Hilton Hotels Corporation v. John Padonack
Claim Number: FA0707001043687
Complainant is Hilton Hotels Corporation (“Complainant”), represented by David
J. Stewart, of Alston & Bird LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <embassyseatac.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2007.
On July 24, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <embassyseatac.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@embassyseatac.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <embassyseatac.com> domain name is confusing similar to Complainant’s EMBASSY SUITES mark.
2. Respondent does not have any rights or legitimate interests in the <embassyseatac.com> domain name.
3. Respondent registered and used the <embassyseatac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hilton Hotels Corporation, owns, manages, and franchises nearly 2,800 hotels, resorts, and other temporary accommodations worldwide. Complainant has continuously used the EMBASSY SUITES mark in connection with an upscale, all suites hotel brand of properties since it filed registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 1983 (Reg. No. 1,295,145 issued June 19, 1984).
Complainant currently operates through a franchisee, under
the EMBASSY SUITES mark, a hotel close to the
After the franchisee’s registration expired, Respondent registered
the <embassyseatac.com> domain
name. Shortly thereafter, Respondent
used the disputed domain name to host an adult oriented website. Complainant successfully had this website
taken down. In April 2007, Complainant
was informed by customers that adult oriented content was again being displayed
on a website that resolved from the disputed domain name. The <embassyseatac.com>
domain name currently redirects Internet users to a third-party adult oriented
website that attempts to transmit a computer virus when accessed. Respondent has also been the subject of at
least one other dispute before similar panels resulting in the transfer of the
domain name to a complainant. See
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent’s <embassyseatac.com>
domain name omits the word “SUITES” from the Complainant’s EMBASSY SUITES mark
and then adds: the generic top-level domain (“gTLD”) “.com”; and the generic
geographic reference “SeaTac,” that refers to the area around the
Seattle-Tacoma International Airport in Washington State, in which Complainant
owns and operates a hotel under the EMBASSY SUITES mark. The Panel thus finds that the disputed domain
name is confusing similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189
(Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name
<wellness-international.com> is confusingly similar to the complainant’s
WELLNESS INTERNATIONAL NETWORK); see also
VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word “
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain name at issue. See
VeriSign
Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint.
The Panel thus presumes that Respondent
has no rights or legitimate interests in the <embassyseatac.com>
domain name, but will still consider
all the available evidence with respect to the factors listed in Policy ¶ 4(c)
before making its final determination. See Am. Express Co. v. Fang
Suhendro, FA
129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”).
Nowhere in the
record, including Respondent’s WHOIS information, does it indicate that
Respondent is or ever has been commonly known by the <embassyseatac.com> domain name.
Further, Respondent has not sought, nor has Complainant granted, a
license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
The disputed domain name redirects Internet users to a third-party adult oriented website that attempts to transmit a computer virus when accessed. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4 (c)(iii), respectively. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Moreover, the <embassyseatac.com> domain name was
originally registered by a franchisee of Complainant. The franchisee’s registration of the disputed
domain name expired in September 2006 and was errantly not renewed. After the franchisee’s registration expired,
Respondent almost immediately registered the <embassyseatac.com>
domain name. The Panel finds this to
also be evidence that the Respondent has no rights or legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi
Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior
registration of the domain name, coupled with Respondent’s failure to respond
to this dispute, is evidence that Respondent has no rights or legitimate
interests in the domain name pursuant to Policy 4(a)(ii).”); see also
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <embassyseatac.com> domain name was originally registered by a franchisee of Complainants. When the franchisee’s registration of the disputed domain name expired, it was errantly not renewed. Almost immediately after the expiration, Respondent registered the <embassyseatac.com> domain name. The Panel finds this to create an inference that Respondent’s registration was made in bad faith pursuant to Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
The disputed domain name redirects Internet users to a
third-party adult oriented website. The
Panel finds the redirection of Internet users to an adult oriented website is
evidence that Respondent is using the <embassyseatac.com>
domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (finding that the respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
Respondent’s
<embassyseatac.com>
domain name is confusingly
similar to Complainant’s mark and is presumed to be financially benefiting
Respondent from the redirection of Internet users to an adult oriented
website. The Panel finds this to be
further evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading <qwestwirless.com>
domain name by linking the domain name to adult oriented websites. Respondent’s attempt to commercially benefit
from the misleading domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iv).”); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent utilized a
domain name confusingly similar to the complainant’s mark and used a
confusingly similar pornographic depiction of the complainant’s registered
trademark on its website to cause confusion as to the source or affiliation of
the site).
Lastly, Respondent has also been the subject of at least one
other dispute before similar panels resulting in the transfer of the domain
name to a complainant. See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <embassyseatac.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 6, 2007
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