Wyndham Hotels and Resorts, LLC v. Key Hotel Group Inc. c/o Rupesh Patel
Claim Number: FA0904001255806
Complainant is Wyndham Hotels and Resorts, LLC (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wyndhamreward.com>, registered with Register.com, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2009.
On April 6, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wyndhamreward.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 April 10,
A timely Response was received and determined to be complete on April 29, 2009.
On May 1, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant states that it is one of the largest hospitality companies in the world with nearly 7,000 hotels operating under numerous hotel brands. Since at least as early as 1982 the Complainant (itself, or through a related company, predecessor-in-interest or licensee) has used continuously in commerce the service mark “Wyndham,” as well as various other Wyndham-derivative marks, including “WYNDHAM REWARDS”. The latter is used in connection with Complainant’s loyalty program – claimed to be the largest in the lodging industry as measured by the number of participating hotels.
The Complainant is licensed to use the Wyndham Marks in the United States and is also the owner of a number of Community Trademark registrations (copies of the Certificate of Registrations provided as Exhibit C of the Complaint), including No. 005779591 “WYNDHAM REWARDS”.
Complainant argues that the disputed domain name is identical or confusingly similar to the WYNDHAM marks.
Complainant asserts that the Respondent has no rights or legitimate interests in <wyndhamreward.com>, as Respondent has not been authorized to use Complainant’s marks and has no trade mark rights in “Wyndham” or any derivatives there of . Nothing in the WHOIS record suggests that Respondent is commonly known by “Wyndham.”
The Complainant informs that Respondent is redirecting the domain name at issue to a web site of a competitor of the Complainant, therewith creating a false impression that Respondent’s website is somehow affiliated or sponsored by Complainant. The Complainant accuses the Respondent of using the disputed domain name solely to obtain referral fees from reservations made through the domain name and linked hotel site. This use does not constitute a bona fide offering of goods and services.
Further, when <wyndhamreward.com> is entered into a web browser, an initial screen appears containing the words “THIS DOMAIN IS FOR SALE”(Exhibit I of the complaint) on a green screen before the page resolves to the competing hotel site.
Finally, the complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith, referring to – among other – Respondent’s action in intentionally trying to divert Internet users to an alternative site, and that Respondent (giving the content of the site and the notoriety of the WYNDHAM mark) must have been aware of Complainant’s marks when registering <wyndhamreward.com>.
Respondent has not contested any of Complainant’s allegations, but only confirmed that it has shut down the web site and that any links, web site connections or redirections referring to the disputed domain name have been removed. Respondent asserts that it will not use the domain name as from April 30, 2009.
The Complainant is the owner of a Community
Trademark registration for “WYNDHAM REWARDS”, filed March 22, 2007, and several
other CTM Registrations including the WYNDHAM mark. Complainant is also licensed to use the Wyndham trademarks in the
Respondent registered the disputed domain name on May 17, 2007.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has established rights in the WYNDHAM trademark in the
Respondent’s domain name registration <wyndhamreward.com> is virtually identical with Complainant’s mark WYNDHAM REWARDS (just lacking the last “s”) and is confusingly similar to Complainant’s other WYNDHAM marks.
Furthermore, the addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s WYNDHAM REWARDS and other WYNDHAM trademarks. Policy ¶ 4(a)(i) has been satisfied.
It is an undisputed fact that the Respondent is not licensed or authorized by the Complainant to use the WYNDHAM or WYNDHAM REWARDS marks. Respondent has no trademark rights to WYNDHAM or WYNDHAM REWARDS nor is the Respondent commonly known by the disputed domain name.
The lack of rights or legitimate interests are further confirmed by the fact that the Respondent has advertised the domain name for sale, in combination with the Response that Respondent will not use the domain name as from April 30, 2009. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
As shown by the Complainant, the disputed domain name resolves to a third-party competitive hotel reservation website so that Respondent can benefit from affiliate referral fees. Accordingly, Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name, and finds for Complainant under Policy ¶ 4(a)(ii).
Complainant argues that Respondent knew or should have known (“actual or constructive knowledge”) of Complainant’s trademark WYNDHAM at the time of the registration of <wyndhamreward.com>, and therefore Respondent registered and used the domain name in bad faith. The Panel agrees in this assumption. It can be no coincidence that Respondent registered a domain name that is almost identical to the WYNDHAM REWARDS trademark. Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
A further evidence of Respondent’s knowledge of Complainant’s trademarks is the fact that the disputed domain name is being used to advertise a third-party competitive hotel reservation website. The Panel finds it obvious that Respondent has intentionally created a likelihood of confusion as to Complainant’s affiliation or endorsement of the disputed domain name for commercial gain via affiliate fees.
Finally, Respondent’s online offer to sell the domain name indicates that an intention of registering <wyndhamreward.com> has been to sell it to the Complainant for a presumed amount exceeding Respondent’s out-of-pocket costs directly related to the registration of the same. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
The Panel concludes that Respondent registered and has been using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wyndhamreward.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 14, 2009
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