WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
sbe Hotel Licensing, LLC v. Registration Private, Domains By Proxy, LLC / brahim aitkhouya / abraham Ait
Case No. D2021-1571
1. The Parties
The Complainant is sbe Hotel Licensing, LLC, United States of America (“United States”), represented by Pryor Cashman, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / brahim aitkhouya, Morocco / abraham Ait, Mexico (collectively referred as “ the Respondent”).
2. The Domain Names and Registrar
The disputed domain names <slsargentina.com>, <slsatlanta.com>, <slsbuenosaires.com>, <slsmerida.com>, <slsmexicocity.com>, <slsmonterrey.com>, <6sls.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 Complainant on May 21, 2021 providing the registrants and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint on May 26, 2021.
On May 31, 2021, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
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 the Respondent of the Complaint, and the proceedings commenced on May 31, 2021. On June 2, 2021, the Respondent sent an email communication. On June 2, 2021, the Center informed the Parties of the possibility to suspend the proceedings to implement a settlement agreement between the Parties. On June 9, 2021, the Complainant informed the Center that the Parties are unable to reach a settlement.
In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Response was filed with the Center on June 17, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 28, 2021. 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.
On July 1, 2021, the Complainant submitted a supplemental filing.
4. Factual Background
According to the Complaint, the Complainant is a lifestyle hospitality company that develops, manages and operates hotels, residential properties, restaurants, and nightclubs. It has a global portfolio in excess of 130 hotels, entertainment and food and beverage outlets which are offered under a number of brands.
One of the Complainant’s chains, or brands, is SLS. The first hotel in this chain, the SLS Beverley Hills hotel, was opened in 2008. This hotel was designed by Philippe Starck and also included a luxury restaurant, The Bazaar by José Andrés.
Since the SLS Beverley Hills hotel opened, the SLS range has expanded to include the SLS South Beach, the SLS Baha Mar, the SLS Brickell, the SLS Lux Brickell, the SLS Cancun and the SLS Dubai. In August 2018, the Complainant publicly announced it was planning to establish further SLS hotels in Argentina, Mexico, and the United States. These included the SLS Puerto Madero and the SLS Pilar Buenos Aires in Argentina, the SLS Mexico City Pedregal and the SLS Mexico City Santa Fe in Mexico, and the SLS Atlanta in the United States.
The Complainant’s SLS hotels have been very favourably reviewed in well-known publications and received numerous awards. The publications have included the New York Times, the Wall Street Journal, the LA Times, Condé Nast Traveler, Travel + Leisure, Saveur, In Style and Esquire. For example, the SLS Beverley Hills hotel received the Condé Nast Traveler Annual Readers’ Choice Award as the World #1 Hotel, the #1 Hotel in the United States. The SLS Baha Mar hotel and the SLS South Beach hotel have been ranked in the top 25 hotels in, respectively, the Atlantic Islands and Miami. Two of the SLS Beverley Hills hotel’s restaurants received “Michelin Stars” in the 2019 Michelin Guide inaugural California Guide.
The Complainant owns registered trademarks in the United States, amongst other things, for:
(a) No. 3,689,950, SLS in respect of a range of hotel services in International Class 43, which has been registered since September 29, 2009;
(b) No. 4,692,686, SLS, in respect of casino services in International Class 41, which has been registered since February 24, 2015;
(c) No. 4,792,127, SLS, in respect of a range of real estate and real estate management services in International Classes 35 and 36, which has been registered since August 11, 2015;
(d) No. 3,570,468, SLS HOTELS, in respect of a range of hotel services in International Class 43, which has been registered since February 3, 2009;
(e) No. 3,680,479, SLS HOTEL, in respect of a range of hotel services in International Class 43, which has been registered since September 8, 2009.
Each of these is registered in the Principal Register.
