Hilton Hospitality, Inc. v. Domain Admin c/o DA
Claim Number: FA0505000472178
Complainant is Hilton Hospitality, Inc. (“Complainant”), represented by Stephanie Mills, 755 Crossover Lane,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <hiltontorreypines.com>, registered with Onlinenic, 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 May 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 6, 2005.
On May 8, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hiltontorreypines.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 May 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 2005 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@hiltontorreypines.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2005, 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." 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 <hiltontorreypines.com> domain name is confusingly similar to Complainant’s HILTON mark.
2. Respondent does not have any rights or legitimate interests in the <hiltontorreypines.com> domain name.
3. Respondent registered and used the <hiltontorreypines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hilton Hospitality, Inc., develops, owns, and franchises more than 2,200 hotels, resorts and vacation ownership properties through the world. Complainant’s portfolio includes many of the world’s most famous hotel brands, including Hilton, Conrad Hilton, Doubletree, Embassy Suites Hotels, Hampton Inn, Hampton Inn & Suites, Hilton Garden Inn and Homewood Suites by Hilton.
As an integral part of its marketing and promotional efforts, Complainant operates websites devoted to its lodging and hospitality services at the <hilton.com>, <hiltonhotels.com> and <hiltonhonors.com> domain names. In some instances, Complainant has registered additional domain names that incorporate the names of individual HILTON properties, such as <hiltonhawaii.com> and <beverlyhilton.com>.
One of Complainant’s more popular properties is the Hilton
La Jolla Torrey Pines resort, located in
Since at least as early as 1925, Complainant has used the HILTON mark in connection with its hospitality services. Complainant has registered its HILTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 845,172 issued February 27, 1968; 2,478,190 issued August 14, 2001; 2,649,645 issued November 12, 2002).
Respondent registered the <hiltontorreypines.com> domain name on January 26, 2004. Respondent’s domain name resolves to a website that features adult-oriented content and links to various commercial adult-oriented websites.
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 HILTON mark through registration of the mark with the USPTO as well as through continuous use of the mark in commerce since 1925. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); see also Men’s Wearhouse, Inc. v. 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.”).
Respondent’s <hiltontorreypines.com>
domain name is confusingly similar to Complainant’s HILTON mark, as the domain
name incorporates the mark in its entirety and adds the geographic indicator
“torrey pines,” which is directly related to Complainant’s business. Additionally, Respondent’s domain name adds
the generic top-level domain “.com.”
Such minor changes are not enough to overcome a finding of confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); see also VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the
complainant’s mark); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to respond to the Complaint. Thus, the Panel may accept all reasonable allegations and assertions set forth by Complainant as true. 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); 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.”).
Complainant asserted that Respondent lacks rights and legitimate interests in the <hiltontorreypines.com> domain name, and Respondent, in failing to file a response, has failed to refute Complainant’s assertion. Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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 which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Respondent is using the <hiltontorreypines.com>
domain name, which is confusingly similar to Complainant’s HILTON mark, to
operate a website that features adult-oriented material and links to other
commercial adult-oriented websites. The
Panel infers that Respondent earns click-through fees for diverting Internet
users to these third-party websites. The
Panel finds that such use of the disputed domain name is not a use in
connection with a bona fide offering or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701
(Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its
domain name in order to divert Internet users to a website that offers search
engine services and links to adult orientated websites was not considered to be
in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use pursuant to Policy); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet
users to websites unrelated to the complainant’s mark, websites where the
respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy).
Additionally, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s HILTON mark. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the <hiltontorreypines.com> domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, the fact that Respondent is using the confusingly similar <hiltontorreypines.com> domain name to post adult-oriented material is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [the complainant’s mark]” was evidence that the respondent had no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent earns click-through fees
for diverting Internet users to third-party adult websites. Because Respondent’s <hiltontorreypines.com> domain name is confusingly similar to
Complainant’s HILTON mark, consumers accessing Respondent’s domain name may
become confused as to Complainant’s affiliation with the resulting
website. Thus, Respondent’s commercial
use of the disputed domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the Complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Qwest Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat.
Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the
misleading domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iv).”).
Furthermore, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the HILTON mark due to the international fame associated with the mark as well as to Complainant’s registration of the mark with the USPTO. Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Moreover, the fact that Respondent is using the <hiltontorreypines.com> domain
name, which is confusingly similar to Complainant’s HILTON mark, to post and
display adult-oriented material is further evidence that Respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002)
(holding that the respondent’s use of the complainant’s mark to post
pornographic photographs and to publicize hyperlinks to additional pornographic
websites evidenced bad faith use and registration of the domain name); see also Wells Fargo & Co. v. Party
Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hiltontorreypines.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 20, 2005
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