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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Proper Hospitality, LLC v. Carlos Kronen

Case No. D2019-3200

1. The Parties

Complainant is Proper Hospitality, LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.

Respondent is Carlos Kronen, United States.

2. The Domain Name and Registrar

The disputed domain name <sfproper.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2019. On December 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2019, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2020.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 31, 2020. 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, a company based in in the United States, with its principal office in the State of California, offers hotel, lodging, and related services. Since at least 2016, Complainant has offered these services under its PROPER mark, including at a location in San Francisco, California. Complainant owns several trademark registrations for the PROPER mark. These include, among others, United States Registration No. 5205225 (registered May 16, 2017); United States Registration No. 5237343 (registered July 4, 2017); and United States Registration No. 5365194 (registered December 26, 2017).

Complainant owns the registration for the domain name <properhotel.com>, which it uses to connect to a website from which it offers consumers information about its services. Complainant has also introduced evidence of media recognition from Vanity Fair, Forbes, and Conde Naste Traveler, discussing Complainant’s Proper Hotel and mark, and with such headlines as “How Proper Hotel San Francisco Became the City’s Hippest Hotel.”

The disputed domain name <sfproper.com> was registered on August 25, 2018. Respondent has no affiliation with Complainant. Respondent has had the URL associated with the disputed domain name resolve to a parked webpage that was inactive as of the filing date of the Complaint. Respondent did, however, approach Complainant with an offer to sell the domain name registration for USD 2,000. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name <sfproper.com> is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it is using its PROPER mark in the United States, including in San Francisco, California, where Respondent lists his address of record, and that such use has garnered media attention. Complainant further contends that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith.

In this regard, Complainant notes that it was contacted by Respondent with an offer to sell the registration for the disputed domain name. Respondent’s correspondence indicated that Respondent was aware of Complainant’s rights in the mark, stating, for example, “I’m a huge fan of your hotel and restaurant, so wanted to reach out personally.” Respondent offered to sell the disputed domain name registration to Complainant for USD 2,000, but declined to further discuss when a representative for Complainant offered to buy the registration “for the costs [Respondent] incurred in registering the domain name.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <sfproper.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark PROPER, and merely adds the letters “sf,” which is a geographically descriptive abbreviation for “San Francisco,” the city where Respondent lists his address of record, and where Complainant operates one of its hotels under its registered PROPER mark.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words, including geographically descriptive wording, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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.”

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.

Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in section 4 of this Panel’s decision, Respondent has had the URL associated with the disputed domain name resolve to a parked webpage that was inactive as of the filing date of the Complaint. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.

Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to follow-up correspondence from Complainant. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world.

Considering the totality of the circumstances, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. The Panel further notes that Respondent approached Complainant with an offer to sell the registration for the disputed domain name. Respondent’s correspondence indicated that Respondent was aware of Complainant’s rights in the mark. Respondent offered to sell the disputed domain name registration to Complainant for USD 2,000, but declined to further discuss when a representative for Complainant offered to buy the registration “for the costs [Respondent] incurred in registering the domain name.” The Panel finds that Respondent “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs,” which also demonstrates bad faith as contemplated by paragraph 4(b)(i) of the Policy. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551.

7. Decision

For all 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 <sfproper.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: February 12, 2020

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