Wyndham
International, Inc. v. Golden Door Designs
Claim
Number: FA0302000146932
Complainant is
Wyndham International, Inc., Dallas, TX (“Complainant”) represented
by Christine L. Lofgren of Jeffer, Mangels, Butler & Marmaro LLP.
Respondent is Golden Door Designs, Laguna Beach, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <goldendoordesigns.com>, registered with Network
Solutions, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
el ectronically on February 26, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 2, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <goldendoordesigns.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has 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
March 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 24, 2003 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@goldendoordesigns.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <goldendoordesigns.com>
domain name is confusingly similar to Complainant’s GOLDEN DOOR mark.
2. Respondent does not have any rights or
legitimate interests in the <goldendoordesigns.com> domain name.
3. Respondent registered and used the <goldendoordesigns.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the GOLDEN DOOR mark since 1958 in relation to its famous resort and
spa. Complainant’s spa has come to
symbolize to the public the utmost in excellence and luxury among international
resorts and spas. Complainant’s spa was
rated the #1 Spa in America by Zagat U.S. Hotel, Resort and Spa Guide
every year since the survey began in 1988.
Complainant’s spa features several yoga programs, and brings premier
yoga instructors to its facility for its guests.
Complainant
holds numerous registrations for the mark with the United States Patent and
Trademark Office, including Registration Numbers 862,884; 819,245; and
943,405. Complainant also holds the
registration for <goldendoor.com>, and has used the domain name since
1997.
Respondent
registered the <goldendoordesigns.com> domain name on August 15,
2001. Respondent is using the domain
name to provide links to various businesses on the Internet, including three
yoga websites. Respondent’s domicile,
Laguna Beach, California is only 60 miles from the location of Complainant’s
spa in Escondido, California.
Respondent does not have permission from Complainant to use the GOLDEN
DOOR mark.
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.
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
has established that it has rights in the GOLDEN DOOR mark through continuous
use in commerce as the name of its famous spa and through its registration with
the United States and Patent Office.
Respondent’s
<goldendoordesigns.com> domain name is confusingly similar to
Complainant’s mark because it incorporates Complainant’s entire mark and merely
adds the descriptive term “designs.”
The addition of a generic or descriptive term to a famous mark does not
create any distinctive characteristics capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of
Complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with Complainant; Respondent is attracting Internet users to
a website, for commercial gain, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, or endorsement of
Respondent’s website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the <goldendoordesigns.com> domain name for a website that
features links to various yoga websites and other businesses. Since Complainant’s GOLDEN DOOR spa features
yoga and yoga instruction, the services advertised on Respondent’s website
compete with Complainant’s services.
The use of a confusingly similar domain name to offer competing services
is not 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 N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks).
Based on the
fame of Complainant’s GOLDEN DOOR mark, Respondent would be hard-pressed to
establish that it is commonly known as GOLDEN DOOR DESIGNS or <goldendoordesigns.com>. Respondent has failed to come forward with
any evidence; thus, the Panel finds that Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied for
a license or permission from Complainant to use the trademarked name).
Accordingly, the
Panel finds that Policy 4(a)(ii) has been satisfied.
Respondent’s
domicile is very close to Complainant’s famous spa. Furthermore, Complainant’s GOLDEN DOOR mark is famous in the spa
industry. Thus, Respondent should have
been on notice of Complainant’s GOLDEN DOOR mark when it registered <goldendoordesigns.com>. Registration of a domain name despite actual
or constructive knowledge of Complainant’s rights is evidence of bad faith
registration pursuant to Policy ¶ 4(a)(iii).
See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Respondent is
using the disputed domain name to attract Internet users interested in
Complainant to its own website featuring links to businesses. The Panel infers that Respondent is making a
profit from the Internet traffic diverted to the links featured on Respondent’s
website. This type of behavior is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)
because Respondent is using a domain name confusingly similar to Complainant’s
mark for its own commercial gain. See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <goldendoordesigns.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 2, 2003
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