national arbitration forum

DECISION

Wyndham IP Corporation v. LaPorte Holdings, Inc.

Claim Number:  FA0411000373545

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 LaPorte Holdings, Inc. (“Respondent”), c/o Nameking, Inc., 2202 South Figueroa Street, Suite 721, Los Angeles, CA 90023.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wynhdam.com> and <wyandham.com>, registered with Nameking.com, 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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 2, 2004.

On December 2, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <wynhdam.com> and <wyandham.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 December 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 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@wynhdam.com and postmaster@wyandham.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 January 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wynhdam.com> and <wyandham.com> domain names are confusingly similar to Complainant’s WYNDHAM mark.

2. Respondent does not have any rights or legitimate interests in the <wynhdam.com> and <wyandham.com> domain names.

3. Respondent registered and used the <wynhdam.com> and <wyandham.com> domain names in bad faith.

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

FINDINGS

Complainant, a provider of hotel and resort services, has used the WYNDHAM mark in connection with providing its goods and services continuously since 1982. Complainant holds numerous trademark registrations on the Principal Register of the United States Patent and Trademark Office for the WYNDHAM family of marks, including Reg. No. 1,442,514 for the WYNDHAM mark (issued February 21, 1995). Complainant also operates a website at the <wyndham.com> domain name.

Respondent registered the <wynhdam.com> domain name on February 28, 2003 and the <wyandham.com> domain name on September 16, 2004. The domain names resolve to websites that contain links to providers of competing services and to unrelated commercial websites. Respondent is not authorized or licensed to use Complainant’s mark for any purpose.

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 WYNDHAM mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1982. See 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.”); see also 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. Respondent has the burden of refuting this assumption.

The <wynhdam.com> and <wyandham.com> domain names are confusingly similar to Complainant’s WYNDHAM registered trademark. The <wynhdam.com> domain name merely transposes the letters “d” and “h” in the mark, and the <wyandham.com> domain name merely adds the letter “a” to the mark. Respondent’s intentional misspelling of the WYNDHAM mark does not distinguish the disputed domain names from the mark. Thus, the second-level domains are confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant; see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks; see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”; see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) finding the disputed domain name was a simple misspelling of Complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered famous mark”.

Furthermore, the addition of the “.com” generic top-level domain does not distinguish the disputed domain names from the WYNDHAM mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark.

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. Therefore, Complainant’s submission has gone unopposed and its arguments unrefuted. In the absence of a Response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Furthermore, because Respondent has failed to submit a Response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain names. See 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 which could demonstrate any rights or legitimate interests in the domain name; see also 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 the Complaint to be deemed true.

Respondent is not using the <wynhdam.com> and <wyandham.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). The record reveals that Respondent’s domain names redirect unsuspecting Internet users to websites that provide links to services that are in competition with Complainant’s services and to unrelated commercial websites. The Panel infers that Respondent commercially benefits from this diversion by receiving pay-per-click fees from advertisers when Internet users follow the links on its websites. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the WYNDHAM moniker; thus, Respondent fails to establish rights or legitimate interests in the domain names. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy.

No evidence before the Panel suggests Respondent is commonly known by the <wynhdam.com> and <wyandham.com> domain names under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain names is known as “LaPorte Holdings, Inc.” and is not known by either of the confusing second-level domains that infringe on Complainant’s WYNDHAM mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"; see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses confusingly similar misspellings of Complainant’s famous WYNDHAM mark within domain names to ensnare unsuspecting Internet users. Respondent then redirects the users to its websites, which offer links to websites that sell competing and unrelated services. The Panel infers that Respondent commercially benefits from this diversion by receiving pay-per-click fees from advertisers when Internet users follow the links on its websites. Such infringement is what the Policy was intended to remedy. Accordingly, the Panel finds that Respondent registered and used the <wynhdam.com> and <wyandham.com> domain names in bad faith under Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain; see also Kmart v. Khan, 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).

Respondent has registered and used domain names that are confusingly similar to Complainant’s mark for the purpose of directing Internet users to businesses that offer services that compete with those offered by Complainant. Respondent’s use of the <wynhdam.com> and <wyandham.com> domain names establishes that Respondent registered and used the domain names for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding that 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 diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain names, additional factors can also be used to support findings of bad faith. See 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”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s intentional misspelling Complainant’s WYNDHAM mark, resulting in domain names that are confusingly similar to the mark, is evidence of bad faith registration and use of the disputed domain names. Respondent diverts Internet users who accidentally mistype Complainant’s mark to Respondent’s websites. The Panel finds that Respondent engaged in the practice of typosquatting, which is evidence that Respondent registered and used the <wynhdam.com> and <wyandham.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See 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”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark. "Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."; see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark and stating, "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii)."

Respondent’s registration of the <wynhdam.com> and <wyandham.com> domain names, which incorporate Complainant’s well-known registered mark and simply transpose letters or add a letter, suggests that Respondent knew of Complainant’s rights in the WYNDHAM mark. Additionally, Complainant’s trademark registration, on file at the United States Patent and Trademark Office, gave Respondent constructive notice of Complainant’s mark. Moreover, the domain names resolve to websites that provide links to Complainant’s competitors and other commercial websites. Thus, the Panel finds that Respondent chose the domain names based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”; see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names; see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith; 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; see also Orange Glo Int’l v. 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”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <wynhdam.com> and <wyandham.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  January 17, 2005

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