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Generic Top Level Domain Name (gTLD) Decisions |
Hyatt Corporation v. Henry Tsung
Claim
Number: FA0411000367095
Complainant is Hyatt Corporation (“Complainant”),
represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000,
Chicago, IL 60606. Respondent is Henry Tsung (“Respondent”), No.2 Alley
4 Lane 177, Swei Road, Taipei 356021, TAIWAN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hyattvancouver.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically November
19, 2004; the National Arbitration Forum
received a hard copy of the Complaint November
22, 2004.
On
November 23, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain
name <hyattvancouver.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.com registration agreement
and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute
Resolution Policy (the "Policy").
On
November 24, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 14, 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@hyattvancouver.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the National Arbitration Forum
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 National
Arbitration 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. The domain name that Respondent
registered, <hyattvancouver.com>, is confusingly similar to
Complainant’s HYATT mark.
2. Respondent has no rights to or legitimate
interests in the <hyattvancouver.com> domain name.
3. Respondent registered and used the <hyattvancouver.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
hotel management company that operates 214 hotels and resorts under the HYATT
mark. Complainant opened its first
hotel in 1957 and currently operates hotels in 39 countries. One of Complainant’s hotels is the Hyatt
Regency Vancouver, which opened for business in 1973. Complainant operates a website for its Vancouver branch hotel at
the <vancouver.hyatt.com> domain name.
Complainant owns
numerous registrations for the HYATT mark with the United States Patent and
Trademark Office (“USPTO”), including
Reg. Nos. 945,384 (issued October 17,
1972) and 2,731,433 (issued July 1, 2003).
Complainant additionally has registered its HYATT mark in Canada with
the Canadian Intellectual Property Office (“CIPO”) (Reg. No.
TMA207464 issued
May 30, 1975).
Respondent
registered the <hyattvancouver.com> domain name December 18,
2003. Respondent’s domain name resolves
to a search engine website linking to competing hotel and travel services and
featuring multiple
pop-up advertisements.
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
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established by extrinsic proof in this proceeding that it has rights in the
HYATT mark through registration with the USPTO
and the CIPO as well as through
continuous use of the mark in international commerce. See 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.); see
also 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.”).
The
domain name that Respondent registered, <hyattvancouver.com>, is
confusingly similar to Complainant’s HYATT mark. Respondent’s domain name incorporates Complainant’s mark in its
entirety and merely adds the geographic term “vancouver” and the generic
top-level domain “.com.” Such additions
are not enough to overcome a finding of confusing similarity between
Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶
4(a)(i). See VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s
VERISIGN mark and the <verisignindia.com>
and <verisignindia.net>
domain names where Respondent added the word “India” to Complainant’s mark); 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); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the mark
contained in its entirety in the disputed domain
name. Respondent did not respond to the Complaint. Therefore, the Panel accepts all reasonable
allegations set forth in the Complaint as true. See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of complainant’s
reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a
complaint allows a panel to make reasonable inferences
in favor of a complainant
and accept complainant’s allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Nothing in the
record establishes that Respondent is commonly known by the disputed domain
name and Respondent is not licensed or authorized to register or use domain
names that incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the 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 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).
Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent is using a domain name confusingly similar to Complainant’s
mark to direct Internet users to a website containing links
to hotels and hotel
services that compete with Complainant’s business. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat.
Arb. Forum May 12, 2003) (finding that Respondent did not have rights or
legitimate interests in a domain name that
used Complainant’s mark and
redirected Internet users to a website that pays domain name registrants for
referring those users to
its search engine and pop-up advertisements); 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 Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation
of Complainant’s mark to market products that
compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant,
had no rights or legitimate interests
in a domain name that utilized
Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that
Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith and Respondent has not controverted
this allegation. Respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii)
by registering a domain name confusingly
similar to Complainant’s mark and
using it to market competing products and services. The fact that Respondent’s domain name resolves to a site that
offers links to hotels and hotel services in competition with Complainant
is
evidence that Respondent intentionally incorporated Complainant’s mark into its
domain name in order to siphon off traffic from
unsuspecting Internet users. See
EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered
the names primarily for the purpose of disrupting Complainant's
business); 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).
Furthermore,
Respondent registered the <hyattvancouver.com> domain name for
Respondent’s commercial gain. Respondent’s domain name diverts Internet users
to a website that links to hotels and
hotel services in competition with
Complainant. Thus, the Panel infers that Respondent receives monetary
compensation for its practice
of redirection. Respondent’s acts of diversion,
motivated by commercial gain, through the use of a confusingly similar domain
name
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website);
see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain); see also Kmart
v. Khan, 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)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hyattvancouver.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 5, 2005.
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