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Generic Top Level Domain Name (gTLD) Decisions |
Starwood Hotels & Resorts Worldwide,
Inc. v. ol040980.com ol040980@ol040980.com +7.8129237400
Claim
Number: FA0409000331978
Complainant is Starwood Hotels & Resorts Worldwide,
Inc. (“Complainant”), represented by Theresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC, 55 South Commercial Street, Manchester, NH 03101. Respondent is ol040980.com ol040980@ol040980.com +7.8129237400 (“Respondent”), ul
Krasnih Zor St. Peterburg Pavlovsk RU 196600.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <westinatlantanorth.com>, registered with Onlinenic,
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 21, 2004;
the Forum received a hard copy of the
Complaint on September 24, 2004.
On
September 22, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the
domain name <westinatlantanorth.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
September 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 20, 2004 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@westinatlantanorth.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
October 26, 2004, pursuant to Complainant's 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <westinatlantanorth.com>
domain name is confusingly similar to Complainant’s WESTIN mark.
2. Respondent does not have any rights or
legitimate interests in the <westinatlantanorth.com> domain name.
3. Respondent registered and used the <westinatlantanorth.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Starwood Hotels & Resorts Worldwide, Inc., owns trademark rights to the
WESTIN family of marks through registration
with the United States Patent and
Trademark Office (e.g., 1,320,080 issued February 12, 1985). Complainant has used the WESTIN family of
marks in commerce in connection with hotel and restaurant related services
since at least
1981.
Respondent
registered the <westinatlantanorth.com> domain name on December
14, 2003. Respondent is using the
dispute domain name to resolve to a website with the heading “Free XXX Sites!”
followed by instructions for
accessing adult sites, and numerous links to adult
content or pornographic sites.
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 that it has rights in the WESTIN family of marks through
registration with the United States Patent and
Trademark Office and through continued use of its mark in commerce
for the last 23 years. See 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.”); see also 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.
Respondent has the burden of refuting this assumption).
Respondent’s <westinatlantanorth.com>
domain name is confusingly similar to Complainant’s WESTIN family of marks
because the domain name incorporates combination of Complainant’s
mark and adds
the terms “atlanta” and “north.” The
addition of generic, descriptive or geographic terms do not negate the
confusingly similarity of Respondent’s domain name pursuant
to Policy ¶
4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29,
2000) (finding that common geographic qualifiers or generic nouns can rarely be
relied upon to differentiate
the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights); see also Sunkist Growers, Inc. v. S G,
D2001-0432 (WIPO May 22, 2001) (finding that the domain names
<sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com>
are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark);
see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly
similar to
Complainant’s mark…"the combination of
a geographic term with the mark does not prevent a domain name from being found
confusingly similar").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <westinatlantanorth.com>
domain name containing Complainant’s WESTIN mark. Due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests
in the
domain name. In fact, once Complainant
make a prima facie case in support of
is allegations, the burden shifts to Respondent to show that it does have such
rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name).
Additionally,
where Complainant makes the prima facie showing
and Respondent does not respond, the Panel may accept all reasonable
allegations and inferences in the Complaint as true. See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence
of a response, it is appropriate to accept as true all allegations
of the
Complaint”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in
the allegations of
Complainant to be deemed true).
Respondent is
using the <westinatlantanorth.com> domain name to resolve to a
pornographic website containing numerous links to adult content and other
pornographic sites. Respondent’s use of
a domain name that is confusingly similar to Complainant’s WESTIN family of
marks to redirect Internet users to
a pornographic website is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial
or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See 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 [Complainant’s mark]” was evidence that
Respondent had no rights or legitimate interests in the disputed
domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat.
Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain
name to link unsuspecting Internet traffic to an adult orientated website,
containing images of scantily clad women in provocative
poses, did not
constitute a connection with a bona fide offering of goods or services or a
noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A.,
FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (stating that “[m]isdirecting Internet traffic by utilizing
Complainant’s registered mark [in order to direct Internet users to an
adult-oriented website]
does not equate to a bona fide offering of goods or
services . . . nor is it an example of legitimate noncommercial or fair use of
a domain name . . . Respondent was merely attempting to capitalize on a close
similarity between its domain name and the registered
mark of Complainant, presumably
to gain revenue from each Internet user redirected to the pornographic
website).
Additionally,
Respondent did not offer any evidence and the lack of proof in the record
suggests that Respondent is not commonly known
by the <westinatlantanorth.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <westinatlantanorth.com> domain name in
bad faith and for commercial gain.
Respondent registered and used a domain name confusingly similar to
Complainant’s WESTIN family of marks to divert Internet users
searching under
Complainant’s family of marks to a pornographic website. The Panel finds that Respondent’s
pornographic use of the <westinatlantanorth.com> domain name
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that 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); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic
site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad
faith where Respondent linked the domain name in question to websites
displaying banner
advertisements and pornographic material).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
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 <westinatlantanorth.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
November 9, 2004
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