WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBE Hotel Licensing, LLC v. SITCO, Michael Shaya and Shaya International Trading Corporation d/b/a “SITCO”
Case No. D2011-2254
1. The Parties
Complainant is SBE Hotel Licensing, LLC of Los Angeles, California, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
Respondents are SITCO, Michael Shaya and Shaya International Trading Corporation d/b/a “SITCO“ of Miami, Florida, United States of America, represented by Damian & Valori, LLP, United States of America.
2. The Domain Names and Registrar
The Domain Names <slshotelbeverlyhills.com>, <slshotelbh.com>, <slshotelboston.com>, <slshotelfl.com>, <slshotella.com>, <slshotellosangeles.com>, <slshotellv.com>, <slshotelmb.com>, <slshotelnewyork.com>, <slshotelsb.com> and <slshotelwashingtondc.com> (collectively, “the Domain Names”) are registered with GoDaddy.com, LLC (“GoDaddy.com”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 22, 2011, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the Domain Names. On December 22, 2011, GoDaddy.com transmitted by email to the Center its verification response confirming that Respondent, namely SITCO, is listed as the registrant and providing the contact details for ten out of the eleven Domain Names due to the fact that there was a typographical error in the Complaint with respect to the domain name <slshotellla.com>. The Center sent an email communication to GoDaddy.com on January 5, 2012 requesting registrar verification for the corrected domain name <slshotella.com>. On January 5, 2012, GoDaddy.com confirmed that Respondent SITCO is listed as the registrant for all eleven Domain Names. The Center sent an email communication to Complainant on January 6, 2012 providing the registrant and contact information disclosed by the Registrar for all the Domain Names, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on January 6, 2012.
On January 3, 4 and 5, 2012, the Center received email communications from Respondents informally responding and reacting to the Complaint. On January 5 and 6, 2012, the Center acknowledged receipt of those communications and informed Mr. Shaya that the above-referenced communications will be brought to the consideration of the Panel upon its appointment.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was January 30, 2012. The Response was filed with the Center on January 28, 2012. On February 1, 2012, Complainant filed an unsolicited Reply in Support of their Complaint and on February 26, 2012, Respondent sent an email communication to the Center “demand[ing] that it be informed whether the Arbitrator was forwarded a copy of the Claimant's procedurally improper Reply . . . “and requesting “an opportunity to provide a brief response to the arguments set forth” in Complainant’s Reply if the Arbitrator received it.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 9, 2012. 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
Complainant SBE Hotel Licensing, LLC (“SBE”) owns the marks SLS HOTEL (United States Registration No. 3,680,479, registered September 8, 2009); and SLS HOTELS (United States Registration No. 3,570,468, registered on February 3, 2009) (the “Marks”), among others, for use in connection with a variety of services, including the operation of hotels and resorts and the provision of bar and restaurant services.
The Domain Names were registered on the following dates: <slshotelboston.com> and <slshotelwashingtondc.com> on November 7, 2011; <slshotellv.com>, <slshotelmb.com>, <slshotelfl.com>, <slshotelsb.com>, <slshotelbh.com>, <slshotelnewyork.com>, <slshotelbeverlyhills.com>, <slshotellosangeles.com> and <slshotella.com> on September 21, 2011.
5. Parties’ Contentions
SBE requests that the Panel direct the transfer of the Domain Names to SBE for the following reasons.
In keeping with its refined approach to design, cuisine and service, SBE’s flagship SLS HOTEL-branded property in Beverly Hills features restaurants by José Andrés, a renowned pool and spa, and transcendent event and meeting spaces. In addition to its Beverly Hills property, since at least as early as August 2010, SBE has been engaged in a high profile re-development of the former Ritz Plaza Hotel in South Beach (Miami) – where Respondents are located – into an SLS HOTEL-branded Property. SBE also is developing other luxury SLS HOTEL-branded properties in locations including New York and Las Vegas, Nevada (the foregoing properties and planned properties are referred to herein individually and collectively as the “SLS HOTEL Property (ies)”).
