WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ennismore International Management Limited v. WhoisGuard, Inc. / Alagbada Foluke
Case No. D2020-2203
1. The Parties
Complainant is Ennismore International Management Limited, United Kingdom, represented by Withers LLP., United Kingdom.
Respondent is WhoisGuard, Inc., Panama / Alagbada Foluke, India.
2. The Domain Name and Registrar
The disputed domain name <thehoxtonhotels.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 3, 2020.
The Center verified that the Complaint together with the amended 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 September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 25, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 2, 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 develops and operates a number of hotels, restaurants and hospitality brands across the United Kingdom, Europe, and the United States of America. Complainant has been using the HOXTON mark in connection with hotel, restaurant and hospitality services since at least 2012. It owns over 30 national and international registrations for the HOXTON and THE HOXTON marks (“HOXTON Marks” or “Complainant’s Marks”), including European Union Trade Mark number 005480298 (registered on November 15, 2007) and International trademark number 1253467 (registered on April 23, 2015). Over 500,000 people visited Complainant’s hotels and dozens of thousands of people follow Complainant’s social media accounts promoting the HOXTON Marks. Complainant also owns over 40 domain names incorporating the HOXTON Marks, including the <thehoxton.com> domain name, which resolves to Complainant’s primary website relating to its HOXTON brand.
The disputed domain name <thehoxtonhotels.com> was registered on July 9, 2020, and it redirects to Complainant’s primary website located at the <thehoxton.com> domain name. The disputed domain name has been used in connection with the email addresses associated with the disputed domain name. These email addresses were included in fake job advertisements purportedly posted by or on behalf of Complainant. Furthermore, one of the email addresses was used to send at least one email allegedly on behalf of a certain employee working for Complainant, which claimed that Complainant was interested in employing the recipient and that Complainant would accordingly endeavor to obtain an expedited work visa for that recipient. These emails requested sensitive personal information from individuals interested in working for Complainant, such as the individuals’ social security numbers, addresses, and driver’s license numbers.
5. Parties’ Contentions
Complainant argues that the disputed domain name is identical or confusingly similar to its HOXTON Marks because it reproduces identically and entirely THE HOXTON mark. Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, Complainant has not licensed Respondent the right to use any of Complainant’s Marks, and that Respondent is not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondent’s use of the disputed domain name to perpetrate phishing fraud cannot be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Complainant further contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the HOXTON Marks given the complete incorporation of THE HOXTON mark in the disputed domain name, its redirection to Complainant’s website, and Respondent’s attempt to impersonate an employee of Complainant to conduct a fraudulent phishing scheme to obtain private personal information from individuals interested in working for Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Consolidation of Respondents
The Panel notes that Complainant named two private individuals as respondents in the Complaint, in addition to the WhoIs and Registrar confirmed registrant details for the disputed domain name.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Common control has been found based on “[…] commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.” Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons WIPO Case No. D2010-0281. Furthermore it is incumbent upon UDRP panels to determine that any consolidation of multiple respondents under paragraph 10(e) will be both procedurally efficient and fair and equitable to all parties. Id; see also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021.
Consolidation issues normally only arise where the complaint includes multiple domain names with different but ostensibly related registrants. Section 4.11.2 of the WIPO Overview not only refers to domain names (plural), none of the cases cited in the section involved consolidation of multiple respondents in a single proceeding involving only a single disputed domain name. This is consistent with Section 1 of the Rules, which defines a “respondent” as “the holder of a domain-name registration against which a complaint is initiated.”
There is no reason to include the non-registrant parties as named respondents here, as there is no evidence that all the named respondents exert some control over the disputed domain name. Rather, the specific holder of the domain name registration at issue in this proceeding has been confirmed by the Registrar and that is the only relevant Respondent for purposes of this proceeding under Section 1 of the Rules, as noted above. While the other respondents named by Complainant may have been individuals referenced in or purportedly associated with the phishing scheme being perpetrated via the disputed domain name, this does not make these individuals relevant respondents in a UDRP proceeding.
Therefore, there is no need to include such private individuals as additional respondents in this proceeding and our decision is applicable only to the appropriate Respondent, Alagbada Foluke, which the Registrar has confirmed as holder of the registration for the disputed domain name.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the HOXTON Marks through its multiple national and international registrations.
With Complainant’s rights in the HOXTON Marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s HOXTON and THE HOXTON Marks are fully incorporated in the disputed domain name. The inclusion of the descriptive term “hotels” in the disputed domain name does not prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s HOXTON Marks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it never authorized, licensed, or permitted Respondent to use the HOXTON Marks in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain name. As shown in evidence submitted by Complainant, the disputed domain name was used in connection with certain email addresses to impersonate a certain employee working for Complainant and a United Kingdom government official to perpetrate a fraudulent scheme to obtain highly sensitive personal information from individuals interested in obtaining employment with Complainant. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1, and section 2.5.1. Indeed, the use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1.
Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the HOXTON Marks that long predates Respondent’s registration of the disputed domain name. Complainant also provided ample evidence showing that Respondent was redirecting the disputed domain name to Complainant’s primary website for its HOXTON brand and was impersonating an employee currently working for Complainant to conduct a fraudulent phishing scheme. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the HOXTON Marks when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The use of the disputed domain name to conduct an apparent fraudulent scheme to collect Internet users’ personal data via email addresses impersonating certain individuals working for Complainant is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra.
Therefore, Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s HOXTON Marks, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain in some manner through its fraudulent activities. See Policy, paragraph 4(b)(iv).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith.
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, <thehoxtonhotels.com>, be transferred to Complainant.
Brian J. Winterfeldt
Date: October 16, 2020