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Hyatt Corporation v. NA [2005] GENDND 1067 (17 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hyatt Corporation v. NA

Case No. D2005-0419

1. The Parties

The Complainant is Hyatt Corporation, Chicago, Illinois, United States of America, represented by Sonnenschein Nath & Rosenthal, United States of America.

The Respondent is NA Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <hyattregency.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 20, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 21, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2005.

The Center appointed Amund Grimstad as the sole panelist in this matter on June 3, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant Hyatt Corporation is an international hotel management company which, with its affiliates, operates HYATT hotels around the world. HYATT hotels are present in 43 countries. In some countries authorized licensees run the HYATT hotels.

The trademark HYATT was registered as a trademark in the US in 1954. Registration No. 1,646414. The HYATT trademark is allegedly registered in a number of countries. By a simple search the Panel found that the trademark HYATT is registered as a community trademark in the European Union with priority from 1996. The trademark registration no is 000031575. Hyatt have also registered other trademarks using the brand HYATT.

The HYATT REGENCY brand is, and has been a hotel brand for Hyatt since 1969. The trademark HYATT REGENCY was registered in the US with registration no. 982, 652 and others in international class 42 Hotel Services in 1972. It is also alleged to be registered in a number of countries. By a simple search, the Panel found that the trademark HYATT REGENCY is registered as a community trademark in the European Union with trademark registration no. 000031559 with priority from 1996.

The trademarks HYATT and HYATT REGENCY have continuously been used worldwide in connection with the running of hotels and travel services since the 1970’s.

Hyatt hotels are present in both the Russian Federation and South Korea.

The HYATT website – “www.hyatt.com” - commenced its operation in 2000. The Complainant also owns and runs a number of other domains containing the brand HYATT and HYATT REGENCY in the domain name. The websites are used to provide information on Hyatt’s hotel services as well as allowing customers to place reservations on the Hyatt hotels.

The Respondent is NA. NA is not listed with address, phone or other contact details. The contact person for NA is the organization Free Parking, through Andrey Vasiliev in Moscow.

The Respondent registered the domain <hyattregency.com> (hereinafter also referred to as the “Domain Name”) on May 10, 2000. The original registrant Momm Amed IA has an address in South Korea. The administrative, technical and billing contact was Andrey Vasiliev, Free Domain Parking.

The Respondent has used the Domain Name to redirect visitors through a direct link to websites that provide hotel and travel services in competition with Hyatt’s hotel and travel services. The domain has been linked to the sites: “www.OneTravel.com”, “www.usseek.com” and “www.amxtravel.com”. None of these sites are authorized by the Complainant to use the trademark HYATT REGENCY, nor is the Respondent.

Hyatt has stated its objections to the use of the Domain Name, but no response has been received from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name <hyattregency.com> is identical to the Complainant’s HYATT and HYATT REGENCY trademarks, cf Policy, paragraph 4 (a) (i).

The Complainant contents that the Respondent has no legitimate rights in the trademark, cf. Policy, paragraph 4 (a)(ii)(c).

Furthermore, the Complainant states that the Respondent has registered and is using the Domain Name in bad faith, cf Policy, paragraph 4(b)(iv). The bad faith is evident from the Respondent’s attempt to attract Internet users to websites used for commercial gain and competing with the Complainant.

In addition it is contended that the Respondent has engaged in a pattern of registering marks of others in domain names, using these sites to redirect visitors to other sites. This practice is further evidence of bad faith, cf. ICANN Uniform Domain Name Dispute Resolution Policy, paragraph 4(b)(ii).

The Complainant also contends that the Respondent has intentionally submitted false or incomplete information registration record for the Domain Name. It is argued that this is a breach of Policy, paragraph 2(b)(a).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order for the Complainant to successfully argue that the Domain Name must be transferred to the Complainant, the domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights cf. Policy, paragraph 4(a)(i).

The domain <hyattregency.com> is identical to the Complainant’s HYATT REGENCY trademark.

Furthermore the Domain Name contains the HYATT trademark creating a similarity to this trademark.

The use of the trademarks in Respondent’s domain name is likely to create confusion amongst the consumers as to whether Hyatt is involved in the running of the websites which the domain name is linked to.

B. Rights or Legitimate Interests

Secondly the Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name, cf. Policy, paragraph 4(a)(ii).

The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. The Respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If a Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii), cf. WIPO Case No. D2003-0455.

The Complainant has made a prima facie case that the Respondent lacks rights of legitimate interests in the domain name. The record shows none of the circumstances described in paragraph 4(c) of the Policy.

In the absence of submissions from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the domain name has been registered and is being used in bad faith, cf Policy, paragraph 4(a)(iii).

The trademarks of the Complainant are registered in a number of countries and are used worldwide. The question is whether the Respondent has registered the domain name in bad faith, i.e. having the Complainant’s trademarks in mind.

The Respondent’s domain name is used to link to a commercial website. This constitutes “commercial” use of the domain name.

If the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a the Respondents web site or other location, this is evidence of bad faith, cf. Policy, paragraph 4(b)(iv).

The Panel agrees that the trademarks HYATT and HYATT REGENCY are well known. It is most likely that the Respondent was aware of the Complainant, its reputation in the hotel industry and its service marks, when the Respondent registered the domain name.

The Respondent has used and uses the domain name containing the Hyatt trademark, to automatically link visitors to the domains <onetravel.com>, <usseek.com> and <amxtravel.com>. These sites provide identical services as the Complainant’s trademarks are registered for; hotel, motel and reservation services.

The use of Hyatt’s trademarks is likely to attract Internet users searching for Hyatt’s services. By linking to competing websites - an impression is created that Hyatt is involved in the running of these websites. The Panel finds that the practice of registering a domain name and using it to redirect a user to a website which is used to sell competing services constitutes evidence of registering and using a trademark in bad faith.

The Respondent’s use of the domain name <hyattregency.com> to link to sites that directly compete with the Complainant is evidence of bad faith, cf. Policy, paragraph 4(b)(iv).

There is also further evidence of bad faith. If the Respondent has registered a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct, this will be evidence of bad faith, cf. Policy, paragraph 4(b)(ii).

The Respondent is shown to be engaged in at least one previous registration of a domain name containing a mark of a well known brand, and redirecting visitors to commercial websites.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hyattregency.com>, be transferred to the Complainant.

Amund Grimstad
Sole Panelist

Dated: June 17, 2005