Wyndham IP Corporation v. WWW
Enterprise,Inc.
Claim
Number: FA0501000411811
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 WWW Enterprise,Inc.
(“Respondent”), P.O. Box 118, 5850 W. 3rd Street, Los Angeles,
CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue are <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org>, registered with Onlinenic, Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
February 2, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org> are registered with Onlinenic, Inc. and
that Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic, 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
February 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 28, 2005 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@wwwwyndhamhotel.com,
postmaster@wwwwyndhamhotels.com and postmaster@wyndhamhotels.org 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
March 4, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <wwwwyndhamhotel.com>,
<wwwwyndhamhotels.com> and <wyndhamhotels.org> domain
names are confusingly similar to Complainant’s WYNDHAM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org> domain names.
3. Respondent registered and used the <wwwwyndhamhotel.com>,
<wwwwyndhamhotels.com> and <wyndhamhotels.org> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
registered the WYNDHAM mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,859,133 issued July 6, 2004) and uses the mark in
connection with providing hotel and resort services and related goods and
services.
Respondent
registered the <wwwwyndhamhotel.com> and <wwwwyndhamhotels.com>
domain names on July 13, 2004 and the <wyndhamhotels.org> domain
name on July 14, 2004. Respondent’s
domain names resolve to a website that features links to competing hotel
services.
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 rights in the WYNDHAM mark through registration with the
USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); 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).
Respondent’s
domain names are confusingly similar to Complainant’s WYNDHAM mark. Respondent’s domain names incorporate the
mark in its entirety and merely add the terms “hotel” and “hotels,” which
describe Complainant’s business, as well as the generic top-level domains
“.com” and “.org.” Such minor changes are
not enough to overcome a finding of confusing similarity between Respondent’s
domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Microsoft Corp. v. Mehrotra, D2000-0053
(WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is
identical to Complainant’s mark).
Furthermore,
Respondent’s <wwwwyndhamhotel.com> and <wwwwyndhamhotels.com>
domain names are typosquatted variations of Complainant’s mark and thus are
confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Marie Claire Album v. Blakely,
D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are
not distinct in the "Internet world" and thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark); see also Bank
of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable assertions and allegations set
forth by Complainant as true and accurate.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the disputed domain names pursuant to Policy
¶ 4(a)(ii). 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent
is using the <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org> domain names, which contain confusingly
similar versions of Complainant’s WYNDHAM mark, to operate a website that
features links to competing hotel services.
Such use is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also N.
Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to Respondent’s
competing website through the use of Complainant’s mark).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or is authorized to register domain names featuring
Complainant’s WYNDHAM mark. Thus,
Respondent lacks rights and legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion must be rejected); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
Moreover,
the fact that Respondent’s <wwwwyndhamhotel.com> and <wwwwyndhamhotels.com>
domain names are merely typosquatted variations of Complainant’s mark is
evidence that Respondent lacks rights and legitimate interests in the domain
names pursuant to Policy ¶ 4(a)(ii). See
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis-à-vis Complainant);
see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011
(WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers
against their will to another site, does not qualify as a bona fide offering of
goods or services, whatever may be the goods or services offered at that
site.”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org> domain names, which are confusingly
similar to Complainant’s WYNDHAM mark, to operate a website that features links
to competing hotel services. Such use
constitues disruption and is evidence that Respondent registered and used the
domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)); 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).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to the
competing websites. Since Respondent’s
domain names are confusingly similar to Complainant’s WYNDHAM mark, consumers accessing
Respondent’s domain names may become confused as to Complainant’s affiliation
with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the disputed domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Assoc.
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); 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)).
Furthermore,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the WYNDHAM mark due to Complainant’s
registration of the mark with the USPTO.
Moreover, the Panel infers that Respondent had actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content featured
on Respondent’s website and Complainant.
Thus, Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See
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.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
Additionally,
the fact that Respondent’s <wwwwyndhamhotel.com> and <wwwwyndhamhotels.com>
domain names are merely typosquatted variations of Complainant’s WYNDHAM mark
is evidence that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period after
the “www” portion of [a] web-address,” and was evidence that the domain name
was registered and used in bad faith); see also 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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <wwwwyndhamhotel.com>, <wwwwyndhamhotels.com>
and <wyndhamhotels.org> domain names be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
March 18, 2005