Complainant is Space Needle LLC, represented by Law Office of Mark J. Nielson, Seattle, United States of America.
Respondent is Iqbal Lalji, Los Angeles, California, United States of America.
The disputed domain name <seattlespaceneedlehotel.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2008. On December 9, 2008, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the domain names at issue. On December 9, 2008, GoDaddy.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 6, 2009.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 22, 2009. 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.
The following uncontested facts are summarized from the Complaint.
Complainant owns the relevant trademark, SPACE NEEDLE (“Complainant's Mark”), and Complainant uses it in connection with the operation of the Space Needle structure located in Seattle. In October 1961, Complainant filed an application with the United States Trademark Office to register the trademark SPACE NEEDLE. In addition, Complainant has registered the following trademark containing the name and mark SPACE NEEDLE: “Space Needle Design.” The trademark “SPACE NEEDLE” was registered on March 26, 1963.
Complainant contends as follows:
The Domain Name is confusingly similar to a trademark in which Complainant has rights. The Domain Name contains Complainant's identical mark and has led to actual confusion based on Respondent's use of the Domain Name.
Respondent has no rights or legitimate interests in respect of its use of the Domain Name. Respondent does not own any trademark containing any component of the Domain Name. There is no evidence that Respondent has used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
Respondent has registered and used the Domain Names in bad faith. Respondent, by creating a likelihood of confusion with the Complainants' Mark attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Further, Complainant's correspondence to Respondent was returned as undeliverable, due to Respondent's providing the Registrar with an incomplete or false address.
Respondent did not reply to Complainant's contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in the mark SPACE NEEDLE, by virtue of its registration with the United States Patent and Trademark Office. The Panel further finds that the Domain Name is confusingly similar to Complainant's Mark. The Domain Name incorporates Complainant's Mark in full and associates with it the common terms “seattle” and “hotel”. The Panel concludes that the addition of two generic terms is insufficient to differentiate the Complainant's Mark from the Domain Name and does not prevent confusion. Prior attempts to add descriptive words to differentiate a domain name have been vain. Parfums Christian Dior v. 1 Netpower Inc., WIPO Case No. D2000-0022 (March 3, 2000); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000).
As a conclusion, this addition does not change the likelihood of a confusion.
The Panel, therefore, finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice of the dispute to him, that he used of, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) he (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.
Respondent is not affiliated or related to Complainant in any way, nor has Respondent obtained a license or an authorization from Complainant to use the mark SPACE NEEDLE.
The record does not contain any evidence that Respondent has been commonly known by the Domain Name. Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services, and Respondent's use is neither a legitimate nor fair use. Complainant has shown that Respondent has used the Domain Name in connection with a website which contains links to other websites offering services of Complainant and Complainant's competitors. Such “commercial” use does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy provides several nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) Respondent acquired a domain name for the purpose of selling the domain name to a trademark owner for valuable consideration in excess of the Respondent's out-of-pocket expenses; (ii) The domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; and (iv) Respondent intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion.
The Panel finds that Respondent registered and used the Domain Name to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant's Mark. Given the registration of Complainant's trademark, as well as the widespread notoriety of Complainant's Mark related to the Space Needle structure, the Panel finds that in all likelihood, Respondent registered the Domain Name with knowledge of Complainant's Mark.
The Panel also finds that Respondent wrongfully diverted Internet traffic to his motel website and later to its own “link farm” site. This clearly disrupted Complainant's business by diverting potential customers to proprietors of sponsored links on Respondent's website.
Further, the evidence indicates that the Domain Name offers no links to services provided by SPACE NEEDLE. Respondent's Domain Name confuses consumers who can deceptively associate Respondent's business with Complainant's Mark, and in particular, creates confusion regarding the exact geographical location of Respondent's motel.
Finally, the very fact that Respondent, in an e-mail dated October 29, 2008, refused to transfer the Domain Name without the substantive payment of $10,000, is a clear demonstration of Respondent's bad faith.
For these reasons, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <seattlespaceneedlehotel.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: February 2, 2009