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Hyatt Corporation v. Spherexx.com [2005] GENDND 1959 (9 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hyatt Corporation v. Spherexx.com

Case No. D2005-0924

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 Spherexx.com, Becca Wilson, Tulsa, Oklahoma, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hyattplace.com> is registered with TierraNet d/b/a DomainDiscover (the “Domain Name”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2005. On August 31, 2005, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On September 1, 2005, TierraNet d/b/a DomainDiscover 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 September 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2005.

The Center appointed Timothy D. Casey as the Sole Panelist in this matter on October 25, 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

Complainant is an international hotel management company that, with its affiliates, operates various hotels and resorts under the HYATT brand. The HYATT brand is used in 43 countries on 212 hotels and resorts. Complainant and its affiliates own numerous United States and international trademark registrations and pending trademark applications relating to its HYATT hotel and resort services. The HYATT mark was first used in the Unites States at least as early as 1954. Complainant owns United States trademark registrations for HYATT, Reg. No. 945,384, and HYATT HOTELS & RESORTS, Reg. No. 1,646,414, among others.

Respondent’s Domain Name resolves to a “www.BuyDomains.com” generic website, which indicates that the Domain Name is reserved and that a website is coming soon, although the later statement is attributable to almost any domain hosted by “www.BuyDomains.com” and does not mean that a website is actually in the works or forthcoming. The “www.BuyDomains.com” website offers a search directory that provides links to a wide variety of services, including insurance, education, autos, business & economy, career employment, travel, technology, health and sports. If a user selects the travel link, the search directory delivers a webpage dedicated to a wide variety of travel offers, including discounts for hotels, as well as discounts for airplane travel, cruises, and other travel deals. A list of related links available on this webpage include hotel, travel, Hawaii, car rental, etc. The Hotel link includes links to other hotel discount services, as well as discounts for specific hotel chains, including Complainant’s HYATT hotels and resorts.

According to documents provided by Complainant, on August 8, 2005, Complainant’s counsel wrote to Respondent noting Respondent’s current non-use, Respondent’s operation as a web-design consulting service, pointing out Respondent’s alleged infringement, and demanding that Respondent cease use of the Domain Name and assign the Domain Name to Complainant. Complainant did not offer to compensate Respondent for the assignment of the Domain Name. On August 16, 2005, Respondent replied, via email, to Complainant’s August 8^th demand and stated that it was “not going to just hand over the domains to you and your firm. I understand you are best served by being aggressive in this matter, but I paid money for the domains. They are not free pieces of intellectual property. We are not planning on building anything on the domains”.

On the same day, Complainant’s attorney replied to Respondents email, via email, inquiring as to Respondent’s plans for the Domain Name, asking whether Respondent had registered any other domains using the HYATT marks, and asking for an explanation as to what Respondent meant by stating that the domains are not free. On August 23, Complainant’s attorney apparently called Respondent, who in turn requested that all correspondence be limited to email. Complainants counsel accordingly emailed Respondent on the same day effectively repeating its prior inquiries of Respondent. On August 24^th, Respondent replied, “Honey, these are the exact same questions the other lady asked. I can’t even think why it matters what I own. I own lots of domains. Some I use to develop websites and others I just hold. Can you just tell me what you want? You guys give new meaning to ‘beating around the bush.’ I’m real busy – just like everyone else. What is it that you need?”

Complainant’s counsel again replied on August 24^th demanding that Respondent transfer the Domain Name and “any other domain names which incorporate the ‘Hyatt’ mark” to Complainant, and threatening to fill a UDRP complaint with the next 24 hours if Respondent failed to confirm its intention to assign all such domain names. Respondent replied on the same day indicating that it was not using the Domain Name and did not understand how it could be infringing on the HYATT trademark if it was not using the mark. Respondent further indicated that it had not attempted to profit from Complainant, and alleged that Complainant had all but baited Respondent into asking for money.