The Complainant owns registered trademarks in Mexico, amongst other things, for:
(a) No. 1058500, SLS HOTELS (and design), in respect of a range of hotel services in International Class 43, filed on May 28, 2008 and registered on May 29, 2008;
(b) No. 1058501, SLS HOTELS, in respect of a range of hotel services in International Class 43, filed on May 28, 2008 and registered on May 29, 2008;
(c) No. 1059419, SLS, in respect of hotel services in International Class 43, which was registered on August 29, 2008;
(d) No. 1383448, SLS, in respect of a range of restaurant and related services in International Class 43, which was registered on July 19, 2013.
The Complaint also claims the Complainant owns registered trademarks in Argentina for SLS-formative trademarks.
The disputed domain names were first registered on the following dates:
Disputed domain names
January 20, 2016
August 4, 2020
September 2, 2020
September 1, 2020
November 1, 2020
December 29, 2020
February 13, 2021
It appears that, since their registration, each of the disputed domain names has resolved to a page on Dan.com where it is offered for sale. Each page offering a disputed domain name for sale does not specify a price but requires the bidder to offer more than USD 100 for a valid bid.
In November 2020, the Respondent emailed the Complainant’s property development partner, Related Group, stating the Respondent had just sold the domain name <slstulum.com> and inquiring whether Related Group, as the owner of some “sls”-formative domain names, was interested in buying the disputed domain names <slsatlanta.com> and <slsmexicocity.com>. No price was indicated. The email stated “I’m interested in a quick sale, so I’m open to all offers.”
Apparently, the Complainant was the purchaser of <slstulum.com> for the price of USD 1,200.
On February 5, 2021, the Respondent received an offer of USD 1,000 for <slsbuenosaires.com> through Dan.com.
On February 11 and 15, 2021, the Respondent emailed officers of the Complainant offering for sale the disputed domain names <slsmexicocity.com>, <slsbuenosaires.com> and <slsatlanta.com>.
On February 22, 2021, the Complainant’s lawyers sent a cease and desist letter to the Respondent.
In emails from the Respondent resulting from that letter, the Respondent claimed that other parties interested in SLS-formative domain names had offered the Respondent at least USD 20,000 per disputed domain name. On March 11, 2021, the Respondent offered to sell the disputed domain names for USD 110,000.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Consolidation and supplemental filing
The Registrar has indicated that the disputed domain names have been registered in the name of two apparently different people. Accordingly, the Complainant has sought leave to consolidate the Complaints against each on the basis that the registrant is in reality the same person or the disputed domain names are under common control.
The Response indicates, however, that the disputed domain names are in fact registered by the one person, Mr Brahim Ait Khouya, in Morocco. Accordingly, consolidation is permissible in accordance with paragraph 3(c) of the Rules.
For completeness, the Panel notes that consolidation would have been permitted in accordance with the principles set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11 having regard to the reasons advanced by the Complainant. In particular, the registrant information provided by the Registrar shows that the registrant had the same email address, the same telephone number and the same postal code (although two different countries and addresses were specified). Also, the second name, Abraham Ait, could easily be seen as an anglicized or “western” version of the first name.
The Complainant has also submitted an unsolicited supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
In the present case, the Panel does not consider that the proposed supplemental filing meets these requirements and it is unnecessary to admit it into the record in this proceeding.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the several disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for SLS and SLS HOTEL referred to in section 4 above. In light of that proof, it is unnecessary to take into account the numerous other registered trademarks the Complaint refers to.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage.
The Respondent’s argument that “sls” is an acronym for many different things or entities is therefore misplaced at this stage of the inquiry. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level-Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain names (apart from <6sls.com>) consist of the Complainant’s registered trademark SLS and the name of a place, city or a country. As this requirement under the Policy is essentially a standing requirement, the addition of such descriptive or geographical terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
The disputed domain name <6sls.com> is a different formation to the other disputed domain names. The addition of the numeral “6” to the Complainant’s registered trademark, however does not change the analysis. The Complainant’s registered trademark is still plainly visible and recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the 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 [the Respondent] 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.
The disputed domain names are not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain names could be derived.
