Radisson Hotels International, Inc. v. Hen You Qian
Claim Number: FA0905001263366
Complainant is Radisson Hotels International, Inc. (“Complainant”), represented by Elizabeth
C. Buckingham, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <radissonhotel.com> and <radisonhotels.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she 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 May 15, 2009; the National Arbitration Forum received a hard copy of the Complaint May 18, 2009.
On May 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <radissonhotel.com> and <radisonhotels.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and 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 May
28, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 17, 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@radissonhotel.com and postmaster@radisonhotels.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <radissonhotel.com> and <radisonhotels.com>, are confusingly similar to Complainant’s RADISSON mark.
2. Respondent has no rights to or legitimate interests in the <radissonhotel.com> and <radisonhotels.com> domain names.
3. Respondent registered and used the <radissonhotel.com> and <radisonhotels.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a hotel company that operates over 400 hotels in over sixty-five countries around the world, and has operated hotels under the RADISSON mark since at least as early as 1909. Complainant registered the RADISSON mark with the United States Patent and Trademark Office (“USPTO”) on September 21, 1971 (Reg. No. 920,862).
Respondent registered the <radissonhotel.com> domain name on February 14, 2001. Respondent registered the <radisonhotels.com> domain name on May 15, 2001. The disputed domain names resolve to websites that contain links to third-party websites containing hyperlinks, some of which connect Internet users to sub-pages directing them to Complainant’s direct 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
RADISSON mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
Complainant contends that
Respondent’s <radissonhotel.com>
domain name is confusingly similar to Complainant’s RADISSON
mark. The <radissonhotel.com> domain name differs from Complainant’s mark in two ways:
(1) the term “hotel,” which is descriptive of Complainant’s business, has been
added to the end of the mark; and (2) the generic top-level domain (gTLD)
“.com” has been added to the mark. The
Panel finds that adding a descriptive term does not sufficiently distinguish a
domain name from that mark for the purposes of Policy ¶ 4(a)(i). See Kohler Co. v. Curley,
FA 890812 (Nat. Arb.
Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Am. Online, Inc. v.
Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the
addition of the descriptive term “talk” to a registered mark does not
sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).
The Panel also finds that the addition of a gTLD is
inconsequential when considering whether a domain name is confusingly similar
to a mark. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . ."). Therefore,
the Panel finds that despite these changes, the <radissonhotel.com> domain name is not sufficiently distinguished from
Complainant’s RADISSON mark, and that Respondent’s
<radissonhotel.com> domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).
Complainant contends that
Respondent’s <radisonhotels.com>
domain name is also confusingly similar to
Complainant’s RADISSON mark. The <radisonhotels.com>
domain name differs from Complainant’s
mark in three ways: (1) one letter “S” has been removed from the mark; (2) the
descriptive term “hotels” has been added to the end of the mark; and (3) the
generic top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that removing a single letter
“S” from a mark does not sufficiently distinguish a domain name from that mark
for the purposes of Policy ¶ 4(a)(i), nor does adding
a descriptive term. See Am. Airlines, Inc. v. Data Art
Corp., FA 94908
(Nat. Arb. Forum July
11, 2000) (finding <americanairline.com> "effectively identical and
certainly confusingly similar" to the complainant's AMERICAN AIRLINES
registered marks); see also Allianz
of Am. Corp. v. Bond, FA 680624 (Nat.
Arb. Forum June 2, 2006) (finding that the addition of the generic term
“finance,” which described the complainant’s financial services business, as
well as a gTLD, did not sufficiently distinguish the respondent’s disputed
domain name from the complainant’s mark under Policy ¶ 4(a)(i)). As above, the Panel also finds that the addition of a gTLD
is inconsequential when considering whether a domain name is confusingly
similar to a mark. See Rollerblade, Inc.
v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of
the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that despite these changes, the <radisonhotels.com>domain name is not sufficiently distinguished from
Complainant’s RADISSON mark, and Respondent’s <radisonhotels.com> domain name also is confusingly similar to Complainant’s
mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the disputed
domain names and that it has never been the owner or licensee of the
RADISSON mark. The WHOIS record for the
disputed domain names lists Respondent as “Hen
You Qian.” Because Respondent
failed to show any evidence that Respondent has ever been commonly known by the
disputed domain names, or by any other variant on the RADISSON mark, the Panel
finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain names to host a website that features links to third-party websites that offer hotel and hospitality services similar to those offered by Complainant. Complainant contends that Respondent receives “click-through” fees from those third-party websites, and therefore is commercially benefitting from the use of the disputed domain names. Past Panels have found that featuring links to competing websites for the purposes of commercial gain is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). In accord with the findings of past panels, this Panel finds that this use by Respondent of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The disputed domain names direct Internet customers to
Respondent’s websites that resolve from the disputed domain names, where they
are further directed to third-party websites that offer services in the same market
as Complainant. The Panel finds that
Respondent is disrupting Complainant’s business, and, therefore that
Respondent’s registration and use of the disputed domain names is in bad faith
pursuant to Policy ¶ 4(b)(iii). See Persohn v.
Lim, FA 874447 (Nat. Arb. Forum Feb.
19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is gaining
commercially from this diversion, through the receipt of click-through fees from
the third-party websites. In the Panel’s
judgment, Respondent is intentionally using the disputed domain names for
commercial gain by creating a likelihood of confusion with Complainant’s
mark. Pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use is also evidence of
Respondent’s registration and use of the disputed domain names in bad faith.
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 <radissonhotel.com> and <radisonhotels.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 1, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum