national arbitration forum

 

DECISION

 

Radisson Hotels International, Inc. v. Shih Chang

Claim Number: FA1101001367413

 

PARTIES

Complainant is Radisson Hotels International, Inc. (“Complainant”), represented by Travis Bachman, Minnesota, USA.  Respondent is Shih Chang (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bleuradisson.com>, registered with Melbourne IT, Ltd. D/B/A Internet Names Worldwide.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2011; the National Arbitration Forum received payment on January 13, 2011.

 

On January 16, 2011, Melbourne IT, Ltd. D/B/A Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bleuradisson.com> domain name is registered with Melbourne IT, Ltd. D/B/A Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne IT, Ltd. D/B/A Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. D/B/A Internet Names Worldwide 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 January 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 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@bleuradisson.com.  Also on January 24, 2011, 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 February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <bleuradisson.com> domain name is confusingly similar to Complainant’s RADISSON mark.

 

2.    Respondent does not have any rights or legitimate interests in the <bleuradisson.com> domain name.

 

3.    Respondent registered and used the <bleuradisson.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Radisson Hotels International, Inc., is a large global provider of lodging services.  Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 920,862 issued September 21, 1971) for its RADISSON mark.  Complainant uses its mark to support its hotel business.

 

Respondent, Shih Chang, registered its <bleuradisson.com> domain name on October 14, 2010.  Respondent’s disputed domain name resolves to a site that advertises a fictitious hotel.  Respondent presumably does this to impersonate Complainant. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in its mark by registering it with a federal trademark authority, the USPTO (e.g., Reg. No. 920,862 issued September 21, 1971).  Previous panels have found that registration of a mark with a federal trademark authority provides affirmative evidence of the registrant’s affirmative rights in the mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).  Thus, the Panel finds that Complainant has established its rights in its RADISSON mark under Policy ¶ 4(a)(i) via registration with a federal trademark authority.

 

Complainant also asserts that Respondent’s disputed domain name is confusingly similar to its own RADISSON mark.  The <bleuradisson.com> domain name includes Complainant’s entire mark while adding the generic term “bleu” and the generic top-level domain (“gTLD”) “.com” to the mark.  The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s mark by adding a generic term and a gTLD.  See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)) ; see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel finds that Respondent’s <bleuradisson.com> domain name is confusingly similar to Complainant’s RADISSON mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its burden of proof by making a prima facie case indication Respondent’s lack of rights or legitimate interests in the disputed domain name.  Previous panels have found that once a Complainant has made its prima facie case the burden then shifts to Respondent to prove that it has rights of legitimate interests in a disputed domain name.  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)).  Respondent’s failure to offer an answer to the complaint allows the Panel to assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nonetheless, the Panel will still examine the entire record to determine if Respondent does in fact retain rights or legitimate interests in its <bleuradisson.com> domain name according to the factors enumerated in Policy ¶ 4(c). 

 

Complainant contends that Respondent is not commonly known by its <bleuradisson.com> domain name.  Respondent has offered no evidence to show that it is commonly known by the disputed domain name.  The WHOIS information identifies Respondent as “Shih Chang,” which Complainant contends is not similar to the <bleuradisson.com> domain name.  The Panel finds, based upon the evidence in the record, that Respondent is not commonly known by its disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <bleuradisson.com> domain name.  Respondent’s disputed domain name resolves to a site for a fictitious hotel.  It is unclear as to Respondent’s motive behind the site; however, Complainant contends that Respondent is attempting to impersonate it through its site.  Previous panels have found that a respondent’s attempt to pass itself off as a complainant is not a bona fide offering  of goods or services or a legitimate noncommercial or fair use of a disputed domain name.  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).  Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <bleuradisson.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. 

 

The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a site that offers what appear to be hotels services similar to Complainant’s own services.  The Panel infers that Respondent is profiting from this site in some way.  Given that inference, the Panel finds that Respondent’s use of the <bleuradisson.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv) due to the presumed commercial gain Respondent realizes from the site.  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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Complainant contends that Respondent’s use of the <bleuradisson.com> domain name constitutes bad faith use and registration based upon Respondent attempts to pass itself off as Complainant. Complainant also contends that Respondent may be using the site in this manner to obtain personal information from Internet users that are diverted there while seeking out Complainant.  Previous panels have held that similar uses constitute bad faith registration and use under Policy ¶ 4(a)(iii).  See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients.  Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).  Therefore, the Panel finds that Respondent has registered and used the disputed domain in bad faith according to Policy ¶ 4(a)(iii).

 

The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bleuradisson.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  February 24, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page