Wyndham IP Corporation v. Wyndham IP
Corporation c/o J Eric Steen
Claim
Number: FA0506000497808
Complainant is Wyndham IP Corporation (“Complainant”),
represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Wyndham IP Corporation c/o J Eric Steen (“Respondent”) 1105 North
Market Street, Suite 1300, Wilmington, DE 19899.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wyndhamemployeerates.com> and <windomhotels.com>
registered with Enom, Inc.
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 June
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 20, 2005.
On
June 17, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <wyndhamemployeerates.com> and <windomhotels.com>
are registered with Enom, Inc. and that Respondent is the current registrant of
the names. Enom, Inc. has verified that
Respondent is bound by the Enom, 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 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 18, 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@wyndhamemployeerates.com and
postmaster@windomhotels.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
July 25, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wyndhamemployeerates.com>
and <windomhotels.com> domain names are confusingly similar to
Complainant’s WYNDHAM mark.
2. Respondent does not have any rights or
legitimate interests in the <wyndhamemployeerates.com> and <windomhotels.com>
domain names.
3. Respondent registered and used the <wyndhamemployeerates.com>
and <windomhotels.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wyndham IP Corp., provides hotel and resort services under the WYNDHAM family
of marks. Complainant has many
federally registered trademarks with the United States Patent and Trademark
Office (“USPTO), most notably the WYNDHAM mark (Reg. No. 2,859,133 issued July
6, 2004), which has been in use since December 30, 1982.
Jasper
Developments (“Jasper”) registered both the <wyndhamemployeerates.com>
and <windomhotels.com> domain names on August 10, 2004. Complainant filed its original Complaint
against Jasper on June 16, 2005.
Shortly thereafter Jasper changed the WHOIS information for the disputed
domain names to reflect that of Complainant, but retained overall control of
the domain names and associated websites.
As a result, it appears that Complainant and Respondent are the same
party; however, Respondent remains a separate and unique entity.
Moreover, both
domain names originally resolved to websites featuring links to various
commercial websites. However,
Respondent also changed the site content at the time of commencement. The domain names currently do not resolve to
active 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. 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 rights in the WYNDHAM mark through registration with
the USPTO. Evidence of trademark
registration creates a prima facie case for the complainant, shifting
the burden onto Respondent to rebut such an assumption. Because Respondent has failed to set forth
evidence suggesting otherwise, Complainant has established rights in the
WYNDHAM mark pursuant to Policy ¶ 4(a)(i).
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. The
respondent has the burden of refuting this assumption.); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Complainant argues that Respondent’s <wyndhamemployeerates.com> and <windomhotels.com>
domain names are confusingly similar to Complainant’s WYNDHAM mark. The <wyndhamemployeerates.com>
domain name features the entire WYNDHAM mark with the addition of the two
generic terms “employee” and “rates.”
Such additions are insignificant as they fail to properly differentiate
Complainant’s registered trademark from Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See Body Shop
Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the
domain name <bodyshopdigital.com> is confusingly similar to the
complainant’s THE BODY SHOP trademark); see also Am. Online, Inc. v. Anytime
Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding
that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the
descriptive terms “traffic school,” “defensive driving,” and “driver
improvement” did not add any distinctive features capable of overcoming a claim
of confusing similarity). Respondent’s <windomhotels.com>
domain name is phonetically identical to Complainant’s WYNHDAM mark and
includes the generic term “hotels.” Panels have found that phonetic equivalents
are sufficient to render a domain name confusingly similar to a mark pursuant
to Policy ¶ 4(a)(i). See Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
a domain name which is phonetically identical to the complainant’s mark
satisfies ¶ 4(a)(i) of the Policy); Pfizer Inc. v. Phizer's Antiques,
D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain
name phonetically equivalent and confusingly similar to the PFIZER
mark). As a result, Respondent’s use of
a phonetic equivalent in combination with a generic term describing the
business in which Complainant engages is insufficient to properly distinguish
Respondent’s domain name with Complainant’s WYNDHAM mark. 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 Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark).
The
Panel finds that Policy 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interests in the disputed
domain names. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and thus shifts the
burden of proof onto Respondent. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent . . . under Policy ¶
4(a)(ii).”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist). Because Respondent failed to respond, the Panel infers that no
rights or legitimate interests exist pursuant to Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA
361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec.
30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Respondent
previously used the confusingly similar <wyndhamemployeerates.com>
and <windomhotels.com> domain names to operate websites that
featured various links to noncompeting websites from which Respondent
presumably earned referral fees. Such
diversionary use does not represent a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use under
Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent 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).”); see also
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).”).
Respondent
is currently not using the disputed domain names in connection with any active
websites, and, as such, cannot be said to be using the domain names 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). See TMP Int’l, Inc. v.
Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see
also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent merely passively held the
domain name).
Finally,
although Respondent appears to be commonly known by the registered domain names
based on the relevant WHOIS information, no affirmative evidence has been set
forth showing that Respondent has been commonly known by these disputed domain
names prior to domain name registration and it appears that Respondent merely
changed the WHOIS information upon notification of this proceeding. Therefore, Respondent has failed to show
rights or legitimate interests in either of the <wyndhamemployeerates.com>
and <windomhotels.com> domain names pursuant to Policy ¶
4(c)(ii). See Nature’s Path Foods
Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In
its WHOIS contact information, Respondent lists its name and its administrative
contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to
the Complaint, there has not been any affirmative evidence provided to the
Panel showing that Respondent was commonly known by the disputed domain name
prior to its registration of the domain name.”); see also City News &
Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
previously used the <wyndhamemployeerates.com> and <windomhotels.com>
domain names to divert Internet users to various commercial websites using a
series of hyperlinks from which Respondent presumably received referral
fees. Because Respondent’s domain names
are confusingly similar to Complainant’s WYNDHAM mark, Internet users may have
become confused as to Complainant’s sponsorship or affiliation with the
resulting websites. Therefore,
Respondent’s conduct constitutes 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 Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Respondent’s
domain names currently resolve to inactive websites. It is well established that the passive holding of confusingly
similar domain names “permits the inference of registration and use in bad
faith” pursuant to Policy ¶ 4(a)(iii). Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000); see also DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith).
Moreover,
Respondent registered the <wyndhamemployeerates.com> and <windomhotels.com>
domain names with constructive or actual knowledge of Complainant’s rights in
the WYNDHAM mark. Due to Complainant’s
registration of the mark with the USPTO, Respondent is said to have
constructive knowledge of Complainant’s rights. Registration of domain names that are confusingly similar to
another’s mark despite actual or constructive knowledge equals bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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.”); see
also Victoria’s Cyber Secret Ltd. v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D. Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); 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 and thus the respondent registered the domain
name 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 <wyndhamemployeerates.com> and <windomhotels.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 5, 2005
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