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Microsoft Corporation v. Source One Management Services, Inc. [2005] GENDND 612 (4 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dolce International Holdings, Inc. v. Dolce Hotels

Case No. D2005-0269

1. The Parties

The Complainant is Dolce International Holdings, Inc., Montvale, New Jersey, United States of America, represented by Bracewell & Patterson, LLP, United States of America.

The Respondent is Dolce Hotels, David Wani, Newport Beach, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <dolcehotels.com> (the “Domain Name”) which is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2005. That same day, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On March 16, 2005, Tucows 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 5, 2005. The Center verified that the Complaint together with the amendment to 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 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2005.

The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on May 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 owns hotel, conference center and resort facilities throughout the United States, Canada and Europe. Complainant also owns a family of DOLCE marks (e.g. Dolce Conference Solutions, Dolce Conference & Resort Destinations, Dolce Conference Technology) for use in connection with hotel and resort related services. A number of those marks are registered or in the process of being registered in the United States and in other countries (the “DOLCE Marks”). For example, Complainant began using the DOLCE INTERNATIONAL® mark (U.S. Reg. No. 2,094,545) in the United States in connection with managing and operating resort hotels and business conference centers at least at early as January of 1993, and has continuously used the mark ever since. Complainant also owns the domain name <dolce.com>, which it registered with Network Solutions, L.L.C. on May 10, 1996, (the “DOLCE domain name”).

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to Complainant’s DOLCE Marks and DOLCE domain name. Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established rights in the DOLCE Marks from use and registration on the Principal Register of the United States Patent and Trademark Office (“PTO), as well as rights in <dolce.com>. Those registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).

The principal issue here is whether, taken as a whole, <dolcehotels.com> is confusingly similar to the DOLCE Marks or Complainant’s domain name <dolce.com>. The Panel determines that confusing similarity exists. See The Boston Consulting Group, Inc. v. Rodney Thomas, WIPO Case No. D2005-0259 (May 2, 2005) (holding <bostonconsults.com> is confusingly similar to “the Boston Consulting Group”).

Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to the mark at issue. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Likewise, Respondent’s use of the descriptive word “hotel” in the Domain Name does not avoid confusion. To the contrary, it increases the likelihood of confusion to consumers because the word “hotels” is descriptive of the primary services provided by Complainant (in connection with its family of DOLCE Marks and the DOLCE domain name) as well as Respondent. As a result, an Internet user interested in making a hotel reservation using Respondent’s website may well be confused into believing that Respondent’s website is related to or affiliated with Complainant’s hotels and conference centers.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Complainant has established rights in the DOLCE Marks and DOLCE domain name for, among other things, hotel services; the same kinds of services that Respondent provides. It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the DOLCE Marks or the DOLCE domain name in connection with Respondent’s business or as part of the Domain Name. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following:

(i) 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 before any notice of the dispute; or

(ii) that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) that it was 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.

Respondent has provided no evidence to carry its burden. For example, there is no evidence that Respondent has been commonly known by the Domain Name. In fact it is unrebutted that Respondent did not register Dolce Hotels Corporation as a corporation in the State of California until July 26, 2002, which is after the date on which it registered the Domain Name (October 4, 2001).

There is also unrebutted evidence that the DOLCE Marks were well-known in the hotel industry at the time Respondent obtained the Domain Name. A reasonable investigation by Respondent at the time of registration would have shown that: (a) Complainant was using the DOLCE Marks in the hotel industry; (b) certain of Complainant’s DOLCE Marks were the subject of PTO registrations for hotel related services; and Complainant was using its DOLCE domain name in the hotel industry. Thus, the evidence strongly suggests that by using a domain name that is confusingly similar to the DOLCE Marks and the DOLCE domain name to sell hotel related services, Respondent is not making a bona fide or fair use of the Domain Name without the intent to gain a commercial benefit and to divert customers from a competitor. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004); See also, Household International, Inc. v. Cyntom Enterprises, NAF Case No. FA0010000095784 (November 7, 2000) (Holding that Respondent could not have any legitimate interest in the domain name at issue where “[t]he only inference is that he knew perfectly well that he would create confusion, or was willfully blind to this fact”.).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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.

Respondent either knew, or should have known, of the DOLCE Marks and DOLCE domain name at the time it registered the Domain Name insofar as the DOLCE Marks and DOLCE domain name were already being used and/or registered by the PTO in connection with similar and competing services as those proposed to be provided by Respondent. Respondent clearly had constructive, and likely had actual, notice of the DOLCE Marks and DOLCE domain name in conjunction with its hotel-related services and nonetheless selected a domain name that incorporated a prominent portion of the DOLCE Marks and DOLCE domain name. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002). To have proceeded with registration knowing of Complainant’s rights in the DOLCE Marks and DOLCE domain name demonstrates Respondent’s bad faith. See, America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001) (Respondent’s knowledge of Complainant’s mark before he registered the disputed domain name constitutes bad faith, especially where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name); See also, Educational Testing Service v. Park Jeong Foreign Language Inst., WIPO Case No. D2001-1064 (November 15, 2001); Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000).

Respondent is using the Domain Name in connection with a website that offers competing services to those of Complainant. It is unrebutted that Respondent is using the Domain Name to its advantage by attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the DOLCE Marks and DOLCE domain name as to the source, sponsorship, affiliation, or endorsement of the website.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.

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 <dolcehotels.com> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Dated: June 21, 2005