For many years, SBE has invested enormous time, effort and resources in promoting and marketing its services under and in connection with the SLS HOTEL Marks. As a result, the Marks have developed considerable worldwide recognition and have become known and recognized by travelers the world over as identifying and distinguishing SBE and its services. And SBE has garnered tremendous media attention and critical acclaim in international publications such as the New York Times, USA Today, Condé Nast Traveler, Travel + Leisure, and Fodors. SBE’s SLS HOTEL Property in Beverly Hills also has garnered numerous high-profile and coveted industry awards, including multiple Travel Weekly Magellan Awards, a AAA Four Diamond Rating, Fodor’s “Gold” Award for “Best Design Hotel” in 2009, Condé Nast Traveler “Hot List” Hotel, and Travel + Leisure’s “It List” for “Best New Hotel.”
The SLS HOTEL Marks and services are further promoted through numerous websites maintained by SBE, including the website maintained at “www.slshotel.com”.
In September 2011, many years after SBE’s adoption and first use of the SLS HOTEL Marks in connection with the SLS Hotel Property in Beverly Hills, and after SBE’s announcement that it would be opening SLS Hotel Properties in South Beach, New York, and Las Vegas, Respondents registered the Domain Names <slshotelbeverlyhills.com>, <slshotelbh.com>, <slshotelfl.com>, <slshotella.com>, <slshotellosangeles.com>, <slshotellv.com>, <slshotelmb.com>, <slshotelnewyork.com>, and <slshotelsb.com> (the “First Set of Domain Names”). SBE believes that Respondents registered the Domain Names to trade upon the significant goodwill and extensive promotional efforts associated with the SLS HOTEL Marks. Tellingly, Respondents are using these domain names in connection with pay-per-click websites that display links to the services of SBE’s competitors.
On October 18, 2011, SBE’s counsel sent a letter to Respondents via both Federal Express and email to the addresses listed in the registration records for the First Set of Domain Names, demanding an immediate transfer of them to SBE. Respondents did not respond to that letter. SBE’s counsel sent a follow-up letter on November 4, 2011. Respondents did not respond to that letter either.
In early November 2011, Respondents registered additional domain names comprised of the SLS HOTEL Marks, namely: <slshotelboston.com> and <slshotelwashingtondc.com>. Like the First Set of Domain Names, Respondents use these to host pay-per-click websites linking to the services of SBE’s competitors.
On November 15, 2011, in-house counsel for SBE telephoned Respondents to try to amicably resolve this matter. During the conversation, Respondents stated, among other things, that there was no way SBE would obtain the Domain Names without purchasing them from Respondents. Later that day, SBE confirmed the substance of that telephone conversation via an email (made of record).
Each of the Domain Names is virtually identical and confusingly similar to SBE’s SLS HOTEL Marks because they consist of SBE’s registered marks plus a highly descriptive geographic term corresponding to a location or planned location of an SLS HOTEL Property. Adding the “.com” top-level domain indicator does not distinguish the Domain Names from SBE’s SLS HOTEL Marks.
Respondents have no legal relationship with SBE through which they can claim any rights to the Domain Names, nor has SBE consented to Respondents’ registration of the Domain Names. Indeed, SBE has objected to Respondents’ registration and use of the Domain Names in several letters, to which Respondents have failed to respond. Respondents also have no rights or legitimate interests in the Domain Names because they are not referred to or commonly known as any of the Domain Names. Nor do Respondents have any U.S., European Community, or other international registrations for the term SLS HOTEL. Respondents have not made, nor are they making, a legitimate noncommercial or fair use of the Domain Names. Since registering the Domain Names, Respondents have used them to confuse and direct Internet users to a variety of pay-per-click websites providing hyperlinks to third-party sites including sites promoting the Services of SBE’s competitors. Particularly given the renown of the SLS HOTEL Marks in connection with hotel, resort, bar, and restaurant services, and the timing of the registration of the Domain Names soon after SBE’s announcement that it was developing new SLS HOTEL Properties in South Beach, Las Vegas, and New York, SBE believes that Respondents would not have chosen the Domain Names unless they were seeking to intentionally trade on the SLS HOTEL Marks.
