Starwood Capital Group Global, LLC v. Domain Asset Holdings
Claim Number: FA1102001370642
Complainant is Starwood Capital Group Global, LLC (“Complainant”), represented by Casimir W. Cook II of Roylance, Abrams, Berdo & Goodman, L.L.P., Washington D.C., USA. Respondent is Domain Asset Holdings (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royaltulip.com>, registered with Tierranet Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 1, 2011.
On February 3, 2011, Tierranet Inc. confirmed by e-mail to the National Arbitration Forum that the <royaltulip.com> domain name is registered with Tierranet Inc. and that Respondent is the current registrant of the name. Tierranet Inc. has verified that Respondent is bound by the Tierranet Inc. 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 February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@royaltulip.com. Also on February 4, 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 March 3, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <royaltulip.com> domain name is identical to Complainant’s ROYAL TULIP mark.
2. Respondent does not have any rights or legitimate interests in the <royaltulip.com> domain name.
3. Respondent registered and used the <royaltulip.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Starwood Capital Group Global, LLC, is the owner of the ROYAL TULIP mark, which it uses in connection with a wide array of real estate products and services, including but not limited to hotel, hospitality, food and beverage, travel, real estate, building, construction, energy, finance and investment related fields. Complainant owns multiple trademark registrations for its ROYAL TULIP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,576,304 filed November 10, 2006; issued February 17, 2009).
Respondent, Domain Asset Holdings, registered the disputed domain name on January 18, 2006. The disputed domain name resolves to a website displaying third-party pay-per-click links unrelated to Complainant.
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 asserts rights in its ROYAL TULIP mark based on its registration of the mark with the USPTO (e.g., Reg. No. 3,576,304 filed November 10, 2006; issued February 17, 2009). The Panel finds that Complainant’s trademark registration sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), dating back to the filing date of November 10, 2006. 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also asserts common law rights in the ROYAL TULIP mark. Complainant’s only evidence of common law rights is its registration of multiple domain names containing the ROYAL TULIP mark that Complainant uses in connection with the advertisement and promotion of its business. Complainant submits evidence of its registration of the <royaltuliphotels.com> domain name on September 19, 2006, the <royaltulipalmaty.com> domain name on November 18, 2008, the <royaltulipeilat.com> domain name on April 22, 2008, and the <royaltulipbrasiliaalvorada.com> domain name on June 12, 2009. The Panel finds that Complainant’s registration of these domain names, three of which are after Complainant’s trademark registration filing date, fails to establish common law rights in the ROYAL TULIP mark for the purposes of Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
Complainant argues that Respondent’s <royaltulip.com> domain name is identical to Complainant’s ROYAL TULIP mark. The Panel agrees and finds that the removal of the space between the terms of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) do not distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden will shift to Respondent. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has satisfied its initial burden. Respondent’s failure to respond to these proceedings not only amounts to a failure to uphold its burden but may also be construed by the Panel as an admission of the allegations contained in the Complaint. See 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). Although the presumption that Respondent lacks rights and legitimate interests is a valid one under the Policy, the Panel elects to consider the evidence on record to make a complete determination as to whether Respondent has any rights or legitimate interests in connection with Policy ¶ 4(c).
Complainant alleges that Respondent is not, and was not, known by the disputed domain name. Complainant further alleges that Respondent is not now, nor has ever been, a licensee or otherwise authorized by Complainant to acquire, appropriate, or use any ROYAL TULIP mark, including in the disputed domain name. The WHOIS information indicates that the registrant is “Domain Asset Holdings,” which the Panel finds is not similar to the disputed domain name. Thus, based on Complainant’s allegations and the information contained in the WHOIS record, the Panel concludes that Respondent is not, and has never been, commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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).
Complainant submits evidence that Respondent’s <royaltulip.com> domain name resolves to a website featuring pay-per-click links to third-party websites unrelated to Complainant. The screenshots provided by Complainant display links such as “Online Banking,” “Well Fargo Bank,” “Chase Bank,” and “Internet Banking.” The Panel finds that Respondent’s appropriation of Complainant’s ROYAL TULIP mark in the disputed domain name to host a pay-per-click links site featuring unrelated links to third-parties in the banking industry 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 Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
Complainant asserts that Respondent is attempting to sell the disputed domain name for $30,000. Complainant submits a screenshot of Respondent’s resolving website which states at the top: “The domain name royaltulip.com is for sale.” Complainant indicates that Respondent, through its authorized agent, offered to sell the disputed domain name to Complainant for a price of $30,000. Complainant states that it contacted Respondent regarding Respondent’s infringing activities whereby Respondent, again through its authorized agent, modified the resolving website and posted an offer to sell the domain name to anyone for the price of $30,000. The Panel wholly accepts Complainant’s assertion that the amount requested by Respondent is in excess of Respondent’s out-of-pocket expenses associated with the disputed domain name. Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent registered the disputed domain name on January 18, 2006, nearly eleven months prior to Complainant’s filing of its trademark registration with the USPTO. Respondent’s registration of the disputed domain name before Complainant’s acquisition of rights in its ROYAL TULIP mark prevent this Panel from finding bad faith registration pursuant to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
The Panel finds that Policy ¶ 4(a)(iii) is not satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <royaltulip.com> domain name REMAIN WITH Respondent.
Judge Harold Kalina (Ret.), Panelist
Dated: March 10, 2011
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