Dolce Hotels and Resorts Inc. v Dimitar Lazarevski
Claim Number: FA1406001567291
Complainant is Dolce Hotels and Resorts Inc. (“Complainant”), New Jersey, USA. Respondent is Dimitar Lazarevski (“Respondent”), Macedonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoteldolceinternational.com>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2014; the National Arbitration Forum received payment on June 27, 2014.
On June 27, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hoteldolceinternational.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hoteldolceinternational.com. Also on June 30, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant contends as follows:
The Complainant, Dolce Hotels And Resorts, Inc. was founded in 1981 in Houston, Texas. The company was formerly known as Dolce International, Inc. and began doing business as Dolce Hotels and Resorts, Inc. in August 2008. Dolce, a hospitality management company owns and operates hotels, resorts, and conference centers in North America and Europe. It provides golf, family, spa, and arts and culture activities, and also hosts corporate and association meetings, training sessions, weddings, and other social events.
By virtue of its federal trademark and service mark registrations the Complainant is the owner of trademarks for DOLCE, DOLCE HOTELS, and DOLCE INTERNATIONAL.
Respondent’s <hoteldolceinternational.com> domain name is confusingly similar to Complainant’s DOLCE, DOLCE HOTELS, and DOLCE INTERNATIONAL trademarks. The Disputed Domain Name simply adds the term “hotel” to the beginning of Complainant’s DOLCE INTERNATIONAL trademark and must thus be considered confusingly similar to this trademark, as well as to multiple domain names linked to Complainant’s aforementioned trademarks and business.
The granting of registrations by the U.S. Patent and Trademark Office and Canadian Intellectual Property Office to Complainants for the DOLCE and DOLCE INTERNATIONAL marks is prima facie evidence of the validity of the terms DOLCE and DOLCE INTERNATIONAL as trademarks, of Complainants’ ownership of the DOLCE and DOLCE INTERNATIONAL marks, and of Complainants’ exclusive right to use the DOLCE and DOLCE INTERNATIONAL marks in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent has not been commonly known by any of the Disputed Domain Name. The WHOIS information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,”
Using Google Maps, the address listed on the website available at the Disputed Domain Name for Respondent’s Hotel Dolce International provides a listing not for Hotel Dolce International, but rather for the “Urban Hotel.” This further shows that the Respondent has not commonly been known by the Disputed Domain Name.
Respondent is using an altered version of Complainant’s former logo to advertise his own hotel, “Urban Hotel,” which falls in the same industry as Complainant’s services and offerings. Selling a competing good or service and using Complainant’s own famous brand name, without authorization to do so, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(iii).
The term “Dolce”, in any language, is not a natural term used to describe management and operation of a hotel, and the Respondent’s inclusion of the term is a direct effort to take advantage of the fame of the Complainant’s brand. The Respondent is using the disputed domain names to imitate Complainant by displaying a slightly altered version of the Complainant’s former, stylized trademark and offering the same goods that the Complainant provides. This imitation is referred to as “passing off.” This and other characterization of Respondent’ use of the at-issue domain name also show such use as not being a bona fide offering of goods or services under Policy ¶ 4(c)(iii).
The domain name has been registered and used in bad faith. Through registration of a domain name that closely resembles Complainant’s famous trademark, Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Considering all facts and circumstances, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Names were registered.
At the time of registration of the Disputed Domain Name, the Respondent must have known of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. Aside from its numerous trademarks filed in connection with this business, Respondent has basically copied Complainant’s former logo and former name. It cannot be a coincidence that the Respondent has chosen a name that closely resembles Complainant’s former corporate name using an almost exact copy of their former logo. This in and of itself shows Respondent must have known of Complainant’s trademarks at the time of filing.
Respondent has “intentionally attempted to attract, for commercial gain, internet users to [Respondent’s] website…by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [Respondent’s] website or location,”
By adopting a similar company name as Complainant, and using Complainant’s former logo and registering a domain name that is identical to Complainant’s DOLCE INTERNATIONAL mark, save for the prefix of “hotel”, the Respondent is clearly using the Disputed Domain Name to ensnare unsuspecting users looking for Complainant’s website, thereby attempting to confuse and mislead internet users as to the source, sponsorship, and endorsement of the Disputed Domain Name. By creating this likelihood of confusion with the Complainant’s trademark and domain name, Respondent has demonstrated a nefarious intent to capitalize on the fame of the Complainant’s mark in order to increase traffic to the website listed at the Disputed Domain Name for Respondent’s own pecuniary gain
Respondent’s use of the Disputed Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii) because Respondent’s domain name is confusingly similar to Complainant’s DOLCE and DOLCE INTERNATIONAL trademarks and domain names, and the website at which the Disputed Domain Name resolves features an altered version of Complainant’s former logo advertising Respondent’s hotel.
Respondent must be considered to have possessed knowledge of the Complainant, its trademarks, and its business when registering the domain name, and thus must be held to have registered the Disputed Domain Name in bad faith. It would “defy common sense to believe that Respondent coincidently selected the precise domain without any knowledge of complainant and its…trademarks.”
Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding. Respondent failed to respond to a cease and desist letter indicates bad faith registration and use of a domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for DOLCE, DOLCE HOTELS, and DOLCE INTERNATIONAL.
Respondent is not affiliated with Complainant and had not been authorized to use the Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired trademark rights its relevant trademarks.
The at-issue domain name addresses a website that is using an altered version of Complainant’s former logo to advertise Respondent’s own hotel, “Urban Hotel,” which falls in the same industry as Complainant’s services and offerings.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the DOLCE related trademarks demonstrates its rights in such marks for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the domain name’s registrar. See 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.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name contains Complainant’s entire DOLCE INTERNATIONAL trademark less its space, prefixed by the suggestive descriptive term “hotel” and with the top-level domain name “.com” appended to the resulting string. These modifications to Complainant’s trademark fail to differentiate Respondent’s domain name from the mark. Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s DOLCE INTERNATIONAL trademark for the purposes of Policy ¶4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Dimitar Lazarevsk” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <hoteldolceinternational.com>domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). 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) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent uses the at-issue domain name to address a website that is using an altered version of Complainant’s former logo to advertise and promote Respondent’s own hotel. Using the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the at-issue domain names to direct Internet users to a website that offers hotel services that compete with Complainant. Respondent’s registration and use of its confusingly similar domain names for such purpose disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Additionally, Respondent intends to benefit via the increase in traffic to its commercial website from wayward Internet users who were looking for Complainant but instead are directed to Respondent via the confusingly similar domain name. Respondent’s use of the at-issue domain names in this manner demonstrates that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also,Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Respondent registered the at-issue domain name domain name with actual knowledge of Complainant’s DOLCE INTERNATIONAL trademark. Respondent’s knowledge of Complainant’s mark is inferred from the notoriety of the mark, as well as from Respondent’s scheme to improperly exploit the mark by using it in a confusingly similar domain name. Respondent’s actual knowledge of Complainant’s rights in the DOLCE INTERNATIONAL mark prior to registering the at-issue domain name domain name further urges that Respondent registered <hoteldolceinternational.com> in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hoteldolceinternational.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 29, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page