DECISION

Hilton Hospitality, Inc., and Hilton HHonors Worldwide, LLC v. XC2

Claim Number:  FA0310000200662

PARTIES

Complainants are Hilton Hospitality, Inc., and Hilton HHonors Worldwide, LLC, 755 Crossover Lane, Memphis, TN, 38117 USA ( “Complainants”) represented by Stephanie Mills. Respondent is XC2, 2/F Yally Industrial Building, 6 Yip Fat Street, Wong Chuk Hang, Hong Kong, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hiltonhonors.com>, registered with Dotster.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 3, 2003; the Forum received a hard copy of the Complaint on October 6, 2003.

On October 6, 2003, Dotster confirmed by e-mail to the Forum that the domain name <hiltonhonors.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 October 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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@hiltonhonors.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 November 6, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. Respondent’s <hiltonhonors.com> domain name is confusingly similar to Complainants’ HILTON HHONORS mark.

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

3. Respondent registered and used the <hiltonhonors.com> domain name in bad faith.

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

FINDINGS

Complainant Hilton Hospitality, Inc. is the owner of the HILTON mark, and has obtained many registrations for the mark on the Principal Register of the U.S. Patent and Trademark Office (e.gs. U.S. Reg. Nos. 2,478,190; 845,172; and 2,649,645). This Complainant has used the HILTON mark since 1925 in connection with its hospitality services.

Complainant Hilton HHonors Worldwide, LLC, is licensed by Complainant to use the HILTON mark as part of the HILTON HHONORS composite mark. Hilton HHonors Worldwide, LLC has obtained many registrations for the HHONORS mark (e.gs. U.S. Reg. Nos. 1,837,199; 2,552,828; and 2,680,272). The HILTON HHONORS mark is used in connection with a program where members of the program can earn points based on their spending at most of the hotel properties operated and franchised by Hilton Hospitality, Inc. Complainants Hilton Hospitality, Inc. and Hilton HHonors Worldwide, LLC (hereinafter “Complainant”) also operate a website at the <hiltonhhonors.com> domain name.

Respondent, XC2, registered the <hiltonhonors.com> domain name June 16, 2003, without license or authorization to use Complainant’s HILTON HHONORS composite mark for any purpose. Respondent uses the disputed domain name to host a webpage that provides listings for hotels that compete with Complainant, as well as links to third-party websites offering adult-oriented material.

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.

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 HILTON HHONORS mark through registration of the HILTON and HHONORS marks on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the HILTON HONORS mark in commerce. See 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 Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <hiltonhonors.com> domain name is confusingly similar to Complainant’s HILTON HHONORS mark. But for the deletion of the second “h” in the HHONORS mark and the elimination of the space between the words of Complainant’s mark, the disputed domain name is identical to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that the <hiltonhonors.com> domain name is confusingly similar to Complainant’s HILTON HHONORS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to host a webpage which displays links to both competitors of Complainant and adult-oriented websites. Respondent’s use of Complainant’s composite HILTON HHONORS mark for these purposes is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Hence, Policy ¶¶ 4(c)(i) and (iii) do not apply. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Given the lack of license relationship between Respondent and Complainant, and the fact that Respondent appears to be known as “XC2,” the Panel finds that Respondnet is not commonly known by the disputed 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 interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <hiltonhonors.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent relies upon the fame and goodwill surrounding the HILTON HHONORS mark to attract Internet users to its domain name. Once there, Internet users are subjected to a series of hyperlinks which lead to websites sponsored by competitors of Complainant. Other hyperlinks direct Internet users to adult-oriented content. In both circumstances, Complainant’s HILTON HHONORS mark is being diluted and tarnished by Respondent, presumably for commercial gain via referral fees for each hyperlink that Internet users click on. Thus, Respondent is using a likelihood of confusion with Complainant’s marks for commercial gain, evidence that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“[T]his association with a pornographic web site can itself constitute bad faith”).

The Panel thus finds that Respondent registered and used the <hiltonhonors.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <hiltonhonors.com> domain name be TRANSFERRED from Respondent to Complainant Hilton HHonors Worldwide, LLC.

Louis E. Condon, Panelist

Dated:  November 17, 2003

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