Wyndham Hotels and Resorts,
LLC v. Key Hotel Group Inc. c/o Rupesh Patel
Claim Number: FA0904001255806
PARTIES
Complainant is Wyndham Hotels and Resorts, LLC (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wyndhamreward.com>, registered with Register.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 2, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 6, 2009.
On April 6, 2009, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <wyndhamreward.com> domain name is
registered with Register.com, Inc. and
that the Respondent is the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 April 10,
A timely Response was received and determined to be complete on April 29, 2009.
On May 1, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mr.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant states that it is
one of the largest hospitality companies in the
world with nearly 7,000 hotels operating under numerous hotel brands. Since at
least as early as 1982 the Complainant (itself,
or through a related company, predecessor-in-interest or licensee) has used continuously
in commerce the service mark “Wyndham,” as well as
various other Wyndham-derivative marks, including “WYNDHAM REWARDS”. The latter
is used in connection with Complainant’s loyalty program – claimed to be the largest in the lodging industry as measured by the number of
participating hotels.
The Complainant is licensed to use the Wyndham Marks in the United States and is also the owner of a number of Community Trademark registrations
(copies of the Certificate of Registrations provided as Exhibit C of the
Complaint), including No. 005779591 “WYNDHAM REWARDS”.
Complainant argues that
the disputed domain name is identical or confusingly similar to the WYNDHAM
marks.
Complainant asserts that the
Respondent has no rights or legitimate interests in <wyndhamreward.com>,
as Respondent has not been authorized to use Complainant’s
marks and has no trade mark rights in “Wyndham” or any derivatives
there of . Nothing in the WHOIS record suggests that Respondent is commonly known by “Wyndham.”
The Complainant informs
that Respondent is redirecting
the domain name at issue to a web site of a competitor of the Complainant,
therewith creating a false impression that Respondent’s website is somehow affiliated or sponsored by Complainant.
The Complainant accuses the Respondent of using the disputed domain name solely
to obtain referral fees from reservations made through the domain name and
linked hotel site. This use does not constitute a bona fide offering of goods
and services.
Further, when <wyndhamreward.com> is
entered into a web browser, an initial screen appears
containing the words “THIS DOMAIN IS FOR SALE”(Exhibit I of the complaint) on a
green screen before the page resolves to the
competing hotel site.
Finally, the complainant
concludes that the Respondent has registered and is using the disputed domain
name in bad faith, referring to – among other – Respondent’s action in intentionally trying to divert Internet users to an alternative site,
and that Respondent (giving the content of the site and the notoriety of the
WYNDHAM mark) must have been aware of Complainant’s marks when registering <wyndhamreward.com>.
B. Respondent
Respondent has not contested any of Complainant’s allegations, but only
confirmed that it has shut down the web site and that any links, web site connections or redirections referring
to the disputed domain name have been removed. Respondent asserts that it will
not use the domain name as from April 30, 2009.
FINDINGS
The Complainant is the owner of a Community
Trademark registration for “WYNDHAM REWARDS”, filed March 22, 2007, and several
other CTM Registrations including the WYNDHAM mark. Complainant is also licensed to use the Wyndham trademarks in the
Respondent
registered the disputed domain name on May 17, 2007.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant has established rights in the WYNDHAM trademark in the
Respondent’s
domain name registration <wyndhamreward.com> is
virtually identical with Complainant’s mark WYNDHAM REWARDS (just lacking the
last “s”) and is confusingly similar to Complainant’s other WYNDHAM marks.
Furthermore,
the addition of the generic top-level domain “.com” is insufficient to
distinguish the domain
name from Complainant’s mark.
Accordingly,
the Panel finds that the disputed domain name is confusingly similar to
Complainant’s WYNDHAM REWARDS and other WYNDHAM trademarks. Policy ¶
4(a)(i) has been satisfied.
It is an undisputed fact that the Respondent
is not licensed or authorized by the Complainant to use the WYNDHAM or WYNDHAM
REWARDS marks. Respondent has no trademark rights to WYNDHAM or WYNDHAM REWARDS
nor is the Respondent commonly
known by the disputed domain name.
The
lack of rights or legitimate interests are further confirmed by the fact that
the Respondent has advertised the domain name for sale, in combination with the
Response that Respondent will
not use the domain name as from April 30, 2009. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, the respondent’s apparent willingness to dispose of
its rights in the disputed domain name suggested that it lacked rights
or legitimate interests in the domain name).
As shown by the Complainant, the disputed domain name resolves to a
third-party competitive hotel reservation website so that Respondent can
benefit from affiliate referral fees. Accordingly, Respondent has failed to
make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid,
D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the
disputed domain name to generate revenue via advertisement and affiliate fees
is not a bona fide offering of
good or services).
The Panel concludes that the Respondent has
no rights or legitimate interests in the Domain Name, and finds for Complainant under Policy ¶ 4(a)(ii).
Complainant argues that Respondent knew or
should have known (“actual or constructive knowledge”) of Complainant’s
trademark WYNDHAM at the time of the registration of <wyndhamreward.com>,
and therefore Respondent registered and used the domain name in bad faith. The Panel agrees in this assumption. It can
be no coincidence that Respondent registered a domain name that is almost
identical to the WYNDHAM REWARDS trademark. Registration of a domain name that
is confusingly similar to another’s mark, despite knowledge of the mark
holder’s rights, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”).
A further evidence of Respondent’s knowledge
of Complainant’s trademarks is the fact that the disputed domain name is being
used to advertise a third-party
competitive hotel reservation website. The Panel finds it obvious that Respondent has intentionally created a likelihood of
confusion as to Complainant’s affiliation or endorsement of the disputed domain
name for commercial gain via affiliate fees.
Finally, Respondent’s online offer to sell the domain name
indicates that an intention of registering <wyndhamreward.com> has been to sell it to the Complainant for a
presumed amount exceeding Respondent’s out-of-pocket costs directly related to
the registration of the same. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
The Panel concludes that Respondent registered and has been using the disputed domain name in bad
faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wyndhamreward.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: May 14, 2009
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