DECISION

Hilton Hotels Corporation and Hilton Hospitality, Inc. v. QTK Internet

Claim Number:  FA0304000154181

PARTIES

Complainant is Hilton Hotels Corporation, Beverly Hills, CA (“Complainant”) represented by Doreen Costa, of Baker Botts LLP. Respondent is QTK Internet, Turtle Creek, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hiltonneworleans.com>, registered with Go Daddy Software, 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.Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 11, 2003; the Forum received a hard copy of the Complaint on April 14, 2003.

On April 11, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <hiltonneworleans.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 7, 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@hiltonneworleans.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 May 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <hiltonneworleans.com> domain name is confusingly similar to Complainant’s HILTON mark.

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

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

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

FINDINGS

Complainant, Hilton Hotels Corp., develops, owns, manages and franchises over 1,800 hotels, resorts and vacation ownership properties. Complainant’s portfolio of business entities includes many of the world’s most recognized and highly regarded hotel brands, including Hilton, Doubletree, Embassy Suites Hotels, Hampton Inn and Hampton Inn & Suites, among others.

Complainant’s HILTON mark was founded in 1925 and was used in conjunction with a hotel built in Dallas, Texas. By 1943, Complainant was the first coast-to-coast hotel chain in the United States. Since its 1925 founding, Complainant has become recognized around the world as a preeminent lodging hospitality company.

Complainant holds numerous registrations with the U.S. Patent and Trademark Office (“USPTO”) for the HILTON mark. Specifically, Complainant registered Service Mark No. 845,172 for the HILTON mark on February 27, 1968. Complainant’s USPTO registration indicates that first use of the subject HILTON mark occurred in 1955.

Additionally, Complainant uses the HILTON NEW ORLEANS mark in connection with four hotels located in New Orleans, namely, the HILTON NEW ORLEANS RIVERSIDE, HILTON NEW ORLEANS AIRPORT, HILTON GARDEN INN NEW ORLEANS AIRPORT, and HILTON GARDEN INN NEW ORLEANS DOWNTOWN.

As of December 31, 2002, Complainant’s HILTON hotel system included 232 properties with 86,937 hotel rooms. Complainant reported Fourth Quarter 2002 revenues of $957 million.

As a result of the care exercised by Complainant in the advertising, marketing and promotion of its many services and products, the HILTON family of marks has acquired significant secondary meaning among the consuming public.

Respondent, QTK Internet, registered the disputed <hiltonneworleans.com> domain name on May 31, 2001. Complainant’s investigation of Respondent’s use of the subject domain name reveals that <hiltonneworleans.com> resolves to <roomsusa.com>, which connects to a website registered and operated by Respondent that promotes discount hotel reservations.

Additionally, Respondent indicated in correspondence with Complainant regarding the transfer of the domain name registration that “hotels.com compensate me for the days without service (without having informed me), domain registration costs that we’ve incurred since it’s original registration” and also stated, “I am simply asking for reciprocity.” Respondent had a commercial agreement with Hotels.com, in which Respondent’s <roomsusa.com> domain name linked to Hotel.com’s website. Following Complainant’s written request to Hotels.com concerning Respondent’s use of the <hiltonneworleans.com> domain name, Hotels.com asked Respondent to cease using the domain name. Respondent failed to comply and Hotels.com severed the link between the websites.

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 HILTON mark through registration with the USPTO and continuous use of the mark in commerce since 1925. Although Complainant asserts common law rights in the HILTON NEW ORLEANS mark, it is unnecessary to undergo a common law rights analysis for the purposes of this dispute. See The Men’s Wearhouse, Inc. v. Brian 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”).

Respondent’s <hiltonneworleans.com> domain name is confusingly similar to Complainant’s HILTON mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and adds the geographic qualifier “New Orleans.” The addition of a geographic term does not distinguish the subject domain name such that confusion is unlikely, especially in the present situation, where Complainant’s HILTON mark is used extensively in New Orleans. Because the top-level domain, “.com,” is inconsequential when conducting an analysis under Policy ¶ 4(a)(i), Respondent’s domain name is rendered confusingly similar to Complainant’s mark. See 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 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 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).

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

Rights or Legitimate Interests

Complainant’s submission to the Panel asserts that Respondent does not have any rights or legitimate interests in the <hiltonneworleans.com> domain name. Because Respondent failed to submit a Response, Complainant’s assertions are unopposed and the Panel is permitted to accept all reasonable inferences contained in the Complaint as true, unless clearly contradicted by the evidence. 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).

Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is confusingly similar to the domain name and alleged that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. 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 in respect of the domain name, 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, Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Uncontested circumstances indicate that Respondent’s domain name redirects Internet users to <roomsusa.com>, a commercial website that promotes discount hotel reservation services in competition with Complainant’s HILTON services. Respondent seeks to capitalize from the goodwill and fame of Complainant’s HILTON mark by making unauthorized use of the mark in the domain name. Respondent’s exploitation of Complainant’s mark in order to divert Internet users to its website fails to establish rights or legitimate interests in <hiltonneworleans.com> under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

No evidence before the Panel suggests Respondent is commonly known by the <hiltonneworleans.com> domain name, or the “Hilton New Orleans” second-level domain. On the contrary, evidence reveals that Respondent’s domain name resolves to a website wholly unrelated to Complainant’s HILTON mark and services. Because Complainant has made extensive use of the HILTON mark since 1925, the Panel infers that Respondent is not commonly known by a domain name that is confusingly similar to Complainant’s established mark. Therefore, Respondent fails to establish rights in the subject domain name under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

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

Registration and Use in Bad Faith

Policy paragraph 4(b) presents a non-exhaustive listing of bad faith criteria and the Policy expressly recognizes that other circumstances can evidence bad faith registration and use. When deciding whether Respondent registered or used the domain name in bad faith the Panel may consider the “totality of circumstances” surrounding the dispute. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy do not constitute an exhaustive listing of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent’s bad faith registration of the <hiltonneworleans.com> domain name is evidenced by the fact that the domain name was registered many years after Complainant’s HILTON mark was registered in the U.S. and had acquired its fame. As stated, Complainant’s use of the HILTON mark commenced in 1925. Additionally, Complainant’s HILTON mark is registered on the Principal Register of the USPTO, a position that imparts notice on those who seek to register identical or confusingly similar variations of the mark. Respondent’s registration of the infringing domain name, despite knowledge of Complainant’s rights in the HILTON mark, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent’s bad faith use of <hiltonneworleans.com> is articulated under Policy ¶ 4(b)(iii). Specifically, the subject domain name resolves to <roomsusa.com>, which is a website registered and operated by Respondent that promotes discount hotel reservations. Respondent makes unauthorized use of Complainant’s HILTON mark in order to usurp Complainant’s consumers. Seeking a business advantage through the infringement of a competitor’s mark is use explicitly prohibited by the Policy. The Panel determines that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, and has therefore acted in bad faith. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also 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 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).

Accordingly, 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 <hiltonneworleans.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  May  27, 2003

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