Respondents have registered and used the Domain Names in bad faith and with full knowledge of SBE’s SLS HOTEL Marks. Given the renown of SBE’s SLS HOTEL Marks, it is not plausible that Respondents innocently registered the Domain Names without a design to exploit their similarity to the SLS HOTEL Marks. By virtue of SBE’s United States federal registrations for the SLS HOTEL Marks, Respondents have constructive knowledge of SBE’s long-standing rights in the SLS HOTEL Marks when Respondents registered each of the Domain Names. Furthermore, the fact that Respondents are located just a few miles away from SBE’s high profile SLS HOTEL development in South Beach is evidence that they registered the Domain Names in bad faith and with full knowledge of SBE’s rights and interests in its SLS HOTEL Marks. By registering and maintaining a series of registrations that are identical to the SLS HOTEL Marks, Respondents have prevented SBE from registering the SLS HOTEL Marks specifying various property locations where SBE has developed or is developing SLS HOTEL Properties. In addition, Respondents’ bad faith is evidenced by its failure to respond to SBE’s repeated correspondence and Respondents’ statement by phone that there was no way that SBE would obtain the Domain Names without buying them from Respondents.
Respondents were on constructive notice of SBE’s rights in the SLS HOTEL Marks before registering the Domain Names by virtue of SBE’s worldwide trademark registrations. Furthermore, Respondents registered two of the Domain Names after explicitly being put on notice of the SBE’s trademark rights, further substantiating Respondents’ bad faith. Respondents’ use of each of the Domain Names to display a GoDaddy.com pay-per-click link farm parking page providing links to the services of SBE’s competitors is a further indicia of bad faith.
Respondents registered the Domain Names in good faith for a legitimate business – as potential web addresses for a chain of hotels that Respondents anticipate developing under the name “Shaya Long Stay Hotels” (hereinafter the “Concept”). Respondents’ principal, Michael Shaya, has been in hotel and hospitality for many years and is beginning the stages of developing the Concept through SITCO. For example Respondents have developed a logo for Shaya Long-Stay Hotel (made of record), which is in the process of being registered in the United States Patent and Trademark Office.
To the extent that using the “SLS” letters in its web address for purposes of the Concept may presently infringe on Complainant’s Marks, Respondents have no intention of using the disputed web addresses. However, given that Complainant operates only a single hotel in California, which it apparently operated since 2008, whether Complainant will ever be in business by the time Respondents will have a need to use the Domain Names is highly speculative. Respondents’ good faith in acquiring the Domain Names is practically beyond dispute because they were obtained solely for the legitimate business interest of developing the Concept.
Respondents generally ignored Complainant’s demands to relinquish control and ownership over the Domain Names because they did not want to be bullied by Complainant. Respondents had no intention of selling the Domain Names to anyone, including Complainant. Contrary to Complainant’s allegations, Respondents’ principal, Michael Shaya, responded to the previous written demands by email explaining the Domain Names were obtained in good faith and they are not for sale. The fact that Complainant references proximity is irrelevant. Miami is a very big city and Respondents are not aware of the new planned developments in and around the Miami area.
Respondents admit that Complainant never consented to the registration of the first set of Domain Names, but believe no consent was required or sought. Respondents admit they received Complainant’s letters, but deny profiting from using the Domain Names. The pages of links are showing since that is the default of GoDaddy for a domain name that has not been redirected towards a website. Originally, these sites were pointed to the SITCO webpage, which Respondents changed to the default following Complainant’s request in its original letter. None of the web pages associated with the Domain Names are confusing or similar to Complainant’s business. Complainant has no right or property interest in the Domain Names. Complainant’s claims are not ripe because it has not asserted a legitimate business purpose for controlling the Domain Names.
