DECISION

The Coryn Group, Inc. v. Lomas Travel

Claim Number:  FA0402000243461

PARTIES

Complainant is The Coryn Group, Inc. (“Complainant”), represented by Thomas P. Arden Esq. and Elayna T. Pham, Esq., of Holland & Knight LLC, 131 South Dearborn Street, 30th Floor, Chicago, IL 60603.  Respondent is Lomas Travel (“Respondent”), Ave. de los Colegios Sn, Ejido Alfredo V. Bonfil, Cancun, Quintana Roo 77509.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net>, registered with Network Solutions, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 27, 2004; the Forum received a hard copy of the Complaint on March 1, 2004.

On March 1, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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@secretshotels.com, postmaster@secretshotelsandresorts.com, postmaster@seasidesecretshotels.com, postmaster@secretshotels.net, and postmaster@secrethotels.net 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 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names are confusingly similar to Complainant’s SECRETS mark.

2. Respondent does not have any rights or legitimate interests in the <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names.

3. Respondent registered and used the <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names in bad faith.

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

FINDINGS

Complainants are closely-held, family owned, affiliated resort companies, which share common officers and shareholders.  Complainant filed for registration of the SECRETS mark on June 22, 2000 with the United States Patent and Trademark Office (“USPTO”).  Complainant’s SECRETS mark was successfully registered with the USPTO on October 7, 2003 (Reg. No. 2,772,061). 

Complainant uses its SECRETS mark in connection with its three beach resorts, two of which have opened and one of which will be open in the fall of 2004.  Of these hotels, two are located in Mexico.  Furthermore, Complainant has used its SECRETS mark on signage, paper items and room accessories at its hotels since July 2001.  Complainant’s affiliates also use the SECRETS mark in connection with their resort hotel businesses and vacation packages.

Complainant has operated a website at the <secretsresorts.com> domain name since June 2000 where it offers information about its resort hotels and travel services.  

Like Complainant, Respondent is in the travel business and provides vacation packages and hotel rooms for guests.  Respondent is located in Quintana Roo, where Complainant’s SECRETS hotels are located.

Respondent registered the <seasidesecretshotels.com> domain name on August 8, 2003.  Respondent also registered the <secretshotels.com> on August 12, 2003.  On January 21, 2004, Respondent registered the <secretshotelsandresorts.com> domain name.  Furthermore, Respondent registered the <secretshotels.net> and <secrethotels.net> domain names on January 27, 2004.

Respondent is using the domain names to divert Internet users to its website where it features information about its beachside resort hotels and travel services.

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

Panels have consistently held that a complainant’s rights in a mark relate back to the date that the complainant filed for registration of the mark.  Thus, the Panel in this case finds that Complainant has established rights in the SECRETS mark relating back to June 22, 2000.  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 FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s <secretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names wholly incorporate Complainant’s SECRETS mark.  In the domain names, Respondent merely added the generic term “hotels” to Complainant’s mark, which causes confusion as the term describes the services that Complainant offers.  Respondent also added the generic top-level domains (“gTLD”) “.com” and “.net”, however such gTLDs do not affect the domain names for determining confusing similarity under the Policy.  Furthermore, Respondent’s addition of the letter “s” to the <secrethotels.net> domain name does not distinguish the domain name from the mark because Respondent is merely taking advantage of a common typographical error.  Accordingly, the Panel finds that the <secretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names are confusingly similar pursuant to Policy ¶ 4(a)(i).  See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also 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 the users of Complainant’s services and those who were to view a web site provided by Respondent accessed through the contested domain name).   

Similarly, the <secretshotelsandresorts.com> domain name also incorporates Complainant’s SECRETS mark in its entirety.  In this domain name, Respondent added the word “and” and the generic term “resorts” to Complainant’s mark.  The word “and” does not add a distinguishing difference under the Policy since Complainant’s mark is the dominant element of the domain name.  Furthermore, the generic term “resorts” describes the services offered by Complainant.  Consequently, the Panel finds that the <secretshotelsandresorts.com> domain name is confusingly similar to Complainant’s SECRETS mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also  Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also

Likewise, the <seasidesecretshotels.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  Not only does Respondent’s <seasidesecretshotels.com> domain name include Complainant’s SECRETS mark in its entirety, Respondent also added the generic terms “seaside” and “hotels,” which both describe Complainant’s beachside resorts.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

Respondent failed to respond to the Complaint.  Therefore, Respondent has not submitted any evidence to the Panel demonstrating that it has rights or legitimate interests in the domain names.  Since Respondent failed to meet its burden of proof, the Panel finds that Respondent lacks right and legitimate interests in the domain names under ¶ 4(a)(ii).  See 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); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

There is no evidence before the Panel suggesting that Respondent is commonly known by any of the domain names.  Thus, the Panel finds that Respondent is not commonly known by the domain names and it lacks rights and legitimate interests under 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent is using the confusingly similar domain names to divert Internet users to its website where it offers travel services that compete directly with services offered by Complainant.  The Panel finds that Respondent’s competing use of the domain names is not a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

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

Registration and Use in Bad Faith

Respondent’s registration of the five disputed domain names that are confusingly similar to Complainant’s mark has prevented Complainant from reflecting its mark in corresponding domain names.  Respondent’s registration of the five disputed domain names has demonstrated a pattern of conduct of registering domain names that prevent Complainant from registering corresponding domain names.  Thus, the Panel finds that Respondent’s registration of the five disputed domain names is evidence of bad faith under Policy ¶ 4(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon Complainant’s mark).     

Since both Complainant and Respondent are in the travel business and they operate in the same market area, it is clear that they are competitors.  Respondent registered and is using its website to market services that directly compete with services offered by Complainant.  Thus, the Panel determines that Respondent’s registration of the domain names and its competing use of the domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Since Respondent’s website features information associated with resort hotels, Internet users who are looking for Complainanat’s website, but are diverted to Respondent’s website will likely be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the travel services that are offered at the website.  Thus, the Panel finds that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been 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 <secretshotels.com>, <secretshotelsandresorts.com>, <seasidesecretshotels.com>, <secretshotels.net>, and <secrethotels.net> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  April 12, 2004

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