national arbitration forum

 

DECISION

 

Hyatt Corporation v. Sinichi Akiyama

Claim Number: FA0611000839408

 

PARTIES

Complainant is Hyatt Corporation (“Complainant”), represented by Brett. A. August, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606.  Respondent is Sinichi Akiyama (“Respondent”), Nakano, Lions Plaza 318, Nakano-ku 164-0001, Tokyo, Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <club-hyatt.com>, registered with Gkg.net, Inc.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2006.

 

On November 10, 2006, Gkg.net, Inc. confirmed by e-mail to the National Arbitration Forum that the <club-hyatt.com> domain name is registered with Gkg.net, Inc. and that Respondent is the current registrant of the name.  Gkg.net, Inc. has verified that Respondent is bound by the Gkg.net, 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 November 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 2006 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@club-hyatt.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <club-hyatt.com> domain name is confusingly similar to Complainant’s HYATT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <club-hyatt.com> domain name.

 

3.      Respondent registered and used the <club-hyatt.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Hyatt Corporation, is one of the world’s largest hotel companies, operating over 200 hotels and resorts in over forty-three countries around the world.  Complainant has continuously used the HYATT mark in association with its hotels since as early as 1957.  In Japan, where Respondent resides, Complainant operates seven hotels under the HYATT mark and is set to open its eighth, the Hyatt Regency Hakone Resort and Spa, in December 2006.

 

Complainant has registered the HYATT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 945,384 issued October 17, 1972), as well as the HYATT VACATION CLUB (Reg. No. 1,951,219 issued January 23, 1996) and HYATT REGENCY HEALTH CLUB (Reg. No. 1,637,896 issued March 12, 1991) marks.

 

Respondent’s <club-hyatt.com> domain name, which it registered on April 5, 2005, resolves to a website featuring adult-oriented content, including escort services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the HYATT mark through registration of the mark with the USPTO.  See Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

By merely adding a hyphen and the term “club” to Complainant’s HYATT mark, a term which Complainant uses to describe its business and has registered with the HYATT mark in the HYATT VACATION CLUB and HYATT REGENCY HEALTH CLUB marks, Respondent has failed to sufficiently differentiate the <club-hyatt.com> domain name from he HYATT mark.  As a result, the disputed domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant maintains that Respondent does not have rights to or legitimate interests in the disputed domain name.  Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <club-hyatt.com> domain name.  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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent has registered the <club-hyatt.com> domain name as “Sinichi Akiyama,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name.  Consequently, Respondent has not established 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 the respondent does not have rights in a domain name when the respondent is not known by the mark); see also 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.”).

 

Moreover, Respondent is using the <club-hyatt.com> domain name, which includes Complainant’s HYATT mark, in order to operate a website displaying adult-oriented content and offering escort services.  In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Because Respondent is also diverting Internet users to a website displaying adult-oriented content, Respondent’s use of the disputed domain name does not represent 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).  See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <club-hyatt.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name includes Complainant’s mark and resolves to an adult-oriented website offering escort services.  The Panel infers that Respondent receives financial benefit from the operation of this website.  Therefore, Respondent is taking advantage of the confusing similarity between Complainant’s HYATT mark and the domain name and profiting from the goodwill associated with the mark.  Respondent’s diversionary use of the disputed domain name for its own commercial gain provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <club-hyatt.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  December 26, 2006

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum