WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBE Licensing, LLC v. Nico Santucci
Case No. D2013-0722
1. The Parties
Complainant is SBE Licensing, LLC of Los Angeles, California, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
Respondent is Nico Santucci of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hydevegas.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2013, the Registrar 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” 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 Respondent of the Complaint, and the proceedings commenced on May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2013. On May 29, 2013, the Center received an email communication in which Respondent submitted a reply to Complainant’s contentions. On May 30, 2013, the Center sent a communication informing the parties that Respondent’s email would be forwarded to the Panel, once appointed, for determination pursuant to its discretion.
The Center appointed Mark Partridge as the sole panelist in this matter on June 12, 2013. 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 runs several different luxury properties under the HYDE brand. These properties are primarily used as nightclubs or the like. Complainant currently has HYDE properties in Hollywood; several in Miami; New York; Las Vegas and others.
Complainant has registered several marks associated with the HYDE brand such as HYDE, HYDE LOUNGE, and HYDE BEACH (hereinafter the “HYDE Marks”), and has over 20 trademark registrations in various world jurisdictions. In the United States of America, complainant has four registrations, the earliest of which was registered in 2006. These registrations are for HYDE (no. 4304156), HYDE LOUNGE (& design) (no. 3245583), HYDE BEACH (no. 4299423), and HYDE LOUNGE (no. 3413084). Complainant owns all rights, title, and interest in and to the HYDE Marks in connection with the provision of nightclub, bar, and restaurant services. The HYDE Marks have received media attention from such sources as the Los Angeles Times, us weekly, and Las Vegas Magazine.
Complainant further promotes its services and the HYDE Marks through websites that typically consist of a HYDE mark and a geographic location, such as <hydehollywood.com> or <hydesouthbeach.com>.
Respondent runs a nightclub in Las Vegas and registered the disputed domain name in December of 2009.
On January 10, 2013, Complainant sent a letter to Respondent demanding an immediate transfer of the disputed domain name. It is undisputed that Respondent demanded USD 2,500 in exchange for the disputed domain name.
5. Parties’s Contentions
Complainant alleges that the disputed domain name is confusingly similar to the HYDE Marks; that Respondent has no legitimate interests or rights in the disputed domain name, and that the disputed domain name was registered and used in bad faith.
Complainant further alleges that Respondent registered the domain name only after hearing of Complainant’s plans to expand into Las Vegas. Complainant claims that Respondent answered its letter via phone call, wherein Complainant claims he admitted to knowledge of Complainant and the HYDE Marks because of his work in the Las Vegas nightclub industry.
Although respondent never formally replied to the allegations, he did offer an explanation via email, which the Panel chooses to consider.
Respondent alleges that the domain name was bought in good faith, with the idea to open a lounge called Hyde and no knowledge of the HYDE Marks. Respondent further alleges that beyond registering the disputed domain name, it was never used in commerce because he chose not to use the “Hyde” name for his business. Respondent does not contest the fact that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent’s domain name consists of Complainant’s mark followed by a descriptive geographic location. The addition of a geographic location does not avoid confusion, especially where the Complainant has a well-established trademark right. Persons encountering Respondent’s domain name are likely to believe that the domain name refers to Complainant’s services in that same city. Furthermore, Respondent does not contest that Complainant has rights in the HYDE Mark or that the disputed domain name is identical or confusingly similar.
Confusing similarity has been found by other Panels in similar circumstances. See e.g., Advance Magazine Publishers, Inc. v. Models USA Inc., WIPO Case No. D2002-0907 (finding the domain names <voguebritain.com>, <voguecanada.com>, <vogueengland.com>, <voguefrance.com>, and <voguegermany.com> to all be confusingly similar to Complainant’s VOGUE mark); Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050 (finding <yahooflorida.com> and <yahoousa.com> confusingly similar to the YAHOO! mark).
The Panel finds that Complainant has satisfied the requirements of Paragraph 4(c)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent admits that it has never been known by “Hyde” or attempted to use the name.
Complainant has submitted evidence showing that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent is not authorized or licensed to use Complainant’s well-known mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant's trademark). Respondent has never been known by the “Hyde” name and is not making a fair or noncommercial use of the name. See Gallup v. Amish Country Store, NAF Case No. 96209 (respondent does not have rights in a domain name incorporating another's mark when respondent is not known by that mark); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (registering a domain name does not confer trademark rights, such rights may arise only through the bona fide offering of goods or services); Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (attracting users to a site by creating confusion precludes a finding of a bona fide offering of goods and services).
The Panel therefore finds that Complainant has satisfied the requirement of paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use of a domain name includes, but is not limited to, the following:
(1) The domain name was registered or acquired primarily for the purpose of selling the domain name registration for profit.
(2) The domain name was registered primarily for the purposes of disrupting the business of a competitor.
(3) By using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the site 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 the web site or location or of a product or service on the web site or location.
There are several factors that support a finding of bad faith registration and use in this case. The Panel finds it unlikely that Respondent would spend USD 2,500 on a domain name because of a mere idea to use the name for a lounge.
Complainant has shown that Respondent is not known by the disputed domain name and is not making bona fide use of the disputed domain name. Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”). Because of Complainant’s federal registrations for the HYDE Marks, Respondent had constructive knowledge of Complainant’s rights. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that Respondent had prior constructive knowledge of Complainant’s trademark because of Complainant’s federal registration). Respondent knew or should have known about Complainant because he is in the same industry as Complainant, and his business is located only a few miles from Complainant’s Las Vegas Establishment. See Jupiters Ltd. V. Aaron Hall, WIPO Case No. D2000-0574 (finding it inevitable that the respondent registered the domain name in bad faith where the complainant’s name and mark were well known and in the same district as Respondent). Finally, Respondent’s only communications with Complainant consisted of attempts to sell the disputed domain name.
These circumstances support a finding of bad faith. The Panel finds it unlikely that Respondent registered the disputed domain name with a good faith intention to open his own “Hyde” lounge. Instead, it appears Respondent registered the disputed domain name in an attempt to disrupt the business of a direct competitor while simultaneously attempting to attract customers to his own business by creating confusion as to the owner of the web site. Lastly, Respondent’s interactions with Complainant show a further intent to sell the disputed domain name for profit.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <hydevegas.com>, be transferred to Complainant.
Date: June 30, 2013