Dolce International Holdings, Inc. v. Purple Bucquet
Claim Number: FA 1358589
Complainant is Dolce International Holdings, Inc. (“Complainant”), represented by Wendy L. Robertson of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Tennessee, USA. Respondent is Purple Bucquet (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dolcehotel.com>, registered with Power Brand Center Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2010; the National Arbitration Forum received payment on November 16, 2010.
On November 16, 2010, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <dolcehotel.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dolcehotel.com. Also on November 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. Respondent’s <dolcehotel.com> domain name is confusingly similar to Complainant’s DOLCE mark.
2. Respondent does not have any rights or legitimate interests in the <dolcehotel.com> domain name.
3. Respondent registered and used the <dolcehotel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dolce International Holdings, Inc., offers hotel lodging and conference center services. These services are offered under the DOLCE mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,729,153 issued December 22, 2009).
Respondent, Purple Bucquet, registered the disputed domain name, <dolcehotel.com>, on June 13, 2010. The disputed domain name resolves to a website that provides links to competing providers of hotel services.
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.
Complainant alleges it has sufficient rights in the DOLCE mark under Policy ¶ 4(a)(i). Complainant has provided the marks USPTO registration (e.g., Reg. No. 3,729,153 issued December 22, 2009) as evidence of this allegation. Previous panels have found this evidence sufficient to establish the rights necessary under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore the Panel finds that Complainant has sufficient rights in the DOLCE mark pursuant to Policy ¶ 4(a)(i) to pursue this claim.
The Panel finds that Respondent’s domain name, <dolcehotel.com>, is confusingly similar to Complainant’s DOLCE mark. The disputed domain name has merely added a term that describes Complainant’s offerings under its DOLCE mark and a generic top-level domain (“gTLD”) to the mark. The term “hotel” describes Complainant’s offerings and provides no distinction of the domain name from Complainant’s mark. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also 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.”). Many previous panels have held that gTLDs such as “.com” also provide no distinctive value. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that the disputed domain name, <dolcehotel.com>, is confusingly similar to Complainant’s DOLCE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <dolcehotel.com> domain name. The burden shifts to Respondent to prove that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <dolcehotel.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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).
The Panel finds that Respondent is not commonly known by the <dolcehotel.com> domain name. The WHOIS information for the disputed domain name states that the domain name is registered to “Purple Bucquet.” As “Purple Bucquet” is not similar to <dolcehotel.com>, and Respondent has not provided any evidence that it is in fact commonly known by the disputed domain name, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Accordingly, the Panel finds this evidence to indicate Respondent lacks rights and legitimate interests according to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent has no bona fide offering of goods or services and no legitimate noncommercial or fair use associated with the <dolcehotel.com> domain name. The disputed domain name resolves to a links page that offers hyperlinks to other hotel service providers. Complainant’s competitors are included in these links. Such a use is 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); 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 accordingly.
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
The Panel finds Respondent’s disputed domain name causes a disruption of Complainant’s business. The links contained on Respondent’s website are links to other providers of hotel services. These providers are competitors of Complainant. Respondent is using a confusingly similar domain name to redirect Internet users seeking Complainant’s web presence to Complainant’s competitors. Such a use is a disrupting use 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)); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds this disruption to be an indication of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant further finds that Respondent is using a confusingly similar domain name to attract Internet users pursuant to Policy ¶ 4(b)(iv). Respondent has chosen to register the disputed domain name to create confusion regarding the association of the web page. The domain name is intended to confuse Internet users into believing that Respondent’s domain name is affiliated or sponsored by Complainant when it is in fact not. Respondent’s aim in creating this confusion is to attract Internet users to its domain name. The Panel presumes that Respondent benefits from the increased traffic by way of sponsored links or click-through fees. Respondent is using a confusingly similar domain name with the intent to confuse Internet users regarding the source of the website in order to turn a profit. This use evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
The Panel finds that Complainant has met the requirements of 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> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 27, 2010
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