DECISION

Wyndham International, Inc. v. Golden Door Designs

Claim Number:  FA0302000146932

PARTIES

Complainant is Wyndham International, Inc., Dallas, TX (“Complainant”) represented by Christine L. Lofgren of Jeffer, Mangels, Butler & Marmaro LLP. Respondent is Golden Door Designs, Laguna Beach, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goldendoordesigns.com>, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") el ectronically on February 26, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On March 2, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <goldendoordesigns.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. 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 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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@goldendoordesigns.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 March 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <goldendoordesigns.com> domain name is confusingly similar to Complainant’s GOLDEN DOOR mark.

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

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

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

FINDINGS

Complainant has used the GOLDEN DOOR mark since 1958 in relation to its famous resort and spa.  Complainant’s spa has come to symbolize to the public the utmost in excellence and luxury among international resorts and spas.  Complainant’s spa was rated the #1 Spa in America by Zagat U.S. Hotel, Resort and Spa Guide every year since the survey began in 1988.  Complainant’s spa features several yoga programs, and brings premier yoga instructors to its facility for its guests.

Complainant holds numerous registrations for the mark with the United States Patent and Trademark Office, including Registration Numbers 862,884; 819,245; and 943,405.  Complainant also holds the registration for <goldendoor.com>, and has used the domain name since 1997.

Respondent registered the <goldendoordesigns.com> domain name on August 15, 2001.  Respondent is using the domain name to provide links to various businesses on the Internet, including three yoga websites.  Respondent’s domicile, Laguna Beach, California is only 60 miles from the location of Complainant’s spa in Escondido, California.  Respondent does not have permission from Complainant to use the GOLDEN DOOR mark.

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 that it has rights in the GOLDEN DOOR mark through continuous use in commerce as the name of its famous spa and through its registration with the United States and Patent Office.

Respondent’s <goldendoordesigns.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the descriptive term “designs.”  The addition of a generic or descriptive term to a famous mark does not create any distinctive characteristics capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website). 

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.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <goldendoordesigns.com> domain name for a website that features links to various yoga websites and other businesses.  Since Complainant’s GOLDEN DOOR spa features yoga and yoga instruction, the services advertised on Respondent’s website compete with Complainant’s services.  The use of a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Based on the fame of Complainant’s GOLDEN DOOR mark, Respondent would be hard-pressed to establish that it is commonly known as GOLDEN DOOR DESIGNS or <goldendoordesigns.com>.  Respondent has failed to come forward with any evidence; thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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 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).

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

Registration and Use in Bad Faith

Respondent’s domicile is very close to Complainant’s famous spa.  Furthermore, Complainant’s GOLDEN DOOR mark is famous in the spa industry.  Thus, Respondent should have been on notice of Complainant’s GOLDEN DOOR mark when it registered <goldendoordesigns.com>.  Registration of a domain name despite actual or constructive knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent is using the disputed domain name to attract Internet users interested in Complainant to its own website featuring links to businesses.  The Panel infers that Respondent is making a profit from the Internet traffic diverted to the links featured on Respondent’s website.  This type of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is using a domain name confusingly similar to Complainant’s mark for its own commercial gain.  See 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)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).

Thus, 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 <goldendoordesigns.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 2, 2003

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