The owner of the domain name NewYorkNewYork.com has been sued by New York-New York Hotel & Casino, LLC for trademark infringement, cybersquatting, unfair competition, trademark dilution, and other related complaints. The lawsuit, which can be downloaded from the Las Vegas Sun website (pdf download), was filed in the state of Nevada on November 6, 2009.
In the lawsuit, the plaintiffs have alleged that,
“Recently, Plaintiff learned that the Infringing Domain Name has been linked to a website that prominently features the NEW YORK NEW YORK LAS VEGAS HOTEL & CASINO trademark (the “Infringing Website”). Specifically, the NEW YORKNEW YORK LAS VEGAS HOTEL & CASINO mark appears in the banner of the Infringing Website, next to a graphic of Plaintiff’s New York- New York Hotel. The Infringing Website does not include a disclaimer explaining that it has no affiliation with Plaintiff. When Internet users click on the banner, they are redirected to a website enabling them to book hotel reservations at Plaintiff’s New York-New York Hotel.”
In looking at the current website which contains various New York City related banners, it appears to me that they are using Ian.com as a booking engine for the site. Ian.com is the Expedia travel affiliate program, and they work with hotels throughout the world to book reservations. When a visitor uses the booking engine, they are able to search for cars, flights, and hotels throughout the world, including Las Vegas, where the New York-New York Hotel & Casino is located, all the while staying on the NewYorkNewYork.com website.
It’s unfortunate for the defendant, as I am not sure of how much control he would have over the results served by the booking engine. Further, it would seem advantageous for the hotel to be listed, but I imagine they would rather control the domain name if possible. From the looks of it, I don’t see how the owner of the domain name is at fault, although I am not an attorney nor do I have a legal background.
One complication for the current owner is that the lawsuit indicates the Hotel contacted a previous owner expressing concern over something similar that was done in the past. According to a screenshot on Archive.org from February of 2006, there were links to the New York-New York Hotel & Casino on the home page of the website. However, it doesn’t appear that the current owner is doing anything in bad faith. In fact, New York City is the default search when a visitor lands on the site.
I think this will be an interesting case to watch, since there are quite a few geodomain owners who use booking engines like Ian.com and WC Travel for their hotel results, and there are probably plenty of domain names that could potentially be infringing on certain marks.