WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KT Intellectual Property Holding Company, LLC v. Henry Findstein, SPB Resource & Asset Management Group
Case No. D2017-2047
1. The Parties
The Complainant is KT Intellectual Property Holding Company, LLC of Irvine, California, United States of America ("United States"), represented by Neal, Gerber & Eisenberg LLP, United States.
The Respondent is Henry Findstein, SPB Resource & Asset Management Group of Baltimore, Maryland, United States.
2. The Domain Name and Registrar
The disputed domain name <sagamorependrybaltimore.com> is registered with 1&1 Internet SE (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on October 30, 2017 requesting the Complainant clarify the concerned registrar and mutual jurisdiction for the Complaint. The Complainant filed an amendment to the Complaint on October 30, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2017.
The Center appointed Angela Fox as the sole panelist in this matter on December 13, 2017. 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 part of a large hospitality company based in the United States, providing and promoting hotel and resort accommodations, restaurant and bar services and residential condominium services. In February 2016, the Complainant announced the launch of its luxury Pendry hotel in San Diego, and at the same time announced its plans to open a second Pendry hotel, the Sagamore Pendry in Baltimore, the grand opening of which took place in March 2017. Copies of the pre-launch publicity relating to these hotels are annexed to the Complaint.
Both Pendry hotels have received media attention in prominent national, local and industry publications. Copies of articles in Hotels magazine from November 2016, The Baltimore Sun from March 2017 and The Washington Post from September 2017, all mentioning the Sagamore Pendry hotel in Baltimore, are also annexed to the Complaint.
The Complainant is the owner of multiple trademark registrations for PENDRY in countries around the world, including European Union Trade Mark 010701811 registered on August 7, 2012.
The disputed domain name was registered on December 3, 2016. It does not currently resolve to an active website.
The Complainant's lawyers wrote to the Respondent on August 23, 2017 putting it on notice of the Complainant's rights and asking for the disputed domain name to be transferred to the Complainant. The letter was returned as undeliverable. The Complainant subsequently brought this Complaint.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to the PENDRY trademark and the SAGAMORE PENDRY property name, in which it has unregistered trademark rights. The Complainant submits that the inclusion of the geographically descriptive term "baltimore" does not distinguish the disputed domain name, but rather increases the likelihood of confusion. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered in bad faith. The Complainant submits that the Respondent has provided false WhoIs contact details, such that the registration may also be deemed to have been made in bad faith despite the apparent lack of use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered trademark rights in PENDRY, and that it has used the SAGAMORE PENDRY mark in respect of a luxury hotel in the city of Baltimore on a sufficient scale as to have acquired recognition in local and national media and common law rights in that mark under United States law.
The disputed domain name is similar to the earlier registered trademark PENDRY and even more so to the earlier unregistered trademark SAGAMORE PENDRY. In both cases, the additional word "baltimore" appearing in the disputed domain name is purely descriptive, as it refers to the geographic location in which the Complainant is known to provide its luxury hotel services under the SAGAMORE PENDRY mark. The word "baltimore" therefore does nothing to distinguish the disputed domain name from the Complainant's earlier registered and unregistered trademarks, but rather reinforces the suggestion of a link with the Complainant's business since it clearly refers to the Sagamore Pendry hotel in Baltimore.
The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has done nothing to rebut that assertion.
The disputed domain name is not in use, and there is no evidence of any circumstances that could confer a legitimate right or interest in the disputed domain name on the part of the Respondent within the meaning of paragraph 4(c) of the Policy, or otherwise.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is implausible that the Respondent registered the disputed domain name without knowledge of the Complainant's intended business activities under the SAGAMORE PENDRY mark in the city of Baltimore. The "sagamorependry" elements within the disputed domain name are distinctive and are highly unlikely to have been arrived at by chance, nor has the Respondent provided any alternative explanation for them. Moreover, the disputed domain name was registered after the Complainant had announced its intention to open a hotel under the name Sagamore Pendry in Baltimore.
If the Respondent really were based in Baltimore, as suggested by its recorded WhoIs details, that would have made it even more likely that the Respondent would have been aware of the Complainant's plans. However, the Complainant asserts, and the Respondent does not deny, that those WhoIs details appear to be false. The Complainant notes that the Respondent's alleged business name is not listed on the Maryland Secretary of State's website, and correspondence sent to the Respondent's address was returned.
Taking all of these factors into account, the disputed domain name appears to have been registered in bad faith, in the full knowledge of the Complainant's plans and with the intent to benefit in some way from the ownership of a domain name that was likely to confuse Internet users into thinking it was that of, or in some way related to or authorized by, the Complainant. The Respondent's use of false WhoIs details so as to shield its identity further reinforces the impression that the registration was made in bad faith.
The Policy also requires a finding that the disputed domain name has been used in bad faith. That the disputed domain name has not yet been used is no obstacle to such a finding in circumstances such as those in this case. As noted in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it is possible in certain circumstances for inactivity or "passive holding" by a respondent to amount to bad faith use of a domain name. In assessing whether the facts justify such a finding, panels "must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the… Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith".
In this case, the Panel is satisfied that such circumstances exist. These include the publicity given to the Complainant's intended launch of the Sagamore Pendry hotel in Baltimore prior to registration of the disputed domain name, the very close similarity of the disputed domain name to the SAGAMORE PENDRY mark, the Respondent's apparent active steps to conceal its true identity by using false WhoIs contact details, and the lack of any good faith explanation for the Respondent's conduct.
The Panel concludes that the disputed domain name has been registered and used in bad faith. The Complainant therefore succeeds under the third element of the Policy.
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 <sagamorependrybaltimore.com> be transferred to the Complainant.
Date: January 22, 2018