Wyndham IP Corporation v. Golden Door
Claim
Number: FA0410000341231
Complainant is Wyndham IP Corporation (“Complainant”),
represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP,
1601 Elm Street, Suite 3000, Dallas, TX 75201.
Respondent is Golden Door (“Respondent”),
1234 5th Street, Hayward, CA 94541.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <goldendoor2.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
October 13, 2004; the National Arbitration Forum received a hard copy of the
Complaint on October 18, 2004.
On
October 15, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <goldendoor2.com> 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
October 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 9, 2004 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@goldendoor2.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., 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 <goldendoor2.com>
domain name is confusingly similar to Complainant’s GOLDEN DOOR mark.
2. Respondent does not have any rights or
legitimate interests in the <goldendoor2.com> domain name.
3. Respondent registered and used the <goldendoor2.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wyndham IP Corporation, uses the GOLDEN DOOR mark in conjunction with hotel,
resort, and spa services, as well as related spa products, such as soaps, oils,
creams, lotions, moisturizers, shampoos, conditioners, scrubs, and gels. In the Complaint, Complainant includes
various U.S. Patent and Trademark Office (“USPTO”) registrations for GOLDEN
DOOR, registered to the Golden Door Corporation (e.g. reg. nos. 862,884,
1,192,934, 1,024,121, 1,592,438, 943,405, and 958,717). However, Complainant has not established
that it has acquired rights from the Golden Door Corporation.
Complainant
registered the GOLDEN DOOR mark with the USPTO on December 3, 2002 (reg. no.
2,655,803). Complainant accuses
Respondent of committing “pornosquatting”—“the practice in which a cyber
squatter tries to take advantage of a well-known trademark and/or trade name to
attract Internet users to a pornographic website . . .”
Respondent
registered the <goldendoor2.com> domain name on July 21,
2004. Respondent is using the domain
name to market therapeutic services.
Accompanying the pricing table for “full sensual body rub” and “elite
services” are images of naked women. Next to the fee table for services, a
legal notice states that the website is not for “either (1) engagement in any
lewd act for money or other consideration or (2) solicitation, offer, or
agreement to engage in any lewd act for money or other consideration.” The
website also provides a direct link to Complainant’s website
(<goldendoorskincare.com>).
Complainant also
asserts the website at Respondent’s <goldendoor2.com> domain name
appropriates the design mark below (reg. no. 1,192,934):
This design mark
is one of the marks registered to the Golden Door Corporation.
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.
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.
Through its
registration with the USPTO, Complainant has acquired rights in the GOLDEN DOOR
mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions
have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive, and Respondent has the burden of refuting this assumption); see
also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”).
The Panel
accepts Complainant’s allegation that Respondent is appropriating the design
mark below (reg. no. 1,192,934):
Because this
mark is registered to the Golden Door Corporation, and Complainant has not
demonstrated that it is the successor-in-interest to this mark, the Panel finds
that Respondent’s use of this mark does not imply that Respondent has notice of
Complainant or Complainant’s rights in this design mark. See CMG Worldwide, Inc. v. Humphrey
Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (dismissing the
Complaint despite Complainant’s authorization to pursue the Complaint on behalf
of the exclusive owner of the trademark rights HUMPHREY BOGART, as Complainant
did not own the rights to the mark); see also CMG Worldwide, Inc. v.
Pitanguy Plastic Surgical Clinic, FA 155888 (Nat. Arb. Forum June 3, 2003)
(holding that as Complainant provided no evidence to the Panel that it has any
arrangement to represent the actual trademark holder, or that any rights in the
relevant trademark had been assigned or licensed to Complainant, Complainant
did not have standing to bring a claim under the UDRP).
However, the
Panel finds that Complainant’s registration of the GOLDEN DOOR mark (reg. no.
2,655,803) is still adequate to allow Complainant to seek relief pursuant to
the Policy.
Respondent’s <goldendoor2.com>
domain name is confusingly similar to Complainant’s GOLDEN DOOR mark because
the only difference is the elimination of the space between the words and the
addition of the number “2,” which do not significantly distinguish the domain
name from the mark. See Am. Online Inc. v. Chinese ICQ Network,
D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in
the domain name <4icq.com> does nothing to deflect the impact on the
viewer of the mark ICQ and is therefore confusingly similar); see also Omnitel Pronto Italia S.p.A. v. Bella,
D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested
<omnitel2000.com> domain name is confusingly similar to the OMNITEL
trademark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. Therefore, the Panel accepts any reasonable
assertion by Complainant as true. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true); see also
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence).
Respondent
is appropriating Complainant’s mark to market its services and display
pornography, which is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See McClatchy
Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003)
(holding that Respondent’s use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use); see also Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s
mark to host a pornographic website was not a legitimate noncommercial or fair
use of the domain name).
The Panel notes
that the domain name WHOIS information indicates that Respondent seems to be
conducting business under the “Golden Door” name. However, because the <goldendoor2.com> domain name’s
resultant website offers a link to Complainant, the Panel finds that Respondent
has established itself as GOLDEN DOOR only to pass itself of as
Complainant. The Panel does not
construe the <goldendoor2.com> WHOIS information to establish that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Web House USA, Inc. v.
eDollarShop Hostmaster, FA 155180 (Nat.
Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by”
the <edollarshop.com> domain name, despite naming itself
“eDollarShop,” because Respondent’s website was almost identical to
Complainant’s “first in use” website and infringed on Complainant’s marks); see
also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to its registration of the disputed domain name”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent
is appropriating Complainant’s GOLDEN DOOR mark to advertise its services and
exhibit naked women; a practice Complainant calls “pornosquatting.” While the Panel is not familiar with this
term, it finds that appropriating Complainant’s mark to exhibit pornography is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that 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 aslo Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO March 4, 2003) (stating that “whatever 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”).
In addition, the
Panel accepts Complainant’s allegation that Respondent’s website links directly
to Complainant. The Panel finds that
linking to Complainant demonstrates that Respondent has actual notice of
Complainant’s mark. The Panel also
infers from Respondent’s actual notice that Respondent intended to pass itself
off as Complainant, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30,
2003) (finding that the disputed domain name was registered and used in bad
faith where Respondent hosted a website that “duplicated Complainant’s mark and
logo, giving every appearance of being associated or affiliated with
Complainant’s business”); cf. Monsanto Co. v. Decepticons, FA
101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of
<monsantos.com> to misrepresent itself as Complainant and to provide
misleading information to the public supported a finding of bad
faith).
The Panel finds
that Complainant has established 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 <goldendoor2.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 1, 2004
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