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, Memphis, TN, 38117.
Respondent is Domain Admin c/o DA (“Respondent”), 4222 Wis Ave,
Washington DC Australia, 20011.
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 La Jolla, California, which is commonly referred to as
“Hilton Torrey Pines.”
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, 205
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