Diamond Resorts Holdings, LLC v. Diamond Quality Services
Claim Number: FA1004001318453
Complainant is Diamond Resorts Holdings, LLC (“Complainant”), represented by Marvin
H. Kleinberg, of Glaser, Weil, Fink, Jacobs, Howard &
Shapiro, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <diamondresortsmanagement.com>, registered with GoDaddy.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2010.
On April 13, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <diamondresortsmanagement.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of that domain name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@diamondresortsmanagement.com by e-mail. Also on April 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent’s Default.
On May 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant is the owner of Diamond Resorts Management, Inc., a real estate time share company for hotels and vacation rentals.
Complainant owns a service mark registration with the United States Patent and Trademark Office ("USPTO") for its DIAMOND RESORTS mark (Reg. No. 3,746,815, filed August 6, 2009, and issued February 9, 2010).
Respondent is not commonly known by the <diamondresortsmanagement.com> domain name, nor has Complainant granted Respdondent permission to use Complainant’s mark.
Respondent registered the domain name <diamondresortsmanagement.com> on December 16, 2009.
Respondent’s domain name resolves to a website that displays
“Diamond Resorts Management, LLC” in bold lettering at the top of the webpage
and offers online reservations for
Respondent’s <diamondresortsmanagement.com> domain name is confusingly similar to Complainant’s DIAMOND RESORTS mark.
Respondent
is not using the disputed domain name in connection with either a bona fide offering of goods or services
or a legitimate noncommercial or any fair use.
Respondent is using the domain name to divert Internet users seeking Complainant’s services to Respondent’s competing vacation rental business.
Respondent does not have any rights to or legitimate interests in the domain name <diamondresortsmanagement.com>.
Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s business to its own competing website results in a loss of business to Complainant.
Internet users must be confused as to the possible affiliation of Complainant with or ownership of the resolving website and its content, and may ultimately reserve travel accommodations through Respondent rather than Complainant.
Respondent registered and uses the <diamondresortsmanagement.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its DIAMOND RESORTS mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 3,746,815, issued Feb. 9, 2010) which was filed August 6, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, complainant has met the
requirements of Policy ¶ 4(a)(i).
Complainant’s rights in its mark date from the filing date
of the registration application with the USPTO, which predates Respondent’s
registration of the disputed domain name.
See Hershey
Complainant asserts that Respondent’s <diamondresortsmanagement.com> domain name is confusingly similar to its DIAMOND RESORTS mark. The disputed domain name contains Complainant’s mark in its entirety, merely adding the descriptive term “management”, which describes an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com”. Those additions do not distinguish the disputed domain name from its mark for purposes of the Policy. Therefore Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Jerry Damson, Inc. v.
Therefore, the Panel finds that Respondent’s <diamondresortsmanagement.com> domain name is confusingly similar to Complainant’s DIAMOND RESORTS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <diamondresortsmanagement.com> domain name. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has produced a prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to
these proceedings, we may presume that Respondent does not have any rights to or
legitimate interests in the disputed domain name. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent fails to respond to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, by reference to the standards set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent
does not deny, that Respondent is not commonly known by the <diamondresortsmanagement.com> domain name, and Complainant
not granted Respdondent permission to use Complainant’s mark. Moreover, the WHOIS information for the contested
domain name identifies the registrant only as “Diamond Quality Services”. Thus while it may appear superficially from
the inclusion of the word “Diamond” in Respondent’s that Respondent might be
commonly known by at least a variation on the disputed domain name, we conclude
that it is not. As a consequence, we
further conclude that the record fails to support the proposition that Respondent
has rights to or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See
Home Builders
Inst. v. Nat’l Inst. of Home Builders, Inc., FA 166011 (Nat. Arb. Forum Oct.
3, 2003) (holding that listing a respondent’s trade name, The National
Institute of Homebuilders, Inc., as the administrative contact in the WHOIS
contact information for the domain name <homebuilderinstitute.com> failed
to establish that a respondent was commonly known by the domain name because a
respondent could list any administrative contact it might wish); see also Starwood
Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416
(Nat. Arb. Forum Jan. 12, 2004): “Though Respondent’s WHOIS information lists
Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed
domain name, there is no evidence before the Panel that Respondent was actually
commonly known by that name.”
We also observe that Complainant argues, without objection from Respondent, that Respondent is not using the disputed domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather is using the domain name, which is confusingly similar to Complainant’s mark, to divert Internet users seeking Complainant’s services to Respondent’s competing vacation rental business. In these circumstances, we conclude that Respondent is not using the disputed domain name in conection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that some Internet users will be confused as to the possible affiliation of Complainant with or its ownership of the resolving website and its content, and may ultimately reserve travel accommodations through Respondent. Respondent does not deny this contention. Respondent’s use of the disputed domain name to divert Internet users away from Complainant’s hotel and travel reservation business and to Respondent’s competing business is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also, for example, Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005):
The Respondent is a travel agency and thus operates in the same
business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that the Respondent registered the domain
name primarily for the purpose of disrupting the business of a competitor,
which constitutes evidence of registration and use in bad faith under Policy
4(b)(iii).
We may presume from the prevailing circumstances that
Respondent receives income in the form of click-through, or similar, fees from
the visits of Internet users to the website resolving from the disputed domain
name. Respondent’s use of the contested
domain name in this manner is evidence of Respondent’s bad faith registration
and use of the domain name under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum
May 14, 2001) (finding bad faith where a respondent used a domain name, for
commercial gain, to attract Internet users to a direct competitor of a
complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the
<saflock.com> domain name to offer goods competing with those of a complainant’s
illustrates that respondent’s bad faith registration and use of the domain name
within the meaning of Policy ¶ 4(b)(iv)).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <diamondresortsmanagement.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 21, 2010
Click Here to return to the main Domain Decisions Page
Click Here to return to our Home Page
National
Arbitration Forum