As noted above, the Complaint was filed on August 30, 2005.

On August 9, 2005, Complainant filed an intent to use trademark application for HYATT PLACE for “Hotel, motel and reservation services; restaurant, bar and lounge services; specialized hotel services rendered as part of a program for frequent hotel guests; convention accommodation (sic) planning services”. The attorney of record in the trademark application is Carol Anne Been, one of Complainant’s counsels in this UDRP proceeding.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the Domain Name is identical or confusingly similar to Complainants HYATT mark because Respondent’s use of HYATT in the Domain Name is instantly recognizable by the public as HYATT’s proprietary mark identifying Hyatt’s hotel-related services. Complainant further alleges that Respondent’s incorporation of the term “place” does not make the Domain Name less confusing and cites two prior UDRP decisions for support of this point. Complainant particularly feels as though the Domain Name creates a likelihood of confusion by falsely suggesting that Complainant is the source, sponsor, affiliate or endorser of Respondent, its services and any websites that may be offered at or linked to the Domain Name.

Complainant asserts that Respondent has no interest in the dispute domain name because it is not and has not been a licensee of Complainant, or otherwise authorized to use the HYATT mark, that its use is not legitimate, noncommercial or fair use, and that Respondent refused to state any rights or legitimate interests it might have in the Domain Name during its discussions with Complainant.

Complainant also alleges that Respondent has registered the Domain Name in bad faith and is using the Domain Name in bad faith because the Domain Name is being used to direct internet users to the website content posted at the “www.BuyDomains.com” website, which provides links to travel-related websites that compete with Complainant. Even if Respondent were to be found to be passively holding the Domain Name, Respondent has still registered and is using the Domain Name in bad faith because the domain name involves a well-known trademark and there is not possibility of a good faith use of the Domain Name. Complainant further alleges Respondent’s bad faith by noting that Respondents initial email appears to seek a monetary payment for sale of the Domain Name to Complainant, without any suggestion from Complainant.

Complainant requests transfer of the Domain Name to Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies inter alia to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

3. The respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

A. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the Domain Name is identical or confusingly similar to the Complainant’s marks.

The Complainant has provided sufficient documentation to establish its rights in one or more trademarks under paragraph 4(a)(i) of the Policy.

The second requirement is that the Domain Names are identical or confusingly similar to the marks. Although the HYATT portion of the Domain Name is identical to Complainant’s HYATT mark, Complainant did not allege ownership of a trademark that includes the PLACE portion of the Domain Name. Accordingly, the Domain Name is not identical to any of the marks in which Complainant has established its rights under the Policy.

Nevertheless, it would seem that there is confusing similarity between the Domain Name and the HYATT marks because of the well known nature of the HYATT marks in the fields of hotels and resorts, and the Domain Name’s use of PLACE, which could be used to identify a place to stay, such as a hotel or resort. Hence the Panel concludes that the Domain Name is, for the purposes of the Policy, confusing similar to the Complainant’s marks.

The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the disputed domain names are confusing similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, that the Respondent is using the Domain Name to take advantage of the Complainant’s goodwill, and that the Respondent is not making any bona fide offering of goods or services using the Domain Name.

The Respondent has not responded to these assertions. However, in the interests of ensuring a fair application of the Policy, the Panel considers it relevant to consider whether there is any evidence to support the application of the examples provided in paragraph 4(c) of the Policy. Paragraph 4(c) provides the following examples of activities of the Respondent, which may lead to its obtaining rights or a legitimate interest in the domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

There is no evidence that any of the scenarios of paragraph 4(c) apply to the Respondent. Respondent has noted in correspondence with Complainant that it has made no preparations and presently has no intent to use the Domain Name in any manner. There is no evidence that the Respondent was ever known by a name similar to the disputed domain names. Nor is there evidence of legitimate non-commercial or fair use of the disputed domain names, nor any other bona fide offering of goods and services, by the Respondent, other than the provision of goods and services through the “BuyDomains.com” website, which is not an offering on behalf of Respondent.

