Wyndham Corporation v. Domain Administrator
Claim Number: FA0306000162046
Complainant is Wyndham IP Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wyndhamresorts.com>, registered with Bulkregister.Com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 6, 2003; the Forum received a hard copy of the Complaint on June 6, 2003.
On June 6, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <wyndhamresorts.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, 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 June 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 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@wyndhamresorts.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 July 8, 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 <wyndhamresorts.com> domain name is confusingly similar to Complainant’s family of marks.
2. Respondent does not have any rights or legitimate interests in the <wyndhamresorts.com> domain name.
3. Respondent registered and used the <wyndhamresorts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds numerous trademark registrations on the Principal Register for the WYNDHAM family of marks including U.S. Patent and Trademark Reg. No. 1,442,514 for the WYNDHAM mark, registered on February 21, 1995, Reg. No. 2,096,650 for the WYNDHAM HOTEL & RESORTS mark, registered on September 16, 1997 and Reg. No. 2,444,235 for the WYNDHAM LUXURY RESORTS mark, registered on April 17, 2001.
Complainant first used the WYNDHAM mark in 1982. Since then, Complainant has been using the WYNDHAM family of marks in connection with its hotel and resort services.
On May 8, 2002, Respondent registered the <wyndhamresorts.com> domain name. When an Internet user types in the <wyndhamresorts.com> domain name the user is linked to a website located at the <topbill.com> domain name. The website hosted at the <topbill.com> domain name displays numerous links to websites associated with gambling and pornography. While at this website, Internet users are also subjected to various pop-up advertisements.
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 rights in the WYNDHAM, WYNDHAM HOTELS & RESORTS and WYNDHAM LUXURY RESORTS marks through continuous use in commerce and registration with the U.S. Patent and Trademark Office. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).
Respondent’s <wyndhamresorts.com>
domain name is confusingly similar to Complainant’s family of marks. Respondent adds the descriptive word “resort”
to Complainant’s entire WYNDHAM mark resulting in the disputed domain name. Since the WYNDHAM mark is the dominant
feature in the <wyndhamresorts.com>
domain name and Complainant uses its mark in connection with its resort
services, it is likely that the disputed domain name leads consumers to believe
the services provided at Respondent’s domain name are associated with
Complainant. Thus, the Panel finds that
the disputed domain name is confusingly similar to Complainant’s family of
marks under Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670,
(Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to submit a Response in this proceeding. Since Respondent did not submit a Response, the Panel is free to make reasonable inferences. Furthermore, Respondent failed to show any circumstances under which it could have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
There is no evidence showing that Respondent is commonly known by the <wyndhamresorts.com> domain name. The WHOIS contact information and the distinct, nonsensical character of Complainant’s WYNDHAM mark supports the Panel’s reasonable inference that Respondent is not commonly known as the disputed domain name. 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 Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).
Respondent is using Complainant’s family of marks in the <wyndhamresorts.com> domain name as a vehicle to draw Internet users to a website located at the <topbill.com> domain name. Respondent’s use of the disputed domain name is tarnishing Complainant’s family of marks by linking Internet users to a website that subject them to numerous pop-up advertisements and provides links to various other websites, some of which offer access to gambling and sexually explicit material. Thus, the Panel finds that Respondent’s use of the disputed doman name does not constitute a bona fide offering or goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4 (c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is trying to attract Internet users to the <wyndhamresorts.com> domain name by using Complainant’s entire mark and then adding the word “resorts,” which describes a service offered by Complainant. When Internet users type in the <wyndhamresorts.com> domain name in hopes of finding information regarding Complainant’s resorts, the user is instead linked to a website completely unrelated to Complainant. The website at the disputed domain name subjects users to numerous pop-up advertisements and provides them with links to various pornographic and gambling sites. Thus, Respondent is creating a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s domain name. The Panel reasonably infers that Respondent is commercially benefiting from its unauthorized use of Complainant’s family of marks. Therefore, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 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 Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).
Furthermore, since the list of factors under Policy ¶ 4(b) are not exclusive the Panel may find bad faith based on the totality of the cicumstances. Due to the uniqueness of Complainant’s family of marks combined with Respondent’s use of the disputed domain name to divert Internet users and the lack of evidence presented by Respondent, the Panel reasonably infers that Respondent registered and used the <wyndhamresorts.com> domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).
Accordingly, 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 <wyndhamresorts.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr. Panelist
Dated: July 21, 2003
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