national arbitration forum

DECISION

Wyndham IP Corporation v. Golden Door

Claim Number:  FA0410000341231

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 Golden Door (“Respondent”), 1234 5th Street, Hayward, CA 94541.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goldendoor2.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 electronically on October 13, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2004.

On October 15, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <goldendoor2.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 October 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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@goldendoor2.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 November 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.

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 <goldendoor2.com> domain name is confusingly similar to Complainant’s GOLDEN DOOR mark.

2. Respondent does not have any rights or legitimate interests in the <goldendoor2.com> domain name.

3. Respondent registered and used the <goldendoor2.com> domain name in bad faith.

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

FINDINGS

Complainant, Wyndham IP Corporation, uses the GOLDEN DOOR mark in conjunction with hotel, resort, and spa services, as well as related spa products, such as soaps, oils, creams, lotions, moisturizers, shampoos, conditioners, scrubs, and gels.  In the Complaint, Complainant includes various U.S. Patent and Trademark Office (“USPTO”) registrations for GOLDEN DOOR, registered to the Golden Door Corporation (e.g. reg. nos. 862,884, 1,192,934, 1,024,121, 1,592,438, 943,405, and 958,717).  However, Complainant has not established that it has acquired rights from the Golden Door Corporation.

Complainant registered the GOLDEN DOOR mark with the USPTO on December 3, 2002 (reg. no. 2,655,803).  Complainant accuses Respondent of committing “pornosquatting”—“the practice in which a cyber squatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website . . .”

Respondent registered the <goldendoor2.com> domain name on July 21, 2004.  Respondent is using the domain name to market therapeutic services.  Accompanying the pricing table for “full sensual body rub” and “elite services” are images of naked women. Next to the fee table for services, a legal notice states that the website is not for “either (1) engagement in any lewd act for money or other consideration or (2) solicitation, offer, or agreement to engage in any lewd act for money or other consideration.” The website also provides a direct link to Complainant’s website (<goldendoorskincare.com>). 

Complainant also asserts the website at Respondent’s <goldendoor2.com> domain name appropriates the design mark below (reg. no. 1,192,934): 

This design mark is one of the marks registered to the Golden Door Corporation.

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

Through its registration with the USPTO, Complainant has acquired rights in the GOLDEN DOOR mark pursuant to Policy ¶ 4(a)(i). 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, and 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 Panel accepts Complainant’s allegation that Respondent is appropriating the design mark below (reg. no. 1,192,934):

Because this mark is registered to the Golden Door Corporation, and Complainant has not demonstrated that it is the successor-in-interest to this mark, the Panel finds that Respondent’s use of this mark does not imply that Respondent has notice of Complainant or Complainant’s rights in this design mark.  See CMG Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (dismissing the Complaint despite Complainant’s authorization to pursue the Complaint on behalf of the exclusive owner of the trademark rights HUMPHREY BOGART, as Complainant did not own the rights to the mark); see also CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Nat. Arb. Forum June 3, 2003) (holding that as Complainant provided no evidence to the Panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to Complainant, Complainant did not have standing to bring a claim under the UDRP). 

However, the Panel finds that Complainant’s registration of the GOLDEN DOOR mark (reg. no. 2,655,803) is still adequate to allow Complainant to seek relief pursuant to the Policy.

Respondent’s <goldendoor2.com> domain name is confusingly similar to Complainant’s GOLDEN DOOR mark because the only difference is the elimination of the space between the words and the addition of the number “2,” which do not significantly distinguish the domain name from the mark.  See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response. Therefore, the Panel accepts any reasonable assertion by Complainant as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent is appropriating Complainant’s mark to market its services and display pornography, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

The Panel notes that the domain name WHOIS information indicates that Respondent seems to be conducting business under the “Golden Door” name.  However, because the <goldendoor2.com> domain name’s resultant website offers a link to Complainant, the Panel finds that Respondent has established itself as GOLDEN DOOR only to pass itself of as Complainant.  The Panel does not construe the <goldendoor2.com> WHOIS information to establish that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s GOLDEN DOOR mark to advertise its services and exhibit naked women; a practice Complainant calls “pornosquatting.”  While the Panel is not familiar with this term, it finds that appropriating Complainant’s mark to exhibit pornography is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see aslo Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

In addition, the Panel accepts Complainant’s allegation that Respondent’s website links directly to Complainant.  The Panel finds that linking to Complainant demonstrates that Respondent has actual notice of Complainant’s mark.  The Panel also infers from Respondent’s actual notice that Respondent intended to pass itself off as Complainant, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business”); cf. Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith). 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <goldendoor2.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 1, 2004

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