Swissôtel Management GmbH v. KerryWeb Enterprise, Inc. a/k/a kerryweb@gmail.com +1.2133939001
Claim Number: FA0612000874833
Complainant is Swissôtel Management GmbH (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <swissotell.com>, <swissotell.net>, <swissotels.com>, <swissotels.net>, <wwwswissotels.com>, and <wwwswissotel.net>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2007 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@swissotell.com, postmaster@<swissotell.net>, postmaster@<swissotels.com>, postmaster@<swissotels.net>, postmaster@<wwwswissotels.com>, and postmaster@<wwwswissotel.net> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <swissotell.com> and <swissotell.net> domain names are identical to Complainant’s SWISSOTEL mark. Respondent’s <swissotels.com>, <swissotels.net>, <wwwswissotels.com>, and <wwwswissotel.net> domain names are confusingly similar to Complainant’s SWISSOTEL mark.
2. Respondent does not have any rights or legitimate interests in the <swissotell.com>, <swissotell.net>, <swissotels.com>, <swissotels.net>, <wwwswissotels.com>, and <wwwswissotel.net> domain names.
3. Respondent registered and used the <swissotell.com>, <swissotell.net>, <swissotels.com>, <swissotels.net>, <wwwswissotels.com>, and <wwwswissotel.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Swissôtel
Management GmbH, is a leading hospitality company that operates hotels and
resorts throughout the world. In connection
with the provision of these services, Complainant has registered a number of
trade and service marks with the United States Patent and Trademark Office
(“USPTO”) including the SWISSOTEL mark (Reg. No. 1,245,638 issued July 12,
1983).
Respondent registered the <swissotell.com>, <swissotels.com> and <wwwswissotel.net>
domain names on
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. 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.”).
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 asserts rights in the SWISSOTEL mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and use of the SWISSOTEL mark for
over twenty years is sufficient to establish rights in the mark pursuant to
Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
Respondent’s <swissotell.com> and <swissotell.net> domain names contain Complainant’s SWISSOTEL mark in its entirety and merely add the generic top-level domains (“gTLD”) “.com” and “.net.” The Panel finds that the addition of gTLDs to an otherwise identical mark fail to sufficiently distinguish the domain names from the mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent’s <swissotels.com>,
<swissotels.net>, and <wwwswissotels.com> domain names contain
Complainant’s SWISSOTEL
mark in its entirety and add the letter “s.” The <wwwswissotels.com> and <wwwswissotel.net> domain names
eliminate the necessary period between “www” and the rest of the domain
name. The Panel finds that the addition
of the letter “s” and the elimination of required punctuation fail to
sufficiently distinguish the domain names from the mark and constitutes
confusing similarity pursuant to Policy ¶ 4(a)(i). See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Bank of Am. Corp. v.
InterMos, FA 95092 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights or
legitimate interests in the disputed domain name. Where a complainant has made a prima facie case in support of its
allegations, the burden shifts to the respondent to set forth substantial
evidence establishing rights or legitimate interests in the disputed domain
name in accordance with Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph,
however, it is sufficient for the Complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent uses the disputed domain names to resolve to websites featuring advertisements and links to competing third-party websites, presumably for commercial gain. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
Complainant contends that Respondent is neither commonly
known by the disputed domain names nor authorized to register domain names that
feature Complainant’s SWISSOTEL mark in any way. In recognition of the lack of evidence suggesting
otherwise, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain names in accordance with Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent’s disputed domain names redirect Internet users to Respondent’s own website, which contains advertisements and links to websites that feature products which directly compete with Complainant. The Panel finds that such use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the disputed domain names is likely to cause confusion among Internet users expecting to view content affiliated with and produced by Complainant. The Panel finds that such use evinces confusion and is in violation of Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <swissotell.com>, <swissotell.net>, <swissotels.com>, <swissotels.net>, <wwwswissotels.com>, and <wwwswissotel.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 13, 2007
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