Complainant’s Complaint contains false information, which calls into question what kind of business model Complainant is operating under given the threatening tactics and bullying that it has exhibited. Respondents’ integrity will never be compromised by short-term gains and they have no intention to profit off anyone or anything as they are falsely accusing of in their Complaint. These sites are not for sale. Respondents expect nothing less than an immediate dismissal due to Complainant’s inaccurate Complaint and unlocking of the domains.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) Respondents’ Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondents’ Domain Names have been registered and are being used in bad faith.
A. Preliminary Procedural Issues
i) Respondents’ Identity
The Panel notes that according to the Registrar, SITCO is the registrant of the Domain Names. The Panel also notes email communications of January 3, 4 and 5, 2012 from Mr. Shaya, who apparently acted on behalf of SITCO and represented himself as the President and CEO of Shaya Long-Stay Hotels. The Response was filed by “Shaya International Trading Corporation d/b/a “SITCO”, which has the same address as the registrant of the Domain Names, namely SITCO. Under these circumstances, the Panel finds it appropriate to consider all three above-mentioned entities as Respondents in the present case.
ii). Unsolicited Filing by the Parties
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion. Here the Panel did not request additional arguments or evidence from the parties. Thus, the Panel has the sole discretion to determine the admissibility of Complainant’s Reply in Support of their Complaint (“the Reply”). The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and the Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. As stated in that case: “These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.” Complainant's stated reason for filing its Reply is: “to respond to some of the allegations and misstatements made by Respondent SITCO in its Response . . .”The Panel finds that many of Complainant's arguments were already raised in their Complaint and are simply reargued in the Reply. Considering the purpose of the Policy and the Rules, and the limited exceptions for accepting supplemental unsolicited arguments, the Panel concludes that Complainant has not made a sufficient showing for why the Reply should be considered by the Panel.
As mentioned above, on February 26, 2012, Respondent requested an opportunity to provide a brief response in the event that the Panel would accept Complainant’s supplemental filing. In view of the above, it is not necessary for the Respondent to submit a supplemental filing.
B. Identical or Confusingly Similar
The Panel finds Complainant has rights in the SLS HOTEL Marks that it has been using since 2008. In addition to that use, Complainant owns trademark registrations for the SLS HOTEL Marks, including United States Registration No. 3,680,479 (registered September 8, 2009) and United States Registration No. 3,570,468 (registered on February 3, 2009). See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”). The Domain Names entirely incorporate Complainant’s SLS HOTEL Marks. Previous panels have found that a domain name wholly incorporating a complainant’s registered mark may be sufficient for a finding of confusing similarity under the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. The addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. And including gTLDs such as “.com” and “.net” in the Domain Names do nothing to distinguish them from the SLS HOTEL Marks. Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.
Each of the eleven Domain Names incorporate the SLS HOTEL Marks in its entirety, together with geographic terms spelled out or in shorthand (e.g., “Beverly Hills”, “BH”, “Los Angeles”, “LA”, “Boston”, “New York”, etc.), none of which serve to distinguish the Domain Names from the SLS HOTEL Marks in any legally cognizable way. Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755 (adding geographically descriptive term to hotel brand name increases likelihood of consumer confusion). In fact many of the additional words only serve to exacerbate the confusion, because the geographic terms correspond to a location or planned location of an SLS HOTEL Property. Id.; Hermès International v. Yuan Waihuang, WIPO Case No. D2011-1850.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
Complainant has established rights in the SLS HOTEL Marks for, among other things, operating hotels and resorts and providing bar and restaurant services. These are the same kinds of services for which Respondents have registered the Domain Names (currently pay-per-click links to hotels, and a chain of hotels Respondents claim are under development). Complainant alleges that it does not have any legal relationship with Respondents by which they can claim any rights to the Domain Names, nor has Complainant consented to Respondents’ registration of the Domain Names. In fact Complainant objected to Respondents’ registration and use of the Domain Names by way of cease and desist letters before instituting this proceeding. Complainant further asserts that Respondents are not referred to or commonly known as the Domain Names nor do they have any trade mark registration for the SLS HOTEL Marks. Insofar as Complainant has made a prima facie showing that Respondents lacks rights to the Domain Names (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondents to show by concrete evidence that they have rights or legitimate interests in the Domain Names. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondents may satisfy their burden by demonstrating any of the following:
(i) use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice of the dispute; or
(ii) that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that it was 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.