Bearing in mind that the Complainant’s rights in its trademarks had accrued well before the Respondent registered the disputed domain names, these matters are sufficient to give rise to the required prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
The Respondent claims that the Respondent registered the disputed domain names with the prefix “sls” for different cities in South America for a client whose potential business was about a Space Launch System (SLS) for cubesats which the client was intending to offer worldwide. Alternatively, the Respondent contends that the acronym “sls” is a generic term which is used by many other companies which are unrelated to the Complainant. The Respondent says that in addition to registering domain names for clients the Respondent is also a domainer reselling domain names which contain generic terms.
There are a number of problems with these claims. For example, if the services were to be offered worldwide, why just cities in South America? Further, neither Atlanta nor the Mexican place names are in South America. In addition, the Respondent registered the disputed domain names over a spread of five years and the first of the registrations in 2020 does not even fit the claimed pattern. Fundamentally, however, this claim cannot be accepted as the Respondent has not offered any corroboration to support this claimed request or the client’s proposed business. See e.g. WIPO Overview 3.0, section 2.2.
The Respondent contends that there is nothing inherently illegitimate about registering generic terms as domain names for resale at a higher price (presumably) than the costs of registration. Section 2.10.2 of WIPO Overview 3.0 states in the case of acronyms:
“For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”
The suggestion that the Respondent registered the disputed domain names for a client has already been rejected. The Panel does accept that there are as the Respondent claims a number of other businesses, unrelated to the Complainant, which use the acronym. However, six of the seven disputed domain names combine the acronym with geographical place names associated with the Complainant’s business. Four of those six are the names of cities where the Complainant had announced plans to establish its hotels in the future. A fifth name, “Merida” is also the city where the Complainant’s development partner, Immobilia, has developed “iconic” projects. The Panel also notes that the Respondent had registered <slstulum.com> which the Complainant acquired from the Respondent and which is also a location where Immobilia had a development project.
It seems very unlikely that this close correspondence of disputed domain names to locations which are closely associated with the Complainant’s publicly announced plans is a coincidence. There does not appear to be any similar degree of correspondence with any of the other suggested derivations of the acronym.
In these circumstances, the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant that the Respondent does not have rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
In this case, there is no dispute that the Respondent has only offered the disputed domain names for sale. It has not made any other use of the disputed domain names.
The Respondent’s two alternative claims for registering the disputed domain names have already been identified in section 5C above. Those arguments, however, have been rejected. The reasons for those rejections lead to the strong inference that the Respondent registered the disputed domain names to take advantage of their incorporation of the Complainant’s trademark.
The Respondent also claims that he reached out to many companies that own the term “sls” before listing it for auction. The Respondent has not provided any evidence corroborating that “reaching out”. The Respondent has provided evidence of some bids being placed through Dan.com. That evidence does not indicate any of the bids were from businesses with an entitlement to use “sls” unrelated to the Complainant. In addition, the Respondent did not accept any of those bids. Instead, the Respondent offered the disputed domain names to the Complainant for USD 110,000.
The Respondent contends that he did not specify or approach the Complainant with a price. Rather, he merely responded to the Complainant’s invitation.
The Panel cannot accept that argument. First, the Respondent listed each disputed domain name for sale at a price above a minimum of USD 100, which is substantially more than the standard registration fee for a domain name in the “.com” gTLD. Secondly, even though the Respondent did not specify a price until directly asked by the Complainant’s representative, the correspondence makes it clear the Respondent was seeking a price which reflected the trademark value of the disputed domain names to the Complainant. That the Respondent did not specify a price immediately does not mean the Respondent was not opportunistically seeking to take advantage of the trademark significance of the disputed domain names.
In circumstances where the Respondent does not have rights or legitimate interests in the disputed domain names, therefore, the Panel finds the Respondent has registered them for the purpose of reselling them to the Complainant and that constitutes both registration and use in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
In view of these findings, there is no basis for the Respondent’s claim to a finding of reverse domain name hijacking.
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 <slsargentina.com>, <slsatlanta.com>, <slsbuenosaires.com>, <slsmerida.com>, <slsmexicocity.com>, <slsmonterrey.com>, and <6sls.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: July 12, 2021