Wyndham IP Corporation v. LaPorte
Holdings, Inc.
Claim
Number: FA0411000373545
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 LaPorte Holdings, Inc. (“Respondent”), c/o Nameking, Inc.,
2202 South Figueroa Street, Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wynhdam.com> and <wyandham.com>,
registered with Nameking.com, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
30, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 2, 2004.
On
December 2, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wynhdam.com> and <wyandham.com>
are registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.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
December 6, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 27, 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@wynhdam.com and postmaster@wyandham.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
January 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wynhdam.com>
and <wyandham.com> domain names are confusingly similar to Complainant’s
WYNDHAM mark.
2. Respondent does not have any rights or
legitimate interests in the <wynhdam.com> and <wyandham.com>
domain names.
3. Respondent registered and used the <wynhdam.com>
and <wyandham.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, a
provider of hotel and resort services, has used the WYNDHAM mark in connection
with providing its goods and services continuously since 1982. Complainant
holds numerous trademark registrations on the Principal Register of the United
States Patent and Trademark Office for the WYNDHAM family of marks, including
Reg. No. 1,442,514 for the WYNDHAM mark (issued February 21, 1995). Complainant
also operates a website at the <wyndham.com> domain name.
Respondent
registered the <wynhdam.com> domain name on February 28, 2003 and
the <wyandham.com> domain name on September 16, 2004. The domain
names resolve to websites that contain links to providers of competing services
and to unrelated commercial websites. Respondent is not authorized or licensed
to use Complainant’s mark for any purpose.
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.
Complainant has
established that it has rights in the WYNDHAM mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1982. See 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.”); see also 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. Respondent has the burden of refuting this assumption.
The <wynhdam.com> and <wyandham.com> domain names are
confusingly similar to Complainant’s WYNDHAM registered trademark. The <wynhdam.com>
domain name merely transposes the letters “d” and “h” in the mark, and the <wyandham.com>
domain name merely adds the letter “a” to the mark. Respondent’s intentional
misspelling of the WYNDHAM mark does not distinguish the disputed domain names
from the mark. Thus, the second-level domains are confusingly similar to
Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant; see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that,
by misspelling words and adding letters to words, a Respondent does not create
a distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks; see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”; see also Neiman Marcus
Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) finding the
disputed domain name was a simple misspelling of Complainant’s mark and was a
classic example of typosquatting, which “renders
the domain name confusingly similar to the altered famous mark”.
Furthermore, the
addition of the “.com” generic top-level domain does not distinguish the
disputed domain names from the WYNDHAM mark. See Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) finding that the domain
name <termquote.com> is identical to Complainant’s TERMQUOTE mark; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY BY VICTORIA mark.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Furthermore, because
Respondent has failed to submit a Response, Respondent has failed to propose any
set of circumstances that could substantiate its rights or legitimate interests
in the disputed domain names. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name; see also 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 the Complaint to be deemed
true.
Respondent
is not using the <wynhdam.com> and <wyandham.com>
domain names in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair
use of the domain names pursuant to Policy ¶ 4(c)(iii). The record reveals that
Respondent’s domain names redirect unsuspecting Internet users to websites that
provide links to services that are in competition with Complainant’s services
and to unrelated commercial websites. The Panel infers that Respondent
commercially benefits from this diversion by receiving pay-per-click fees from
advertisers when Internet users follow the links on its websites. Respondent
makes opportunistic use of Complainant’s mark in order to capitalize on the
goodwill and fame associated with the WYNDHAM moniker; thus, Respondent fails
to establish rights or legitimate interests in the domain names. See Ticketmaster Corp. v. DiscoverNet,
Inc., D2001-0252 (WIPO Apr. 9, 2001) finding no rights or legitimate
interests where Respondent generated commercial gain by intentionally and
misleadingly diverting users away from Complainant's site to a competing
website; see also Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716
(Nat. Arb. Forum June 12, 2003) finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy.
No
evidence before the Panel suggests Respondent is commonly known by the <wynhdam.com>
and <wyandham.com> domain names under Policy ¶ 4(c)(ii).
Respondent’s WHOIS information indicates that the registrant of the disputed
domain names is known as “LaPorte Holdings, Inc.” and is not known by either of
the confusing second-level domains that infringe on Complainant’s WYNDHAM mark.
Moreover, Respondent is not authorized or licensed to use Complainant’s mark
for any purpose. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply; see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"; see also MRA Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum Feb. 20, 2003) noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>.
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses confusingly similar misspellings of Complainant’s famous WYNDHAM mark
within domain names to ensnare unsuspecting Internet users. Respondent then
redirects the users to its websites, which offer links to websites that sell
competing and unrelated services. The Panel infers that Respondent commercially
benefits from this diversion by receiving pay-per-click fees from advertisers
when Internet users follow the links on its websites. Such infringement is what
the Policy was intended to remedy. Accordingly, the Panel finds that Respondent
registered and used the <wynhdam.com>
and <wyandham.com> domain
names in bad faith under Policy ¶ 4(b)(iv).
See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain; see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Respondent has
registered and used domain names that are confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer
services that compete with those offered by Complainant. Respondent’s use of
the <wynhdam.com> and <wyandham.com> domain names
establishes that Respondent registered and used the domain names for the
purpose of disrupting the business of a competitor pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) finding that Respondent acted in bad
faith by attracting Internet users to a website that competes with
Complainant’s business; see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) finding that the minor degree of variation from Complainant's marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business; see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) finding that Respondent diverted business from Complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain names, additional
factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”; see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”).
Respondent’s
intentional misspelling Complainant’s WYNDHAM mark, resulting in domain names
that are confusingly similar to the mark, is evidence of bad faith registration
and use of the disputed domain names. Respondent diverts Internet users who
accidentally mistype Complainant’s mark to Respondent’s websites. The Panel
finds that Respondent engaged in the practice of typosquatting, which is
evidence that Respondent registered and used the <wynhdam.com> and
<wyandham.com> domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional
misspelling of words with intent to intercept and siphon off traffic from its
intended destination, by preying on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb. Forum
Oct. 15, 2003) finding that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting, itself is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."; see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) finding that the <dermatalogica.com>
domain name was a typosquatted version of Complainant's DERMALOGICA
mark and stating, "[t]yposquatting itself is evidence of bad
faith registration and use pursuant to Policy 4(a)(iii)."
Respondent’s
registration of the <wynhdam.com> and <wyandham.com> domain
names, which incorporate Complainant’s well-known registered mark and simply
transpose letters or add a letter, suggests that Respondent knew of
Complainant’s rights in the WYNDHAM mark. Additionally, Complainant’s trademark
registration, on file at the United States Patent and Trademark Office, gave
Respondent constructive notice of Complainant’s mark. Moreover, the domain
names resolve to websites that provide links to Complainant’s competitors and
other commercial websites. Thus, the Panel finds that Respondent chose the
domain names based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”; see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names; see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) determining that
Policy paragraph 4(b) sets forth certain circumstances, without limitation,
that shall be evidence of registration and use of a domain name in bad faith; see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration; see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any confusingly
similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wynhdam.com> and <wyandham.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 17, 2005
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