As a result the Panel concludes that, even having considered the possible application of paragraph 4(c), the Respondent has no rights or legitimate interests in the disputed domain names. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the disputed domain names in bad faith and has used them in bad faith. The Complainant makes a number of submissions in relation to this point, including: (1) Respondent registered the Domain Name and is using the Domain Name to direct internet users to the website content posted at the “BuyDomains.com” website, which provides links to travel-related websites that compete with Complainant; (2) the Domain Name involves a well-known trademark and there is not possibility of a good faith use of the Domain Name by Respondent; and (3) Respondents initial email appears to seek a monetary payment for sale of the Domain Name to Complainant, without any suggestion from Complainant.

Complainant’s first submission is based on the bad faith exemplar outlined in paragraph 4(b)(iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

Complaint’s allegation that Respondent has attempted to attract Internet users to competing hotels through the “BuyDomains.com” website is not convincing. It should be noted that the “BuyDomains.com” website is generic in nature and does not even include a direct link to “hotels” on its main page. An Internet user would have to go looking for that information on the website by first going to the webpage associated with the travel link. While someone must surely gain commercially each time an Internet user accesses a website advertised through the “BuyDomains.com” website, there is no evidence that such commercial gain was Respondent’s intent when the Domain Name was registered. Furthermore, according to Respondent’s communication with Complainant, it is clear that Respondent does not even consider its present use of the Domain Name on the “BuyDomains.com” website as a use at all.

Although there is confusing similarity between the Domain Name and Complainant’s marks, the evidence does not support a finding that Respondent registered and used the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to a website. Complainant’s mere allegation that the Hyatt name is so well known that Respondent must have known of it prior to registering the Domain Name is insufficient proof of such knowledge by Respondent. While it is likely that Respondent has heard of Complainant’s hotel business, it is also just as likely that Respondent’s registration of the Domain Name had nothing to do with Complainant’s hotel business, as the name “Hyatt” is a relatively common name in the United States of America.

Thus, while the Domain Name does involve a well-known trademark, Complainant has failed to make an adequate showing that there is no possibility of a good faith use of the Domain Name by Respondent. Through its correspondence with Respondent, Complainant has shown that Respondent has no current intention to use the Domain Name, but it has also shown that Respondent is aware of Complainant’s trademark rights with respect to hotels and resorts and is aware of the potential consequences of using the Domain Name in such fields. Hence, it is more likely that Respondent will not use the Domain Name in the hotel and resort field as it is likely Respondent will use the Domain Name is such a field. Accordingly, in the absence of a showing of no possibility of a good faith use, bad faith has not been shown.

Finally, Complainant’s last submission alleges that Respondents initial email appears to seek a monetary payment for sale of the Domain Name to Complainant, without any suggestion from Complainant. It is far from clear what Respondent was seeking in its initial email, but if Complainant had wanted to engage Respondent in a conversation about the amount it would cost to transfer the domain name it could have, but did not. Rather, Complainant demanded Respondent transfer the Domain Name, and any other domain names that include HYATT, without any apparent offer to recompense Respondent for out of pocket expenses. Under such circumstances, it was not unreasonable for Respondent to point out that Respondent had paid money for the Domain Name. Complainant’s attempt to get Respondent to seek more than its cost to acquire the Domain Name was no more successful than Respondent’s attempt to get Complainant to quit “beating around the bush”. As a result, Complainant has failed to provide sufficient evidence that Respondent was seeking more than its cost to acquire the Domain Name as compensation for transferring the Domain Name to Complainant.

Given these points, the requirements of paragraph 4(b)(iv) are not made out, and as a result, the activity of the Respondent is not deemed to fulfill the bad faith use and registration requirements of paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Timothy D. Casey
Sole Panelist

Dated: November 29, 2005