HLT Domestic IP LLC v. Traverito Traverito
Claim Number: FA0807001214880
Complainant is HLT Domestic IP LLC (“Complainant”), represented by Holly
S. Hawkins, of Alston & Bird LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doubletreeresorts.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
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 14, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <doubletreeresorts.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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").
17, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 6, 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 email@example.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 12, 2008, 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 global leader in the hospitality industry achieved by owning, managing, or franchising nearly 2,800 hotels in more than 80 countries.
The DOUBLETREE mark represents one of Complainant’s largest brands and has been in use since as early as 1968.
Complainant has registered the DOUBLETREE service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,094,809, issued June 27, 1978).
In addition, Complainant has used the website that resolves from the <doubletree.com> domain name to allow customers to book reservations at Complainant’s properties.
Respondent is not authorized to use the DOUBLETREE mark, and Respondent is not affiliated with Complainant in any way.
Respondent registered the <doubletreeresorts.com> domain name on October 27, 2003.
The disputed domain name resolves to a website that contains various hyperlinks to third-party websites, some of which allow Internet users to book reservations at Complainant’s various properties.
Respondent’s <doubletreeresorts.com> domain name is confusingly similar to Complainant’s DOUBLETREE mark.
Respondent does not have any rights or legitimate interests in the domain name <doubletreeresorts.com>.
Respondent registered and uses the <doubletreeresorts.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 service mark in which Complainant has rights; and
(2) Respondent has no to 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.
Because Complainant holds a registration of the DOUBLETREE mark with the USPTO, Complainant has sufficiently established rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
domain name contains Complainant’s entire mark, and merely adds the generic
term “resorts” and the generic top-level domain (gtld) “.com”). The addition of the generic term “resorts” does
not distinguish the disputed domain name from Complainant’s mark for purposes
of an analysis of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
Moreover, the addition of a top-level domain is wholly irrelevant under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Initially, Complainant must present a prima facie showing that Respondent lacks rights and legitimate interests in the <doubletreeresorts.com> domain name. Once this is done, the burden shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
On the evidence presented, Complainant has made out a prima facie showing under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the Complaint. We are therefore entitled to conclude that Respondent has no rights to or interests in the disputed domain name cognizable under the Policy. 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).
Nonetheless, we will examine the available evidence to determine if there is any basis in the record for concluding that Respondent has such rights or interests.
We begin by noting that there is no dispute that the disputed domain name resolves to a website that contains hyperlinks to several third-party websites that offer similar services to that of Complainant’s website. We may infer from this that Respondent receives click-through fees for these hyperlinks. This use of the disputed domain name be Respondent does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Next we observe that there is no evidence before us, including the pertinent WHOIS information, to suggest that Respondent is commonly known by the domain name <doubletreeresorts.com>. Indeed Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the DOUBLETREE mark and that Respondent is not affiliated with Complainant in any way. For these reasons, we conclude that Respondent is not commonly known by the <doubletreeresorts.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003): “Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.” See also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Because, as has been noted above, we may presume that Respondent receives click-through fees for displaying hyperlinks to various third-party websites, its use of the confusingly similar <doubletreeresorts.com> domain name for commercial gain as described constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's competing mark where a domain name resolves to commercial websites, and the respondent fails to contest the complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <doubletreeresorts.com> domain name with at least constructive knowledge of Complainant’s rights in the DOUBLETREE service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel therefore 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 <doubletreeresorts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 25, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum