Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren
Claim Number: FA1506001624028
Complainant is Wyndham Hotels and Resorts, LLC. and Wyndham Vacation Resorts, Inc. ("Complainant"),[1] represented by Susan L. Crane, New Jersey, USA. Respondent is James VanBuren ("Respondent"), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wyndhamextraholidays.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 11, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <wyndhamextraholidays.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@wyndhamextraholidays.com. Also on June 12, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant and its licensees offer hotel and vacation ownership services to the public under the WYNDHAM mark, and since 1996 has offered vacation rental services under the EXTRA HOLIDAYS mark. Complainant began marketing these vacation rentals as EXTRA HOLIDAYS BY WYNDHAM in 2007, and in 2013 shortened this to WYNDHAM EXTRA HOLIDAYS. Complainant holds various relevant trademark registrations, including U.S. registrations for WYNDHAM and EXTRA HOLIDAYS.
Complainant contends that the disputed domain name <wyndhamextraholidays.com>, registered in 2009, is identical or confusingly similar to its marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant alleges that Respondent is the owner of at least one timeshare interest in Complainant's WYNDHAM branded properties; that Respondent operates an eBay store under the name "resortcondorentals," where he offers vacation rentals at these properties in competition with Complainant; and that he uses the disputed domain name to direct Internet traffic to this eBay store. Respondent's eBay store includes a disclaimer identifying himself as a Wyndham timeshare owner and stating that the store is not operated, endorsed, or sponsored by Complainant.
Complainant states that Respondent is not commonly known by the WYNDHAM EXTRA HOLIDAYS mark, and that Respondent has no license or permission to use the WYNDHAM EXTRA HOLIDAYS mark; to the contrary, Complainant states that it has on three occasions (in 2013 and 2014) demanded that Respondent desist from using its trademarks. In response to one of these communications, Respondent stated that "in good faith [he] would be willing to assign [the domain name] to Wyndham for an agreed upon amount."
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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."
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.
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.").
The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks. See, e.g., BBY Solutions, Inc. v. enlai zhou, FA 1405486 (Nat. Arb. Forum Oct. 10, 2011) (finding <bestbuygeeksquad.com> confusingly similar to complainant's BEST BUY and GEEK SQUAD marks); Land Rover v. CSRUS Enterprises / Gerente de Dominia, FA 1395620 (Nat. Arb. Forum Aug. 10, 2011) (finding <landroverdiscovery.com> confusingly similar to complainant's LAND ROVER and DISCOVERY marks); adidas AG & adidas America, Inc. v. Taranga Services Pty Ltd c/o Domain Admin, FA 1329851 (Nat. Arb. Forum July 15, 2010) (finding <adidassuperstar.com> confusingly similar to the combination of complainant's ADIDAS and SUPERSTAR marks); Bayerische Motoren Werke AG v. Null, D2002-0937 (WIPO Nov. 27, 2002) (finding <bmwx5.com> identical or confusingly similar to complainant's BMW and X5 marks); Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding <pokemonpikachu.com> confusingly similar to complainant's POKEMON and PIKACHU marks). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name combines two of Complainant's registered marks, and is being used to direct Internet users to Respondent's eBay store, where he offers vacation rentals at Complainant's own properties, with a clear disclaimer disavowing any connection to or endorsement by Complainant. Under the doctrine of nominative fair use, a reseller of genuine trademarked goods or services may use the trademark if (1) the goods or services are not readily identifiable without the use of the mark; (2) the reseller uses no more of the mark than necessary; and (3) the reseller does nothing to suggest sponsorship or endorsement by the trademark owner. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir. 2010); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010); F. Hoffmann-La Roche AG v. Alexandr Grog, D2013-0995 (WIPO Sept. 27, 2013); ER Marks, Inc. & QVC, Inc. v. 6 Ideas, FA 1417333 (Nat. Arb. Forum Jan. 11, 2012). The mark must be used only to offer the genuine trademarked goods or services. See, e.g., Steinway, Inc. v. Carey Simon, FA 1318229 (Nat. Arb. Forum June 2, 2010); Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, D2003-0649 (WIPO Nov. 27, 2003) (citing Ty v. Perryman, 306 F.3d 509 (7th Cir. 2002)); Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
The evidence submitted by Complainant includes a printout of the items being offered in Respondent's eBay store: 32 items that appear to be condominiums or other rental properties described as "Wyndham" properties, and a lot of 12 folding knives. (The Panel has also examined the current listings that appear in Respondent's eBay store, and the lot of knives is still included there alongside the "Wyndham" properties; Respondent's eBay feedback indicates that Respondent has made multiple sales of these folding knives.) Respondent is clearly using Complainant's marks to promote goods other than those legitimately referred to by the marks, and therefore is not protected by the doctrine of nominative fair use.
Respondent has not come forward with any other evidence of rights or legitimate interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using Complainant's marks to promote goods and services, including those that compete directly with those offered by Complainant, and in the process is likely diverting Internet users who may be searching for Complainant's trademarks. The disclaimer displayed on Respondent's eBay store is helpful in avoiding confusion. However, the scope of Respondent's use of the marks, as discussed in connection with nominative use supra, together with the fact that the domain name consists entirely of Complainant's marks (without any distinguishing or even generic terms), leads the Panel to conclude that Respondent registered and is using the disputed domain name with the intent to attract Internet users by creating a likelihood of confusion with Complainant's marks. The Panel finds that both paragraphs 4(b)(iii) and 4(b)(iv) of the Policy are satisfied, and concludes on this basis that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wyndhamextraholidays.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 10, 2015
[1] Complainant Wyndham Hotels and Resorts, LLC, is the parent company of Complainant Wyndham Vacation Resorts, Inc. For purposes of this proceeding, the Panel uses the term "Complainant" to refer to either or both of these entities.
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