DECISION

Carlson Companies Inc. v. Szk.com aka Michele Dinoia

Claim Number:  FA0306000161568

PARTIES

Complainant is Carlson Companies Inc., Minneapolis, MN (“Complainant”) represented by Robert S. Brill, of Carlson Companies Inc.  Respondent is Michele Dinoia Szk.com, Pineto, Italy (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <carlsonhotel.com>, registered with Namesecure.Com.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 4, 2003; the Forum received a hard copy of the Complaint on June 5, 2003.

On June 11, 2003, Namesecure.Com confirmed by e-mail to the Forum that the domain name <carlsonhotel.com> is registered with Namesecure.Com and that Respondent is the current registrant of the name. Namesecure.Com has verified that Respondent is bound by the Namesecure.Com 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@ carlsonhotel.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 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <carlsonhotel.com> domain name is confusingly similar to Complainant’s CARLSON HOTELS WORLDWIDE mark.

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

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

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

FINDINGS

Complainant, Carlson Companies, Inc. holds trademark Reg. No. 2,485,545 for the CARLSON HOTELS WORLDWIDE mark with the U.S. Patent and Trademark Office.   Complainant first used the CARLSON HOTELS WORLDWIDE mark in commerce in 1999. 

In addition to its hotel, motel and resort management operations, Complainant uses the CARLSON HOTELS WORLDWIDE mark in connection with other services it provides in the hospitality industry. 

Respondent registered the <carlsonhotel.com> domain name on April 7, 2003.  Respondent is using the disputed domain name to redirect Internet traffic to a revenue generating search engine at the <searchport.com> domain name.  The website located at the <searchport.com> domain name provides visitors access to its pay-per-click search listings.  The website promotes its services by offering its Affiliates “handsome” pay for directing traffic to its major portal.  

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 CARLSON HOTELS WORLDWIDE mark through registration on the Principal Register with the United States Patent and Trademark Office and continuous use in commerce since 1996.  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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s <carlsonhotel.com> domain name is confusingly similar to Complainant’s CARLSON HOTELS WORLDWIDE mark.  Respondent merely added the letter “s” and the word “worldwide” to Complainant’s entire mark.  The Panel finds that Respondent’s domain name is not sufficiently distinguishable from Complainant’s mark under Policy   ¶ 4(a)(i).  See Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among Internet users); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark). 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  The Panel may accept as true all inferences and allegations submitted by Complainant.  By not submitting a Response, Respondent has failed to show any evidence, which could demonstrate that Respondent has any rights or legitimate interests in the disputed domain name.   See 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent is not commonly known by the <carlsonhotel.com> domain name.  The WHOIS contact information does not indicate that Respondent is commonly known by the disputed domain name.  Furthermore, Respondent has not been authorized or licensed to use Complainant’s mark or variations thereof in any way.  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 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).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Respondent is using the disputed domain name to redirect Internet users to a pay-per-click search engine.  The Panel finds that Respondent’s use of the disputed domain name to attract and redirect Internet traffic to a commercial website completely unrelated to Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See The Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Sony Kabushiki Kaisha a/k/a Sony Corp. v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that Respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services 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. Andrey Vasiliev a/k/a NA and Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where 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). 

            Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and is using the <carlsonhotel.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Respondent’s use of the disputed domain name to attract and then redirect Internet users to a commercial search engine website has the likelihood of creating confusion as to the affiliation and sponsorship of the <carlsonhotel.com> domain name.  Thus, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.  See Bank of America 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 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)).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <carlsonhotel.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  July 23, 2003

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