Occidental Hoteles Management, S.L. v. Gregory Bloom / Occidental Grand
Claim Number: FA1312001533498
Complainant is Occidental Hoteles Management, S.L. (“Complainant”), represented by Joshua D. Yeager of Cremer, Spina, Shaughnessy, Jansen, & Siegert LLC, Illinois, USA. Respondent is Gregory Bloom / Occidental Grand (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <occidental-finance.com>, registered with GoDaddy.com, LLC.
The undersigned, Daniel B. Banks, Jr., as Panel Chair, certifies that the panel has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelists in this proceeding. The other two panelists in this case are David A. Einhorn and Hon. James A. Carmody.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013.
On December 9, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <occidental-finance.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 December 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@occidental-finance.com. Also on December 13, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Default.
On Janurary 10, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn, Hon. James A. Carmody and Daniel B. Banks, Jr., as Panelists.
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" 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 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
a) Complainant’s copyrighted and protected business name is “Occidental Hotels and Resorts,” used by Complainant in connection with its OCCIDENTAL-branded hotels located throughout the world. Complainant, through its OCCIDENTAL brand, is a global leader in the hotel industry. These premiere beachfront resorts and hotels and Complainant’s vacation club for the establishments are known both by consumers and travelers. Complainant is the owner of numerous registrations with the United States Patent and Trademark Office (“USPTO”) for various marks including the OCCIDENTAL mark, including the OCCIDENTAL & Design mark (Reg. No. 2,990,433 registered Aug. 30, 2005).
b) The <occidental-finance.com> domain name is confusingly similar to the OCCIDENTAL mark. Respondent merely adds the generic term “finance” along with the generic top-level domain (“gTLD”) “.com” and a hyphen to the OCCIDENTAL mark in the domain name, but these do not negate a finding of confusing similarity.
c) Respondent has never been given permission to use the OCCIDENTAL mark, and Respondent is not affiliated with Complainant in any way.
d) The disputed domain name is used to send e-mails from the domain name to Complainant’s vacation club members purporting to be affiliated with Complainant and stating that Complainant would discount membership fees if they paid the membership in full. The e-mails are being sent using an account linked to the domain name that claims to be the Assistant Promotions Manager from the Finance Department of Complainant’s company. The disputed domain name is being used to commit fraud on unsuspecting vacation club members by acquiring their financial information so as to get access to their accounts.
e) Respondent is making no active use of the <occidental-finance.com> domain name itself.
f) Respondent is attempting to convince Internet users that it is affiliated with Complainant.
The Panel notes that the <occidental-finance.com> domain name was registered on November 28, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1 - The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being 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.”).
Complainant asserts that its copyrighted and protected business name is “Occidental Hotels and Resorts,” used by Complainant in connection with its OCCIDENTAL-branded hotels located throughout the world. Complainant states that it, through its OCCIDENTAL brand, is a global leader in the hotel industry. Complainant notes that these premiere beachfront resorts and hotels and Complainant’s vacation club for the establishments are known both by consumers and travelers. Complainant demonstrates to the Panel that Complainant is the owner of numerous registrations with the USPTO for various marks including the OCCIDENTAL mark, including the OCCIDENTAL & Design mark (Reg. No. 2,990,433 registered Aug. 30, 2005). Panels have found that, regardless of the location of the parties, federal registration of a mark is evidence under the Policy of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has rights in the OCCIDENTAL mark under Policy ¶ 4(a)(i).
Complainant also asserts that the <occidental-finance.com> domain name is confusingly similar to the OCCIDENTAL & Design mark. Complainant states that Respondent merely adds the generic term “finance” along with the gTLD “.com” and a hyphen to the OCCIDENTAL mark in the domain name, but these do not negate a finding of confusing similarity. Panels have found that the addition of a term, a gTLD, and a hyphen all fail to negate confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). In addition, the Panel may note the decision in Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005), in which the panel stated, “The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.” Therefore, the Panel finds that the <occidental-finance.com> domain name is confusingly similar to the OCCIDENTAL & Design mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has never been given permission to use the OCCIDENTAL mark, and Respondent is not affiliated with Complainant in any way. The Panel notes that the WHOIS record for the <occidental-finance.com> domain name lists “Gregory Bloom/Occidental Grand” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Accordingly, the Panel holds that Respondent is not commonly known by the <occidental-finance.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that the disputed domain name is used to send e-mails from the domain name to Complainant’s vacation club members purporting to be affiliated with Complainant and stating that Complainant would discount membership fees if they paid the membership in full. Complainant contends that the disputed domain name is being used to commit fraud on unsuspecting vacation club members by acquiring their financial information so as to get access to their accounts. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel found that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. As such, the Panel finds that Respondent’s attempt to operate a phishing scheme to acquire financial information and money is evidence of Respondent’s lack of rights and legitimate interests in the <occidental-finance.com> domain name as it is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant next alleges that Respondent is making no active use of the <occidental-finance.com> domain name itself. Panels have found inactivity to equate to a lack of rights and legitimate interests. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Accordingly, the Panel finds that Respondent’s failure to actively use the <occidental-finance.com> domain name’s resolving website qualifies as neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
According to Complainant, Respondent is attempting to convince Internet users that it is affiliated with Complainant. Complainant contends that the e-mails are being sent using an account linked to the domain name that claims to be the Assistant Promotions Manager from the Finance Department of Complainant’s company. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the respondent attempted to pass itself off as the complainant online, which represented blatant unauthorized use of the complainant’s mark and was evidence that the respondent had no rights or legitimate interests in the disputed domain name. Similarly, the Panel finds that Respondent’s attempts to pass itself off as Complainant are evidence of Respondent’s lack of rights and legitimate interests in the <occidental-finance.com> domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use of the <occidental-finance.com> domain name is in bad faith. The Panel notes that although Policy ¶ 4(b) outlines factors that should be considered when making a determination of bad faith, this list was not meant to be exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel will consider the totality of the circumstances when making a holding on bad faith.
The disputed domain name is used to send e-mails from the domain name to Complainant’s vacation club members, purporting to be affiliated with Complainant and stating that Complainant would discount membership fees if they paid the membership in full. Complainant argues that the disputed domain name is being used to commit fraud on unsuspecting vacation club members by acquiring their financial information so as to get access to their accounts. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel stated, “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.” As such, the Panel finds that Respondent registered and is using the <occidental-finance.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) as a result of Respondent’s attempted phishing of Internet users’ financial information and accounts.
Complainant further asserts that Respondent is making no active use of the <occidental-finance.com> domain name itself. Panels have found that bad faith is evident when a respondent registers a domain but fails to actively use the domain’s resolving website. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent’s bad faith under Policy ¶ 4(a)(iii) is demonstrated by its failure to make an active use of the <occidental-finance.com> domain name’s resolving website itself.
Lastly, Complainant contends that Respondent is attempting to convince Internet users that it is affiliated with Complainant. Complainant notes that a telephone number is listed on the domain name with a voicemail stating, “You have reached the Occidental Grand Finance Department,” and Respondent states that it is in this department of Complainant’s business in its e-mails. Panels have found that making displays to consumers to attempt to pass off as being affiliated with the complainant is evidence of bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). The Panel finds that Respondent registered and is using the <occidental-finance.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) by attempting to pass off as being affiliated with Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <occidental-finance.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panel Chair
David A. Einhorn, Panelist
Hon. James A. Carmody, Panelist
Dated: January 15, 2014
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