DECISION

Wyndham IP Corporation v. J.C. Smith

Claim Number:  FA0312000221148

PARTIES

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 J.C. Smith (“Respondent”), 3078 N.E. 31 Place, Ocala, FL 34479.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wyndhan.com>, registered with Enom, Inc.

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 December 19, 2003; the Forum received a hard copy of the Complaint on December 22, 2003.

On December 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wyndhan.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 December 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 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@wyndhan.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 January 27, 2004, 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 <wyndhan.com> domain name is confusingly similar to Complainant’s WYNDHAM mark.

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

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

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

FINDINGS

Complainant, Wyndam IP Corporation, is the owner of several trademarks and service marks employing the term WYNDHAM, such as the WYNDHAM INTERNATIONAL mark (U.S. Reg. No. 2,300,865) the WYNDHAM HOTELS & RESORTS mark (U.S. Reg. No. 2,096,650) and the WYNDHAM mark itself (U.S. Ser. No. 74/244,942). Complainant’s family of WYNDHAM marks is used in connection with services ranging from hotel and resort services to travel management and information services, and has been used in that capacity since as early as 1982. Complainant also operates a website at the <wyndham.com> domain name, which offers travel-related services.

Respondent, J.C. Smith, registered the <wyndhan.com> domain name on February 9, 2003, without license or authorization to use Complainant’s WYNDHAM mark for any purpose. Respondent uses the disputed domain name to host a travel-oriented search engine titled “Wyndhan – Hotels – Discount Travel Online.”

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 WYNDHAM mark through registration of several marks in which the dominant feature of the mark is the WYNDHAM mark, as well as through its trademark application for the WYNDHAM mark itself. 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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Respondent’s <wyndhan.com> domain name is confusingly similar to Complainant’s WYNDHAM mark. Other than the substitution of the letter “n” for the letter “m” in the WYNDHAM mark, Respondent’s domain name is identical to Complainant’s mark. See 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); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

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

Rights or Legitimate Interests

Respondent is using the <wyndhan.com> domain name to host a travel-related search engine website, a type of service that directly competes with those services offered by Complainant at the <wyndham.com> domain name. Furthermore, Respondent has titled its webpage as “Wyndhan – Hotels – Discount Travel Online,” a misspelled title that reinforces any confusion in the minds of Internet users as to whether the disputed domain name is somehow related to Complainant. By attempting to deceive Internet users, through its unauthorized use of Complainant’s mark, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Thus, Policy ¶¶ 4(c)(i) and (iii) do not apply to Respondent in this dispute. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

Neither Respondent’s name nor the content of its website provide evidence that Respondent is “commonly known by” the disputed domain name. Instead, it appears that Respondent is attempting to capitalize on the goodwill of Complainant’s WYNDHAM mark through a misspelling of that mark. Thus, the Panel finds that Policy ¶ 4(c)(ii) does not apply in this dispute. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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").

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

Registration and Use in Bad Faith

Given the close similarity of the <wyndhan.com> domain name to the registered WYNDHAM mark, and the fact that Respondent’s search engine website operates in the same industry as Complainant, the Panel infers that Respondent had actual notice of Complainant’s rights in the WYNDHAM mark when Respondent registered the disputed domain name. This is evidence that Respondent registered the disputed domain name in bad faith. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

Evidence that the disputed domain name is being used in bad faith can be found by virtue of the fact that Respondent is operating a website that not only gives the appearance of being sponsored by Complainant, but also in fact competes with the services offered by Complainant at its <wyndham.com> domain name. In using Complainant’s mark to compete with Complainant, Respondent is using the disputed domain name in bad faith. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of Complainant’s mark to draw Internet users to a search engine would confuse Internet users into believing that Complainant was affiliated with the website, evidence that the domain name was used in bad faith); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

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

DECISION

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

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

John J. Upchurch, Panelist

Dated:  February 10, 2004

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