WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hyatt Corporation and Hyatt International Corporation v. Michael Oreva and Jacob Oreva

Case No. D2020-0378

1. The Parties

The Complainants are Hyatt Corporation and Hyatt International Corporation, United States of America (“United States”), represented by DLA Piper LLP (US), United States.

The Respondents are Michael Oreva, Nigeria (“Respondent 1”) and Jacob Oreva, Nigeria (“Respondent 2”).

2. The Domain Names and Registrar

The disputed domain names <the-hyattregency.com> (“disputed domain name 1”) and <thehyattregency.com> (“disputed domain name 2”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 20, 2020. A clarification was sent by the Center on March 5, 2020. A second amended Complaint was received by the Center on the same day.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 30, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on April 7, 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

The Complainants are United States based companies and belong to the well-known international management hotel chain, which provides services for HYATT-branded properties, hotels and resorts throughout the world.

The Complainants have been using the trademark and name HYATT for more than 60 years in connection with hotel and resort services in the United States and worldwide. HYATT-branded properties have been widely advertised and are regularly winning awards.

The trademarks HYATT (e.g. United Kingdom trademark registration No. 1275567, registered on October 2, 1989) and HYATT REGENCY (e.g. United Kingdom trademark registration No. 991943, registered on May 11, 1972) have been registered by the Complainants and its affiliated companies in numerous countries as of 1970 and later on.

The Complainants have also registered many domain names including <hyatt.com> and <hyattregency.com>. These domain names are linked to the Complainants’ official websites which promote the HYATT-branded properties.

The disputed domain name 1 was registered by Respondent 2 on October 3, 2019, and the disputed domain name 2 by Respondent 1 on November 4, 2019. Both Respondents bear the same last name and have their address in Benin city (formerly Edo) in Nigeria.

The disputed domain names do not resolve to an active website.

On November 19, 2019, an individual emailed a third party from an address “careers@the‑hyattregency.com” falsely holding himself out as an employee of Hyatt, offering the recipient a job offer at a HYATT REGENCY-branded hotel and requesting that the recipient provides personally identifiable information and payment. The email address refers to the disputed domain name 1.

5. Parties’ Contentions

A. Complainants

The Complainants invoke to have prior statutory and common law rights in the marks HYATT and HYATT REGENCY. They are also the holder of numerous trademark registrations over the names HYATT and HYATT REGENCY in several countries. These trademark registrations are extensively used by the Complainants and their affiliated companies worldwide. The disputed domain names fully incorporate the well-known HYATT and HYATT REGENCY trademarks and are therefore confusingly similar.

The Complainants further state that the Respondents were familiar with the famous HYATT and HYATT REGENCY trademarks and are not making a bona fide offering of goods or services in connection with the disputed domain names. As a matter of fact, the Complainants estimate that the disputed domain names are used for a scam activity whereby Internet users are required to provide their personal data and payments. Furthermore, the Complainants have not licensed or otherwise permitted the Respondents to use their HYATT and HYATT REGENCY marks, nor to use any domain name incorporating these. In addition, the Respondents would not be known by the disputed domain names. The Complainants conclude that the Respondents do not have rights or legitimate interests in the disputed domain names.

The Complainants consider the Respondents were or should have been aware of the HYATT and HYATT REGENCY protected marks well prior the registration of the disputed domain names considering HYATT’s worldwide reputation and presence. The registration of a domain name in an attempt to appear associated or affiliated with another to obtain money or other information constitutes bad faith use and registration. Sending a fraudulent email pretending to be associated or affiliated with a complainant is strong evidence of bad faith. In addition, the use of a privacy service to register the disputed domain names supports this finding.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Consolidated Complaint against multiple Respondents

Disputed domain name 1 was registered by Respondent 2 on October 3, 2019, and disputed domain name 2 by Respondent 1 on November 4, 2019.

The Complainants are of the opinion that the Center may adjudicate this dispute where there are two allegedly different Respondents considering that (i) the Respondents bear the same last name and are living in the same city in Nigeria; (ii) the disputed domain names were registered using the same Registrar, through the same privacy service and only a month apart; (iii) the disputed domain names direct to inactive websites; and (iv) the Respondents appear to be associated with the same activity.

The Center has accepted the consolidated complaint on a preliminary basis. It is up to the Panel to finally determine whether this consolidation is acceptable. Based notably on the Complainants’ arguments, the Panel finds that the disputed domain names are subject to common control. Furthermore, the Respondents have not objected to the consolidation requested by the Complainants and splitting the Complaint would prove contrary to the procedural efficiency required by UDRP proceedings (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).

Consequently, the Panel gives right to the consolidation request made by the Complainants.

B. Identical or Confusingly Similar

The Complainants showed to have trademark rights in the names HYATT and HYATT REGENCY in the United States but also in several other countries.

According to the WIPO Overview 3.0. under section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain names comprise the Complainants’ trademarks HYATT and HYATT REGENCY in their entirety.

Under these circumstances, the Panel concludes that the disputed domain names are confusingly similar to the Complainants’ marks.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods and services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the complainant establishes a prima facie case against the respondent under this ground, the burden of production shifts to the respondent to rebut it.

The Complainants indicate that their trademarks HYATT and HYATT REGENCY are famous. In this respect they underline that the Respondents are not making a bona fide offering of goods and services since the disputed domain names are used in relation to a scam activity whereby Internet users are required to provide their personal data and payments.

The Panel notes that the scam activity was indeed evidenced in relation to the disputed domain name 1. Considering that the Respondents are obviously connected (see above considerations under 6.A.), it is more likely than not that the disputed domain name 2 is used or was intended to be used the same way.

Based on the above, the Panel considers that the Complainants made a prima facie case and the burden of production shifted to the Respondents.

The Respondents chose not to reply to the case against them.

No evidence is contained in the case file which would demonstrate that the Respondents have rights or legitimate interests in the disputed domain names, in particular that the Respondents would be commonly known by the disputed domain names or would be making a fair use of the disputed domain names.

Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainants have shown that their HYATT and HYATT REGENCY names and marks are registered and widely used in relation to hotel and resort services. As mentioned in decisions rendered by other UDRP panels, these marks can be considered as famous (see notably Hyatt International Corporation and Hyatt Corporation v. Mr. Martin Mir (MIRMARTI64698), WIPO Case No. D2012-1803).

Consequently, the Panel agrees with the Complainants over the fact that the Respondents knew or should have known of the Complainants’ trademark and deliberately registered the confusingly similar disputed domain names (see WIPO Overview 3.0, section 3.2.2). The unauthorized use of the famous HYATT trademark to register confusingly similar domain names can by itself create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4).

Furthermore, the disputed domain name 1 is used for a scam activity. The use of a domain name for per se illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent and such behavior is manifestly considered evidence of bad faith. On the other hand, there is no evidence that the disputed domain name 2 has been actively used, however taking into consideration all the circumstances of the case, the Panel finds that its non-use would not prevent a finding of bad faith under the doctrine of passive holding.

The Panel further notes that the Respondents chose to remain silent within these proceedings.

In addition, the Respondents registered the disputed domain names through a privacy service, which is not evidence of bad faith per se, but the use of a privacy service linked with the fact that the Respondents have used false or incomplete contact details to register the disputed domain names, in the context of this case, is a clear indication that they wanted to hide their identity and use the disputed domain names in bad faith (see WIPO Overview 3.0, section 3.6).

The Panel consequently finds that the Complainants have established their case under paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <the-hyattregency.com> and <thehyattregency.com> be transferred to the Complainants.

Theda König Horowicz
Sole Panelist
Date: April 23, 2020