Wyndham Corporation v. Domain
Administrator
Claim
Number: FA0306000162046
Complainant is Wyndham IP Corporation, Wilmington,
Delaware (“Complainant”) represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP. Respondent is Domain Administrator, Huntington Beach, California (“Respondent”).
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, 3002
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