DECISION

Wyndham IP Corporation v. Albert Jackson

Claim Number:  FA0405000268453

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 Albert Jackson (“Respondent”), P.O. Box 2041, George Town, Grand Cayman, KY, Grand Cayman Islands.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wyndhamvactions.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 6, 2004; the Forum received a hard copy of the Complaint on May 10, 2004.

On May 6, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <wyndhamvactions.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 has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 May 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 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@wyndhamvactions.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 June 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <wyndhamvactions.com> domain name is confusingly similar to Complainant’s WYNDHAM HOTELS & RESORTS and WYNDHAM SPECIAL VACATIONS marks.

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

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

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

FINDINGS

Complainant has used the WYNDHAM HOTELS & RESORTS mark since 1989 in connection with “hotel services.”  Complainant registered the WYNDHAM HOTELS & RESORTS mark with the United States Patent and Trademark Office (“USPTO”) on September 16, 1997 (Reg. No. 2,096,650).

Likewise, Complainant has used the WYNDHAM SPECIAL VACATIONS mark since 1996 in connection with “hotel services.”  Complainant registered the WYNDHAM SPECIAL VACATIONS mark on December 15, 1998 (Reg. No. 2,211,849).

Respondent registered the disputed domain name <wyndhamvactions.com> on August 30, 2003.  Respondent uses the domain name to host a website that contains a variety of links to various third-party travel websites under the catagories “Vacation,” “Family vacation,” “Florida vacation,” “Disney vacation,” “Vacation rental,” “Vacation package,” “Florida vacation rental,” and “Resort.” 

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

Registration of a mark with a governmental trademark or service mark authority is sufficient under the Policy to establish rights in a mark.  In the instant case, Complainant has registered the WYNDHAM HOTELS & RESORTS and WYNDHAM SPECIAL VACATIONS marks with the USPTO.  Therefore, Complainant has established rights in the WYNDHAM HOTELS & RESORTS and WYNDHAM SPECIAL VACATIONS marks under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The disputed domain name <wyndhamvactions.com> contains the predominant portion of Complainant’s WYNDHAM HOTELS & RESORTS and WYNDHAM SPECIAL VACATIONS marks, namely the word “Wyndham.”  In addition, the disputed domain name has simply appended a misspelling of the term “Vacations” to the term “Wyndham,” which is also a portion of Complainant’s WYNDHAM SPECIAL VACATIONS mark.  Moreover, the term “Vacations” describes the service industry that Complainant operates its registered marks in.  By including the predominant portion of Complainant’s marks in the disputed domain name and including a misspelling of the term “Vacations” in the domain name, Respondent has engaged in the practice of typosquatting.  Typosquatting, by definition, establishes that Respondent registered a domain name confusingly similar to Complainant’s marks under the Policy.  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that Respondent's <marrriott.com> domain name was confusingly similar to Complainant's MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the domain name confusingly similar to Complainant's mark."); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) ("Respondent's <neimanmacus.com> domain name represents a simple misspelling of Complainant's NEIMAN MARCUS mark. Respondent's domain name is a classic example of typosquatting, the process of registering a common misspelled version of a famous mark in a domain name. It has been consistently held that typosquatting renders the domain name confusingly similar to the altered famous mark.").

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The failure to produce a Response acts as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name and is regarded as substantive evidence of such.  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 Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”); 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 the complainant’s allegations as true).

The only evidence in the record that bears on whether Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) is the WHOIS registration information.  The WHOIS information lists the registrant’s name as Albert Jackson, not “Wyndham Vactions.”  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name <wyndhamvactions.com>.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”). 

The disputed domain name is confusingly similar to Complainant’s marks and is used to link to third-party websites that offer similar travel and vacation services as Complainant’s business.  Using a domain name identical or confusingly similar to a party’s mark to host a website that offers competing services with those offered by the party under its mark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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 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).

Moreover, Respondent’s typosquatting, itself, is evidence that Respondent lacks rights to and legitimate interests in the disputed domain name.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c.'").

Therefore, the evidence establishes that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using a domain name confusingly similar to Complainant’s mark to provide links to third-party websites that offer services that compete with Complainant’s business.  Such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii) because Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.  See 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); see also 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 Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Since Respondent registered a domain name confusingly similar to Complainant’s marks and used the name to offer competing services for commercial gain, the Panel concludes that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Bad faith under Policy ¶ 4(b)(iv) is established when a respondent uses a domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

Moreover, Respondent has engaged in the practice of typosquatting.  As a panel has previously stated, typosquatting is “strong evidence” of bad faith registration and use.  See Sportsman’s Guide, Inc. v. Vipercam, D2003-0145 (WIPO Apr. 10, 2003); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”).

Therefore, 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 <wyndhamvactions.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 2, 2004

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