Starwood Capital Group Global LLC v. Resort Realty c/o Web Master
Claim Number: FA0707001043061
Complainant is Starwood Capital Group Global LLC (“Complainant”), represented by Stephen
G. Janoski, of Roylance Abrams Berdo & Goodman L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baccarathotels.com>, registered with Namesecure.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2007.
On July 20, 2007, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <baccarathotels.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.com 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 July 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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@baccarathotels.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a world-famous manufacturer and provider of luxury goods and services.
For more than three centuries, Complainant has marketed and distributed its wide range of products under the BACCARAT mark.
Complainant also provides a variety of luxury hotel and resort services under its mark.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) and other service mark registrars, including several for variations of the BACCARAT mark (including Reg. No. 1,845,321, issued July 19, 1994).
Complainant also operates a website at the <baccarat.com> domain name.
Respondent is not licensed or authorized to use the BACCARAT mark in any way.
Respondent registered the <baccarathotels.com> domain name on July 1, 2007.
The disputed domain name resolves to a website that displays hyperlinks to various third-party sites, many of which are in direct competition with the business of Complainant.
Respondent’s <baccarathotels.com> domain name is confusingly similar to Complainant’s BACCARAT mark.
Respondent does not have any rights or legitimate interests in the <baccarathotels.com> domain name.
Respondent registered and uses the <baccarathotels.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its BACCARAT mark with the
USPTO sufficiently establishes its rights in the mark. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.” See also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): “[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”
We are also persuaded that
Respondent’s <baccarathotels.com>
domain name is confusingly similar to Complainant’s BACCARAT mark under Policy
¶ 4(a)(i), in that it uses Complainant’s entire mark and merely adds the
generic term “hotels.” There is an obvious relationship between the additional
term and Complainant’s mark, as part of Complainant’s business is in the
provision of hotel services.
Furthermore, the addition of the generic top-level domain “.com” does
nothing to eliminate the confusing similarity, as a top-level domain is a
requirement for all domain names. See Arthur
Guinness Son & Co. (
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.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must initially establish that Respondent lacks rights and legitimate interests with respect to the <baccarathotels.com> domain name. Once Complainant establishes a prima facie case, the burden shifts to Respondent, who must then prove that it nonetheless has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide to the presiding panel “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
On the record before us, Complainant has sufficiently established a prima facie case, and Respondent has failed to respond.
Moreover, Respondent’s WHOIS information does not indicate, and there is nothing in the record suggesting, that Respondent is commonly known by the domain name <baccarathotels.com>. Further, Complainant asserts that Respondent is not licensed or authorized to use the BACCARAT mark in any way. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question). We conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
In addition, it is undisputed that Respondent’s <baccarathotels.com> domain name
displays hyperlinks to third-party websites, many of which are in direct
competition with the business of Complainant.
We presume that Respondent uses the disputed domain name to generate
click-through fees, so that Respondent has not made a bona fide offering of goods or services, or a legitimate
noncommercial or fair use pursuant to Policy ¶ ¶ 4(c)(i) and (iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).
See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of the uncontested evidence produced by
Complainant, we have already presumed that Respondent receives click-through
fees for the hyperlinks displayed on the website resolving from the <baccarathotels.com> domain
name. We further conclude that
Respondent’s domain name creates a likelihood of confusion as to Complainant’s possible
sponsorship or affiliation with the disputed domain name and correlating
website. To benefit commercially in such
a way constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003): “Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).” See also Associated 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.’”
Finally under this head, the fact that Respondent is using
the <baccarathotels.com>
domain name to display a website that features Complainant’s BACCARAT mark in
addition to directing Internet users to sites that market Complainant’s
products strongly suggests that Respondent had actual knowledge of
Complainant’s rights in the BACCARAT mark at the time it registered the
contested domain name. This is further
evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):
Respondent is using the domain name at issue to resolve to
a website at which Complainant’s trademarks and logos are prominently
displayed. Respondent has done this with
full knowledge of Complainant’s business and trademarks. The Panel finds that
this conduct is that which is prohibited by Paragraph 4(b)(iv)
of the Policy.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual and constructive knowledge of a complainant’s EXXON mark given the worldwide prominence of the mark, so that that respondent registered the domain name in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <baccarathotels.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 6, 2007
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