. He submits that the domain names are not confusingly similar to the mark THE PHOENICIAN and notes that the Complainant has not suggested that its rights are infringed by the websites at “www.thephoenician.net” for a shipping company or “www.phoenicia.org” relating to the Phoenician people.
The Respondent claims that he has rights and legitimate interests in the domain names. He exhibits an extract from a Google directory of consultants which lists “Phoenician” and a link to a website “www.phoenician.com” with the description “Beirut-based IT consulting for private and small business. Services include project management and business planning.” He notes that his organization was identified as <Phoenician.com> in the registrations of the disputed domain names and states that he was building a reputation as a freelance consultant for his services and for a company to be formed using the domain name. He also says that he has used the domain name <phoenician.net> in all business correspondence.
The Respondent alleges that Network Solutions posted the web page containing links to travel sites as its standard “Under Construction” page when hosting was transferred to that company last year. He states that he never obtained any benefit from this and that on receipt of the Complaint he caused the page to be changed to Network Solutions basic “Under Construction” page. Similarly, the web page previously at “www.phoenician.biz” was installed by the hosting company without any benefit to him and was removed by him as soon as a web check revealed the advertisement link. The colour scheme of the web page at “phoenician.info” reflects the Lebanese flag.
The Respondent maintains that the disputed domain names were registered for a legitimate use as a company name in a business in a completely different field to that of the Complainant, namely project management and IT consulting. He also points out that he has rejected many offers of third parties to buy them and exhibits correspondence showing his refusal to entertain an offer for <phoenician.com> in 2003.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (A) that the disputed domain names are identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and (C) that the domain names were registered and are being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel is satisfied that the Complainant has registered rights in its mark THE PHOENICIAN and that each of the disputed domain names is confusingly similar to this mark.
Apart from the generic TLD suffices, which should be discounted, the only difference between the Complainant’s mark and the disputed domain names is the omission of the preceding definite article from the latter. However, members of the public are used to the definite article being treated as an optional part of a name. Accordingly, Internet users looking for information about the Complainant’s THE PHOENICIAN hotel are liable to assume that they may find it using the disputed domain names.
This conclusion is reinforced by the web pages to which “www.phoenician.com”, “www.phoenician.net” and “www.phoenician.biz” resolved until recently. Irrespective of how and by whom their content was prepared, they reflected an evident association between the domain names and THE PHOENICIAN mark.
This finding is not displaced by the possibility that the domain names could be used in a way which might not infringe the Complainant’s trademark rights. As has been confirmed in numerous decisions under the Policy, its first requirement demands an objective comparison between the domain names and the Complainant’s mark. This assessment is not affected by the way in which the domain names might be used.
The Panel concludes that the first requirement of the Policy is satisfied in relation to each of the domain names.
In accordance with paragraph 4(c)(i) of the Policy, a right or legitimate interest in respect of a domain name can be demonstrated by proof of use, or demonstrable preparations to use, the domain name or a corresponding name in connection with a bona fide offering of goods or services before notice of any dispute.
The Panel has considered the Google directory listing exhibited by the Respondent and his statements in the Response that he was building a reputation for his services and intended company under the domain name <phoenician.com>. The Panel does not regard this evidence as establishing use or demonstrable preparations for use of the domain names or corresponding names in connection with a bona fide offering of goods or services prior to notice of the dispute.
The printout of the Google directory listing is dated August 30, 2006, some four and half months after the Respondent had notice of the dispute. In any case, it does not confirm any actual offering of goods or services or real preparations to offer goods or services under the name <phoenician.com>. The Respondent’s statements in the Response are vague and unspecific. The lack of any further evidence of bona fide use or preparation for use of the domain names is striking, given that the domain names were registered at various dates between July 19, 1998, and March 27, 2002.
Similarly, there is no real evidence that the Respondent was commonly known by the domain name. Had this been the case, such evidence would have been readily available, and the contrary may therefore be inferred from its absence. Finally, it is not suggested by the Respondent that he is making legitimate noncommercial use of the domain name, and indeed this would be contrary to his submissions.
In all the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in respect of any of the domain names, and that the second requirement of the Policy is satisfied in relation to each of them.
The domain names <phoenician.com>, <phoenician.net> and <phoenician.biz> were in use until recently for web pages containing links to travel websites promoting the Complainant’s competitors as well as the Complainant’s THE PHOENICIAN hotel resort. Such use was liable to divert Internet users seeking information about the Complainant’s hotel resort through confusion to websites promoting the Complainant’s competitors and thereby to generate click-through commissions.
Although the Respondent claims that he did not post these web pages and has not received any commissions, he must have been aware of these pages for some time, since he says that Network Solutions posted the web page at “www.phoenician.com” and “www.phoenician.net” when hosting was transferred to it last year. It is also clear that the Respondent was able to take down these web pages at any time if he wished to do so. In these circumstances, the Panel regards the Respondent as responsible for this objectionable use of three of the disputed domain names.
Furthermore, the Respondent’s explanations of his acquisition and use of the disputed domain names are difficult to reconcile with the absence of evidence of bona fide use since they were registered up to 8 years ago.
In all the circumstances, the Panel concludes on the balance of probabilities that the disputed domain names were registered and are being used in bad faith, in particular to divert internet users seeking information about the Complainant’s hotel resort by confusion to other websites promoting the Complainant’s competitors, thereby obtaining click-through commissions.
Accordingly, the Panel finds that the third requirement of the Policy is satisfied in relation to each of the disputed domain names.
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 names, <phoenician.biz>, <phoenician.com>, <phoenician.info> and <phoenician.net> be transferred to the Complainant.
Date: September 25, 2006