Hilton Hospitality, Inc. v. Turvill
Consultants
Claim
Number: FA0506000499190
Complainant is Hilton Hospitality,
Inc. (“Complainant”), represented by Andrew
J. Wilson, of Alston & Bird LLP, 1201 West Peachtree Street, Atlanta,
GA, 30309-3424. Respondent is Turvill Consultants (“Respondent”), 265
Port Union Road, 15525 Scarborough, Ontario, CA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com>, registered with Moniker Online
Services, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 17, 2005.
On
June 18, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain names <hiltonminneapolis.com>,
<hiltonniagara.com>, and <keywesthilton.com> are
registered with Moniker Online Services, Inc. and that Respondent is the current
registrant of the names. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online
Services, 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 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 11, 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@hiltonminneapolis.com, postmaster@hiltonniagara.com,
and postmaster@keywesthilton.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
July 14, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hiltonminneapolis.com>,
<hiltonniagara.com>, and <keywesthilton.com> domain
names are confusingly similar to Complainant’s HILTON mark.
2. Respondent does not have any rights or
legitimate interests in the <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names.
3. Respondent registered and used the <hiltonminneapolis.com>,
<hiltonniagara.com>, and <keywesthilton.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Hilton Hospitality, Inc., develops, owns, manages, and/or franchises more than
2,259 hotels, resorts, and vacation ownership properties throughout the
world. Hilton has been recognized as a
preeminent lodging and hospitality provider, generating $463.8 million in
revenue in 2004.
Since its
inception in 1925, Complainant has registered numerous trademarks worldwide in
connection with their hospitality services.
Complainant holds a registration with the United States Patent and
Trademark Office (“USPTO”) for the HILTON mark (Reg. No. 845,172 issued
February 27, 1968, renewed February 27, 1988).
Respondent
registered the <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names on February 21, 2004. Each of Respondent’s three domain names
resolves to a website featuring information and pictures regarding the
particular Hilton Hotel present within the corresponding city. In addition, the site features a link
allowing the consumer to “check rates and availability” whereby the link
connects the user to a competitor’s website offering booking services for
lodging at the particular Hilton Hotel.
The site also includes various unrelated commercial links.
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 has
provided evidence of established rights in the HILTON mark through its
registration with the USPTO. Evidence
of trademark registration creates a prima facie case for the
Complainant, shifting the burden onto Respondent to rebut such an
assumption. Because Respondent has
failed to set forth evidence suggesting otherwise, Complainant has established
rights in the HILTON mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting
this assumption); 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 [or] have acquired
secondary meaning”).
Complainant
argues that Respondent’s <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names are confusingly similar to
Complainant’s HILTON mark. Each domain
name incorporates the entire registered HILTON mark with the addition of a
geographic term. Such distinctions have
been ruled insignificant by Panels as they fail to properly differentiate
Complainant’s registered trademark from the Respondent’s domain names and
create the potential for confusion amongst Internet users. These practices are in violation of Policy ¶
4(a)(i). See Net2phone Inc. v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
respondent’s domain name <net2phone-europe.com> is confusingly similar to
the complainant’s mark because “the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar"); see also Wal-Mart
Stores, Inc. v. Walmarket Canada, D2000-0150
(WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is
confusingly similar to the complainant’s famous mark).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed <hiltonminneapolis.com>,
<hiltonniagara.com>, and <keywesthilton.com> domain
names. Complainant’s assertion
constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the
burden onto Respondent to prove that rights or legitimate interests do in fact
exist. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”). Because
Respondent failed to submit a response, the Panel construes this as evidence
that Respondent lacked rights and legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(a)(ii). 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.”); see also 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).
Respondent is
using the confusingly similar <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names to operate websites featuring
links to both competing and noncompeting commercial websites, from which
Respondent presumably receives referral fees.
Such diversionary and unauthorized use for Respondent’s own commercial
gain is neither 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 G.D. Searle & Co.
v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the
respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from the complainant does not constitute a
bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Pitney Bowes Inc. v. Ostanik, D2000-1611
(WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the
<pitneybowe.com> domain name where the respondent purports to resell
original Pitney Bowes equipment on its website, as well as goods of other competitors
of the complainant); see also Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat.
Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by any
of the disputed domain names or authorized to register domain names featuring
Complainant’s HILTON mark. Therefore,
the Panel finds that Respondent has failed to establish rights or legitimate
interests in any of the <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names pursuant to Policy ¶
4(c)(ii). See Am. Online, Inc. v.
World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13,
2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no
rights or legitimate interests in domain names because it is not commonly known
by the complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names to divert Internet users to
competing and noncompeting commercial websites using a series of hyperlinks
from which Respondent presumably receives click-through fees. Because Respondent’s domain names are
confusingly similar to Complainant’s HILTON mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting websites. Therefore,
Respondent’s commercial use of the disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Moreover,
Respondent registered the <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names with actual or constructive knowledge
of Complainant’s rights in the HILTON mark.
Because Complainant has a USPTO registered trademark, the Respondent is
deemed to have constructive knowledge of Complainant’s rights and is in
violation of Policy ¶ 4(a)(iii). See
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.”); 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). Furthermore, due to
the obvious similarity between the information contained on Respondent’s
website and Complainant’s business, the Panel infers that Respondent had actual
knowledge of Compainant’s trademark rights.
Registration of domain names despite actual or constructive knowledge of
the mark holder’s rights is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); 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 and thus the respondent
registered the domain name in bad faith); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was obvious,
the respondent “must have known about the Complainant’s mark when it registered
the subject domain name”).
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 <hiltonminneapolis.com>, <hiltonniagara.com>,
and <keywesthilton.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
July 22, 2005
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