Kenmark Brand BV, Golden Tulip Worldwide
BV, and Golden Tulip Hospitality BV v. WWW Enterprise, Inc.
Claim
Number: FA0507000516901
Complainants are
Kenmark Brand BV, Golden
Tulip Worldwide BV, and Golden Tulip Hospitality BV (collectively
“Complainant”), represented by Adam
Taylor of Adlex Solicitors, 76A Belsize Lane, London, NW3 5BJ, United Kingdom. Respondent is WWW Enterprise, Inc. (“Respondent”), P.O. Box 118, 5850 W. 3rd
Street, Los Angeles, CA US 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <goldentulip.org>, registered with OnlineNIC.com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 20, 2005, OnlineNIC.com confirmed by e-mail to the National Arbitration
Forum that the domain name <goldentulip.org> is registered with OnlineNIC.com
and that Respondent is the current registrant of the name. OnlineNIC.com has verified that Respondent
is bound by the OnlineNIC.com 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
July 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 10, 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@goldentulip.org by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default. On August 16, 2005, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed James A. Carmody, Esq., 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 <goldentulip.org>
domain name is identical to Complainant’s GOLDEN TULIP mark.
2. Respondent does not have any rights or
legitimate interests in the <goldentulip.org> domain name.
3. Respondent registered and used the <goldentulip.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants are
all part of the Golden Tulip hotel group (“the Group”), which was founded in
1962 and is headquartered in Amersfoort, Netherlands. Complainant, Kenmark
Brand BV, is the current owner of the GOLDEN TULIP family of marks. Complainant, Golden Tulip Worldwide BV, is
the Group’s main trading company and handles hotel franchising and other
trading activities. Complainant, Golden
Tulip Hospitality BV, is the Group’s holding company.
Complainant holds several registrations for its GOLDEN TULIP mark with
numerous trademark authorities throughout the world, including the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,724,465 issued June
10, 2003). The GOLDEN TULIP marks were
previously owned by Golden Tulip International B.V. who assigned the registered
marks to Complainant, Kenmark Brand BV, who is now the legal owner of the
GOLDEN TULIP family of marks.
As of 2004, Complainant’s portfolio included 20,400 rooms in 168 four
star business and resort hotels worldwide operating under the GOLDEN TULIP
mark. In 2003, Complainant’s turnover
reached 10.1 million euros and in 2004, the turnover was 10.3 million
euros. In 2004, Complainant spent about
1 million euros on marketing.
Complainant’s hotels have been ranked number seventeen among Europe’s top
fifty hotels. Complainant has also
received numerous awards.
Respondent registered the <goldentulip.org> domain name on July 14, 2004. The disputed domain name resolves to a
directory website that links to various products and services, including hotel
and travel products and services. The
website also includes a banner advertisement and link to an adult-oriented
website as well as a message that states “Contact Domain Owner and Send
Anonymous Offer.”
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 its registrations of the GOLDEN TULIP mark with numerous
trademark authorities, including the USPTO.
Complainant’s registration of its mark with federal authorites is
sufficient to establish a prima facie case of Complainant’s rights in
the mark for purposes of Policy ¶ 4(a)(i).
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Numerous panels
have held under the Policy that the addition of a generic top-level domain
(“gTLD”) to a complainant’s mark is irrelevant and renders the disputed domain
name identical to the mark. In the
instant case, the <goldentulip.org> domain name includes
Complainant’s GOLDEN TULIP mark in its entirety, adding only the gTLD
“.org.” Thus, the Panel finds that the
disputed domain name is identical to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Microsoft Corp.
v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to the complainant’s mark); see also BMW
AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no
doubt” that the domain name <bmw.org> is identical to the complainant’s
well-known and registered BMW trademarks).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; 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”). Having found that Complainant
has met its initial burden by establishing a prima facie case, the Panel
will now analyze whether Respondent has met its burden to establish rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant
alleges that there is no evidence that Respondent has been commonly known by
the <goldentulip.org> domain name. According the WHOIS information for the disputed domain name,
Respondent is identified as “WWW Enterprise, Inc.” and no affiliation with the
disputed domain name is indicated.
Since the Panel has not received a response from Respondent, there is no
evidence before the Panel to challenge Complainant’s assertions that Respondent
is not commonly known by the disputed domain name. The Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”); see also
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").
Complainant
asserts that the <goldentulip.org> domain name resolves to a
directory website of affiliate links, most of which are to hotel and other
travel businesses. In addition,
Complainant argues that the website includes a banner advertisement that links
to an adult-oriented website and also displays a message soliciting offers for
the domain name registration. The Panel
presumes that Respondent receives commissions for linking Internet users to
third-party websites via the links on Respondent’s website. Respondent’s use of the disputed domain name
to link Internet users to Respondent’s website for Respondent’s commercial gain
is not a use in connection with 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).
Furthermore, Respondent’s willingness to sell the disputed domain name
registration, as evidenced by a message on the website soliciting offers, is
additional evidence that Respondent lacks rights or legitimate interests in the
disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
The <goldentulip.org>
domain name resolves to a website that features a directory of links to various
products and services similar to those of Complainant. The Panel presumes that respondent receives
commissions for diverting Internet users to third-party websites via the links
located at Respondent’s website.
Additionally, Respondent’s use of Complainant’s GOLDEN TULIP mark in the
domain name creates a likelihood of confusion and suggests an attempt to
attract Internet users to Respondent’s website for Respondent’s commercial
gain. The Panel finds that this is
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Associated Newspapers Ltd. v. Domain Manager,
FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s
registration of the <goldentulip.org> domain name, which contains
Complainant’s GOLDEN TULIP mark in its entirety, suggests that Respondent knew
of Complainant’s rights in the mark.
The similarity between Complainant’s business and the content displayed
on Respondent’s website is further evidence that Respondent had knowledge of
Complainant’s rights in the GOLDEN TULIP mark.
Additionally, Complainant’s registration of its mark with the USPTO and
other federal authorities bestows upon Respondent constructive knowledge of
Complainant’s rights in the mark.
Respondent’s registration of a domain name that contains Complainant’s
mark, with knowledge of Complainant’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); 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”); 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.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <goldentulip.org> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 26, 2005
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