Dolce International Holdings, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0909001286083
Complainant is Dolce
International Holdings, Inc. (“Complainant”), represented by Wendy L. Robertson, of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dolcehotel.com> and <dolcehotels.com>, registered with Above, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 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@dolcehotel.com and postmaster@dolcehotels.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dolcehotel.com> and <dolcehotels.com> domain names are confusingly similar to Complainant’s DOLCE INTERNATIONAL mark.
2. Respondent does not have any rights or legitimate interests in the <dolcehotel.com> and <dolcehotels.com> domain names.
3. Respondent registered and used the <dolcehotel.com> and <dolcehotels.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dolce International Holdings, Inc., has offered
hotel and lodging services under the DOLCE INTERNATIONAL mark since at least as
early as 1993. Correspondingly,
Complainant is the owner of the DOLCE INTERNATIONAL mark, which is registered
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,094,545
issued September 9, 1997). Complainant
contends that it also has several pending trademark applications for similar
marks incorporating “dolce” with the USPTO and other countries around the world. Complainant owns and operates twenty-four
hotels across the
Respondent, Transure Enterprise Ltd c/o Host Master,
registered the <dolcehotel.com> and <dolcehotels.com> domain names on
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 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 that 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 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.
Respondent, Transure Enterprise Ltd c/o Host Master,
registered the <dolcehotel.com> and <dolcehotels.com> domain names on
Respondent’s disputed domain names each incorporate the
distinctive portion of Complainant’s DOLCE INTERNATIONAL mark, namely, “DOLCE,”
with the addition of the descriptive terms “hotel” or “hotels” and the
affixation of the generic top-level domain “.com.” The Panel notes that the descriptive terms
“hotel” and “hotels” have an obvious relationship to Complainant’s hotel and
resort business and therefore, do not reduce the confusing similarities between
the disputed domain names and Complainant’s mark. Thus, the Panel finds that Respondent’s
disputed domain names are confusingly similar to Complainant’s DOLCE
INTERNATIONAL mark under Policy ¶ 4(a)(i).
See Marriott Int’l, Inc. v. Café
au lait, FA 93670, (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights
or legitimate interests in the disputed domain names. Once Complainant
presents a prima facie case outlining these allegations, the burden
shifts to Respondent to establish it does have rights or legitimate interests
in the disputed domain names. The Panel finds that Complainant has
presented a sufficient prima facie case to support its allegations and
that Respondent has failed to submit a response in this proceeding.
Therefore, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). However, the Panel will inspect the record and determine
whether Respondent has rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
The disputed domain names each resolve to a website featuring sponsored click-through links that further resolve to the websites of Complainant’s competitors in the hotel and conference center industry. The Panel presumes that Respondent is earning click-through fees for each Internet user that is redirected to the sponsored websites. Thus, the Panel concludes that Respondent’s use of the <dolcehotel.com> and <dolcehotels.com> domain names is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Moreover, Complainant contends that Respondent is not commonly known by either the <dolcehotel.com> or <dolcehotels.com> domain names pursuant to Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant as “Transure Enterprise Ltd c/o Host Master” and the Panel has no other information to rely upon in the record with respect to this element of the Policy. Therefore, the Panel finds that Respondent is not commonly known by either the <dolcehotel.com> or <dolcehotels.com> domain names 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).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
The sponsored click-through links appearing on the websites resolving from the <dolcehotel.com> and <dolcehotels.com> domain names, which were registered on March 27, 2009 and March 30, 2009, respectively, promote hotel and resort businesses that compete with Complainant. The Panel finds that this use disrupts Complainant’s business and is evidence of bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iii). See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar disputed domain names by creating a likelihood of confusion with Complainant’s DOLCE INTERNATIONAL mark. The websites resolving from the disputed domain names each contain click-through links that further resolve to the websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use through the accrual of click-through fees. Thus, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has satisfied 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 <dolcehotel.com> and <dolcehotels.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 6, 2009
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