Respondents have provided no concrete evidence to carry their burden. For example, Respondents have failed to adduce any evidence that they were commonly known by the Domain Names. The only evidence of record is that Respondents’ principal has been known as Michael Shaya and his company has been known as Shaya International Trading Corporation d/b/a “SITCO”. Respondents claim they have developed a logo (i.e., “Shaya Long-Stay Hotel”) for a hotel concept they have for a chain of hotels, which is in the process of being registered in the United States Patent and Trademark Office (“USPTO”). If Respondents are trying to assert legitimate interests pursuant to 4(c)(i) or (ii) of the Policy, they have failed to provide the Panel with any evidence showing the requisite temporal use or preparations to use their logo but, in any event, the alleged logo using Mr. Shaya’s name along with the term “long-stay” does not justify Respondents’ infringing registration and use of Complainant’s SLS HOTEL Marks in the Domain Names. Furthermore, Respondents have failed to provide the Panel with any evidence of their alleged application to register the logo with the USPTO and the Panel has not been able to confirm independently with the USPTO’s public records that Respondents filed such an application.
There is also unrebutted evidence that the SLS HOTEL Marks were known in the hotel and travel industry before the time Respondents registered the Domain Names. Insofar as Respondents admit Mr. Shaya has been in the hotel and hospitality industry for many years, the Panel believes on that basis alone, or after a reasonable investigation by Respondents at the time it registered the Domain Names, Respondents would have known that: (a) Complainant was using the SLS HOTEL Marks in the hotel industry since 2008; (b) the SLS HOTEL Marks were registered with the USPTO in 2009 for hotel, bar and restaurant services (the Domain Names were registered in 2011); and Complainant’s Hotel in Beverly Hills was written up or advertised in such publications as the Angelino Modern Luxury, European CNBC Business, Conde Nast Traveler, Inside magazine, and Los Angeles Confidential magazine. Given these facts, the timing of the Domain Name registrations (i.e., soon after Complainant announced it was developing new SLS HOTEL Properties in South Beach, Las Vegas, and New York), and the incorporation in the Domain Names of geographic terms that correspond to Complainant’s pre-existing hotel in Beverly Hills and the ones it announced were under development, the Panel is lead to the conclusion that Respondents chose the Domain Names to trade intentionally on the good will in the SLS HOTEL Marks.
Respondents claim they are not profiting from using the Domain Names because the web pages that are connected to them are default pages provided by Respondents’ domain service, and that they intend to use the Domain Names with a legitimate business (hotels allegedly under development). The evidence strongly suggests, however, that by using domain names that are confusingly similar to the SLS HOTEL Marks to direct Internet users to pay-per-click websites providing hyperlinks to third-party sites including sites for hotels (e.g., “Hotels Miami bis zu – 90%”, “Hotel Rolle”, “Las Vegas Strip Hotel”, “75% Off New York Hotels”), Respondents are not making a bona fide or fair use of the Domain Names without the intent to gain a commercial benefit and to divert customers from a competitor. The American Automobile Association, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2010-0565 (holding that Respondent’s unauthorized use of the domain name at issue incorporating Complainant’s registered trademark and relevant descriptors to attract Internet users to pay-per-click landing pages promoting competing businesses was not a bona fide commercial use); see also, Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. That Respondents believe they are developing a “legitimate” hotel business does not negate under the Policy the infringing use or the lack of a bona fide use of the Domain Names whether for the pay-per-click sites or even for Respondents’ alleged future hotel chain. Both constitute infringing, non bona fide uses of Complainant’s Mark for commercial gain.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name by Respondent in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
