Claim Number: FA0901001245347
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotelzazadallas.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 30, 2009; the National Arbitration Forum received a hard copy of the Complaint February 2, 2009.
On January 30, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <hotelzazadallas.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and thereby has 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 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2009, 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@hotelzazadallas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <hotelzazadallas.com>, is confusingly similar to Complainant’s HOTEL ZAZA mark.
2. Respondent has no rights to or legitimate interests in the <hotelzazadallas.com> domain name.
3. Respondent registered and used the <hotelzazadallas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fontana Investors, LLC, offers hotel,
restaurant, and related services under the HOTEL ZAZA mark, which was
registered with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,778,590 issued October 28, 2003).
Complainant’s operations center in the geographical areas of Houston and
Respondent registered the <hotelzazadallas.com> domain name March 20, 2006. The disputed domain name resolves to a pay-per-click website that features third-party links for numerous third-parties, including Complainant’s competitors.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in the
HOTEL ZAZA mark through registration of the mark with the USPTO pursuant to
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.”); see also 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.”).
The Panel finds that Respondent’s
disputed <hotelzazadallas.com>
domain name is confusingly similar to Complainant’s HOTEL ZAZA mark pursuant to
Policy ¶ 4(a)(i), irrespective of the additions of the generic top-level domain
“.com” and the descriptive geographic term “dallas.” Ordinarily, geographic terms are considered
as inadequate to differentiate a domain name due to their ability to present an
inference of a connection between Complainant and the domain name in that area. In this case, the connection is real, clear,
and thus confusing. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also BPM Prods., Inc. v. Bog, FA 125814 (Nat.
Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant met its burden of setting
forth a prima facie case that
supports its allegations that Respondent lacks rights and legitimate interests
in the disputed domain name. Therefore, the burden shifts to Respondent to
demonstrate that it does have rights to or legitimate interests in the disputed
domain name. See Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie
showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is
quite low, since it is difficult to produce evidence to support a negative
statement. Here, Complainant has alleged
that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and
that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse,
are sufficient to make a prima facie showing in regard to the legitimacy
element.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
Respondent did not file a Response and has not supplied any evidence to show that it is commonly known by the disputed domain name. Respondent is listed under the WHOIS information as “Belize Domain WHOIS Service Lt.” Moreover, the evidence shows no alleged license or permission to Respondent to use Complainant’s mark in any fashion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website that displays numerous third-party advertisements for Complainant’s competitors. The Panel finds that Respondent’s presumed receipt of “click-through” referral fees demonstrates further that Respondent has failed to create 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed
domain name corresponds with a website that advertises Complainant’s
competitors with click-through links.
The Panel finds this use indicates that Respondent primarily intended to
disrupt Complainant’s business, which is evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii). See David
Respondent is presumably benefiting from the placement of
these third-party links through the receipt of referral fees. Therefore, the Panel finds that Respondent is
attempting to profit from the confusingly similar disputed domain name and that
the domain name has created a likelihood of confusion as to Complainant’s
source or affiliation with the disputed domain name and corresponding website. This also supports findings of Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Asbury Auto. Group, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotelzazadallas.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 2, 2009.
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