National Arbitration Forum

 

DECISION

 

HLT Domestic IP LLC v. Mark Stembler

Claim Number: FA0807001214843

 

PARTIES

Complainant is HLT Domestic IP LLC (“Complainant”), represented by Holly S. Hawkins, of Alston & Bird LLP, Georgia, USA.  Respondent is Mark Stembler (“Respondent”), Montana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hiltonspa.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2008.

 

On July 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hiltonspa.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 July 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 4, 2008 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@hiltonspa.com by e-mail.

 

A timely Response was received and determined to be complete on August 1, 2008.

 

On August 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant, HLT Domestic IP LLC, is a wholly-owned subsidiary of Hilton Hotels Corp. (Hilton).  Hilton is a global leader in the hospitality industry, owning, managing, or franchising nearly 2800 hotels, resorts, and other temporary accommodations in more than 80 countries.  Since at least as early as 1925, Hilton has used the HILTON mark to identify high quality hotel services.  Today there are more than 514 HILTON branded hotels worldwide.

 

Hilton operates spa and leisure facilities at various HILTON resort and hotel properties.  HILTON spas offer a full range of spa services, including massages, body wraps, facial treatments and the like.  There are currently more than 27 HILTON-branded resorts and hotels that operate spas. 

 

Complainant owns a number of trademark registrations in the U.S. for the HILTON mark, as used in connection with hotel and related services.[1] Hilton also operates interactive websites devoted to its lodging and hospitality services that can be reached via the following domain names:  <hilton.com>, <hiltonhotels.com>, and <hiltonhonors.com>.

 

Respondent registered the disputed domain name, <hiltonspa.com>, on June 25, 2006.  Respondent is using the domain name to host a website that states: “[i]f you are looking for Hilton Spas, Hilton Hotels, Hilton Resorts or anything Hilton Spas related … You have come to the right website!”  The disputed website includes various images of resort scenes which fade in and out and are replaced by names including “Hilton Hotels,” “Hilton Resorts,” “Anaheim Hilton Hotel,” “Hilton Hotel Las Vegas,” and “Hilton Sedona Arizona.”  The images/names are links that, when clicked,  take the user to another page within the site with sponsored links for travel sites selling vacation and hotel packages, including hotel packages at hotels that are competitors of Hilton.  Upon information and belief, Complainant asserts that Respondent generates revenue on a pay-per-click basis each time a visitor to his site clicks on one of these links.

 

Hilton asserts that it has sent three letters to Respondent at the email address provided in the WHOIS record for the domain name demanding that Respondent cease further use of the domain name and transfer it to Hilton.  To date, Hilton has not received any response to its letters.

 

Complainant alleges that it owns valid and enforceable rights in the HILTON mark and that the domain name in issue – <hiltonspa.com> – is confusingly similar to the HILTON mark.

 

Complainant further contends that Respondent has no rights or legitimate interests in the domain name.  Complainant asserts that Respondent has no connection or affiliation of any kind with Hilton, nor has Hilton ever authorized, licensed, or permitted Respondent to register or use the disputed domain name. 

 

Complainant also maintains that Respondent is not commonly known by the name “Hilton Spa,” has never used the domain name in connection with any bona fide offering of goods or services, and has not made any legitimate non-commercial or fair use of the domain name.

 

With respect to the issue of “bad faith” registration and use, Complainant indicates that “it is clear that Respondent registered the Domain Name with the intent of capturing Internet traffic looking for the Hilton web site so that Respondent could then drive the traffic to the unaffiliated, commercial web sites of third parties, including Hilton’s competitors, for Respondent’s financial gain.  This ‘abusive cybersquatting’ constitutes textbook evidence of bad faith registration and use in violation of ICANN Policy ¶ 4(b)(iv).”

 

B. Respondent

 

In his Response, Respondent contends that he never received any of the Complainant’s “cease and desist” letters.  Respondent indicates, however, that he does not wish to contest further ownership of the <hiltonspa.com> domain name and “grant[s] permission for the Domain Name: <hiltonspa.com> to be transferred over to the Complainant.”

 

DISCUSSION

Given Respondent’s consent to the transfer of the domain name to Complainant, the Panel determines that it need not engage in a discussion of whether each of the elements of the applicable Policy has been satisfied and may, instead, simply order the transfer of the domain name to Complainant. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

In view of Respondent’s consent to transfer of the domain name in dispute, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hiltonspa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels, Panelist
Dated: August 18, 2008