1. Bad Faith Registration
Although Respondents deny any bad faith registration of the Domain Names, the Panel must conclude based on the evidence presented Respondents registered the Domain Names in bad faith having knowledge of Complainant’s rights in the SLS HOTEL Marks. In addition to its United States registrations for the SLS HOTEL Marks issuing in 2009, Complainant has presented uncontroverted evidence to the Panel demonstrating the wide-spread exposure of the SLS HOTEL Marks in connection with its hotel, resort, restaurant, and bar services since 2008. For example, in 2009 the SLS Hotel property in Beverly Hills made the Conde Naste travel magazine’s “Hot List” of hotels, it was also featured in Inside Magazine, and in the New York Times. Complainant’s SLS HOTEL property in Beverly Hills also has garnered numerous high-profile and coveted industry awards, including multiple Travel Weekly Magellan Awards, a AAA Four Diamond Rating, Fodor’s “Gold” Award for “Best Design Hotel” in 2009, and Travel + Leisure’s “It List” for “Best New Hotel.” Respondent registered each of the Domain Names, in 2011, well after this high-profile exposure of the SLS Hotel Marks. Insofar as Respondent’s principal, Michael Shaya, admits to being in the hotel and hospitality field for many years, and he is developing a chain of hotels, it is difficult to believe that Respondents would not have known of the SLS HOTEL Marks before registering the Domain Names.
In fact since at least as early as August 2010, Complainant has been engaged in a high profile re-development of the former Ritz Plaza Hotel in South Beach (Miami) into an SLS HOTEL property, only a few miles from where Respondents are located. See Jupiters Ltd. v. Aaron Hall, WIPO Case No. D2000-0574 (holding that it was inevitable that respondent registered the domain names with full knowledge of complainant’s rights and interests considering the facts that the mark was widely known and respondent's mailing address was in the same district as complainant's business). Furthermore, instead of registering a domain name reflecting Respondents’ alleged logo “Shay Long-Stay Hotel”, Respondents registered eleven Domain Names incorporating Complainant’s SLS HOTEL Marks with geographic terms corresponding to Complainant’s existing SLS HOTEL Property location (i.e., SLS Property in Beverly Hills, Los Angeles (<slshotelbeverlyhills.com>; <slshotelbh.com>; <slshotella.com>; <slshotellosangeles.com>)), and its announced planned properties in South Beach, Florida; New York; and Las Vegas (i.e., <slshotelfl.com>; <slshotellv.com>; <slshotelnewyork.com>, and <slshotelsb.com>). This is further evidence Respondents were likely aware of Complainant’s rights in the SLS HOTEL Marks. And for certain, Respondents’ registration of two of the Domain Names (i.e., <slshotelboston.com> and <slshotelwashingtondc.com>) after receiving Complainant’s cease and desist letter is clear evidence that these Domain Names were registered in bad faith.
2. Bad Faith Use
The Panel further concludes that Respondents have been using the Domain Names in bad faith. Respondents’ registration of two of the Domain Names after Complainant put it on notice of its rights in the SLS HOTEL Marks is evidence of Respondents’ bad faith use of the Marks. See Société Des Eaux De Volvic v. Yasushi Okabayashi / Kikakusha, WIPO Case No. D2004-0304 (registration of additional domain names incorporating complainant’s mark after receiving initial demand letter may be evidence of use in bad faith). Furthermore, Respondents’ use of the Domain Names to display a GoDaddy.com pay-per-click parking page providing links to hotel sites is further evidence of Respondents’ bad faith use of the Domain Names. See Get Away Today.com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 (use of the disputed domain to point to a GoDaddy.com link farm parking page displaying links to complainant’s competitors is evidence of bad faith).
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.
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 <slshotelbeverlyhills.com>, <slshotelbh.com>, <slshotelboston.com>, <slshotelfl.com>, <slshotella.com>, <slshotellosangeles.com>, <slshotellv.com>, <slshotelmb.com>, <slshotelnewyork.com>, <slshotelsb.com> and <slshotelwashingtondc.com> be transferred to Complainant.
Harrie R. Samaras
Dated: February 27, 2012