WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Four Seasons Hotels Limited v. George Thomas, George Thomas Real Estate
Case No. D2018-0337
1. The Parties
Complainant is Four Seasons Hotels Limited of Toronto, Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, New York, United States of America.
Respondent is George Thomas, George Thomas Real Estate of Fort Lauderdale, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thefourseasonsftl.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 26, 2018, the Center informed Complainant of updated UDRP Rules.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 20, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 29, 2018. 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 is the owner of registrations for the word service mark FOUR SEASONS and various FOUR SEASONS-formative marks on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including, but not limited to, registration number 2127969 (FOUR SEASONS), registration dated January 13, 1998, in international class (“IC”) 36, covering real estate services, as further specified; registration number 1195412 (FOUR SEASONS HOTELS), registration dated May 11, 1982, in IC 42, covering personalized lodging services, and registration number 1687336 (FOUR SEASONS RESORT), registration dated May 12, 1992, in IC 42, covering resort hotel services. Complainant is also the owner of registration of a design service mark incorporating a stylized tree, including registration number 1156739, registration dated June 2, 1981, in IC 42, covering hotel services.
Complainant is a provider of luxury hotel and resort services on its own and through its affiliates and subsidiaries. Complainant also licenses its service mark in connection with real estate services, including for the marketing and sale of private residences. Complainant has licensed its service mark to a project owner in connection with the marketing and sale of Four Seasons Private Residences Fort Lauderdale. Said private residences have not yet opened, but they have been publicized by the owner of the property which has engaged in substantial pre-opening marketing efforts.
Complainant maintains a commercial website at “www.fourseasons.com”, and is the registrant of other domain names incorporating FOUR SEASONS.
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on February 24, 2015.
Respondent has used the disputed domain name to direct Internet users to a website that prominently displays the Four Seasons Hotel and Private Residences Fort Lauderdale name and the stylized tree logo of Complainant, and which includes a number of photographs of condominium interiors as well as detailed floor plans, each prominently labeled with Complainant’s service mark and distinctive logo. There is in very small type-font at the bottom of the webpages a disclaimer “DMT Luxury Group| All Rights Reserved DMT Luxury Group/DMT Real Estate Services LLC is a licensed Florida Real Estate Brokerage not affiliated with The Four Seasons or its investors.” According to Complainant, DMT Luxury Group is owned and/or controlled by Respondent. A link on the “www.dmtluxury.com” website directs Internet users to the website associated with the disputed domain name.
Following demands from Complainant and the licensed owner of the real estate project, Respondent modified the website associated with the disputed domain name to remove some, but not all, use of Complainant’s service mark and distinctive logo.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges ownership of rights in the trademark FOUR SEASONS as evidenced by registration at the USPTO and through use in commerce. Complainant refers to the incontestable status of its trademark registration, and argues that its trademark is well-known in the United States of America and other countries.
Complainant contends that the disputed domain name is confusingly similar to its trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has no connection to or affiliation with Complainant and has not been licensed or otherwise authorized by Complainant to use its trademark in the disputed domain name; (2) Complainant’s rights in its trademark precede Respondent’s registration of the disputed domain name; (3) there is no evidence that Respondent has been known by the disputed domain name, and; (4) Respondent registered the disputed domain name with the intent to divert Internet traffic to its website, and there is no legitimate reason for Respondent to have selected the disputed domain name incorporating Complainant’s well-known trademark.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name, and Respondent’s use of Complainant’s trademark and logo on the website associated with the disputed domain name evidences that knowledge; (2) adoption of the confusingly similar disputed domain name which incorporates Complainant’s trademark in its entirety is evidence of bad faith; (3) Respondent’s use of the disputed domain name to direct Internet users to services competitive with those of Complainant’s licensee is further evidence of bad faith, and; (4) Respondent’s disclaimer is unlikely to be noticed by visitors to its website in light of the extensive and prominent use of Complainant’s trademark and logo.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is no indication on the record of this proceeding that email transmission of the Complaint to Respondent encountered any difficulty. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the service mark FOUR SEASONS and related FOUR SEASONS-formative marks, see Factual Background above. Respondent has not contested those rights. The Panel determines that Complainant has rights in the service marks FOUR SEASONS, FOUR SEASONS HOTELS and FOUR SEASONS RESORT.
The disputed domain name incorporates Complainant’s FOUR SEASONS service mark in its entirety, adding the definite article “the” as prefix, and the letters “ftl” as suffix. The letters “ftl” are commonly used to identify the city of Fort Lauderdale, Florida,1 which is the location of the property as to which Complainant has granted a service mark license to the property owner/developer. The addition by Respondent of a definite article and a geographic identifier does not distinguish the disputed domain name from Complainant’s well-known service mark from the standpoint of alleviating Internet user confusion. The Panel determines that the disputed domain name is confusingly similar to Complainant’s FOUR SEASONS service mark.
The Panel determines that Complainant has rights in the service mark FOUR SEASONS, and the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
This Panel has previously considered factual contexts quite similar to those at issue in this proceeding, including in contested proceedings. See especially Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa, WIPO Case No. D2008-1812. This Panel has noted that assessment of uses by real estate brokers of trademarks in domain names is context-specific.
The use by Respondent of Complainant’s service mark in the disputed domain name in this proceeding, just as comparable use of the complainant’s trademark in Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa, supra, is part of an effort to convey the impression that the website identified by the disputed domain name is operated or authorized by Complainant. The disputed domain name incorporates Complainant’s service mark in its entirety, and Complainant’s service mark and distinctive logo are a dominant part of the webpages hosted by Respondent. As Complainant notes, the disclaimer on Respondent’s website is unlikely to be noticed by an Internet user. Although Respondent has not responded to the Complaint, to the extent that Respondent might have argued nominative fair use of Complainant’s service mark in the disputed domain name, such argument would not be persuasive. Respondent has used Complainant’s service mark substantially more than is necessary to identify the subject real estate while deliberately attempting to convey the impression that the website identified by the disputed domain name is operated or authorized by Complainant.
Respondent’s use of the disputed domain name does not on its face otherwise plausibly suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
As discussed in the previous section, Respondent acted deliberately to create a website that gives the impression it is owned, operated or sponsored by Complainant. Respondent has intentionally attempted to attract for commercial gain Internet users to its website by registering and using the disputed domain name that is confusingly similar to Complainant’s service mark, so as to create Internet user confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s website. Respondent registered and is using the disputed domain name in bad faith within the meaning 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, <thefourseasonsftl.com> be transferred to Complainant.
Frederick M. Abbott
Date: April 3, 2018
1 See, e.g., https://www.acronymfinder.com/Fort-Lauderdale-(Florida)-(FTL).html, visited by panel April 3, 2018.