The Complainant is Hilton Worldwide, Inc. and HLT Domestic IP LLC of McLean, Virginia, United States of America, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd. of Tortola, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / David Woo of Hong Kong, China.
The disputed domain names <waldorfasoria.com> and <waldorfastorianewyork.com> are registered with Above.com Pty Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same date.
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” or “UDRP”), 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 October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on November 21, 2012. 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement with the Registrar, a copy of which has been provided by the Complainant.
The Complainant, which is headquartered in the United States, is a leading global hospitality company with more than 3,900 hotels and timeshare properties in 91 countries. Its brands include WALDORF ASTORIA Hotels and Resorts, which are located in 23 cities around the world (including in the United States, Asia Pacific, Europe and the Middle East).
The Waldorf Astoria New York Hotel opened on March 13, 1893. In 1949, Conrad N. Hilton acquired management rights to the hotel. The Hilton Hotel Corporation purchased The Waldorf Astoria New York Hotel in 1972.
The Complainant is the owner of approximately 208 trademark registrations or applications in approximately 179 countries or jurisdictions around the world for marks WALDORF ASTORIA, for instance WALDORF-ASTORIA, registered under No. 1,065,983 on May 17, 1977 by the US Patent and Trademark Office (together, the “Mark”).
The Complainant operates a website using the domain name <waldorfastoria.com>, which was created on December 24, 1999.
The disputed domain names were created respectively on the following dates: <waldorfasoria.com> on November 7, 2009; and <waldorfastorianewyork.com> on August 1, 2010.
(i) The Complainant submits that the disputed domain names reproduce the Mark in which the Complainant has rights, and are confusingly similar to the Mark insofar as one of the disputed domain names, <waldorfastorianewyork.com>, contains the Mark in its entirety and the other, <waldorfasoria.com>, as well, save for the omission of one letter "t". The Complainant also asserts that the addition of the geographic identifier “New York” as a suffix does not serve to distinguish the disputed domain name <waldorfastorianewyork.com> from the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Furthermore, the Complainant contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Mark in any manner. The Complainant also asserts that the Respondent has never been commonly known by either of the disputed domain names and has never acquired any trademark or service mark rights in any of the disputed domain names.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith and has never used, or made preparations to use, either of the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. It alleges that the Respondent is not making a legitimate noncommercial or fair use of either of the disputed domain names but instead is using the disputed domain names in connection with monetized parking pages that display links for hotel services that compete with the Complainant, including links labeled “Crowne Plaza Times Square,” “InterContinental Hotels,” “Holiday Inn Express Hotel” and “The Ritz-Carlton Hotels,” among many others.
(iv) The Complainant submits that by registering the disputed domain names, the Respondent sought to misleadingly divert consumers for commercial gain or to tarnish the Mark. Furthermore, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant's rights in and to the Mark when registering the disputed domain names.
(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration of the disputed domain names obviously prevents the Complainant from reflecting the Mark in corresponding domain names and because the Respondent has engaged in a pattern of conduct as evidenced by numerous proceedings against the Respondent under the Policy, which have resulted in decisions ordering transfers of the disputed domain names.
(vi) The Complainant requests that the disputed domain names be transferred to the Complainant HLT Domestic IP LLC.
The Respondent did not reply to the Complainant’s contentions.
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain names or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names, such as making legitimate noncommercial or fair use of the disputed domain names.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
With respect to the disputed domain name <waldorfasoria.com>
This disputed domain name <waldorfasoria.com> is almost identical to the Mark owned by the Complainant, which it replicates almost entirely. Indeed, the two words of the Complainant’s WALDORF ASTORIA mark are replicated, with only one middle letter “t” missing in the second component “astoria” of the disputed domain name.
The consensus view of UDRP panels is that a domain name which contains an obvious misspelling of a mark will normally be found to be confusingly similar to such mark, where the misspelled mark remains the dominant or principal component of the domain name. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Allstate Insurance Company v. Acme mail, WIPO Case No. D2010-2162; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Confédération Nationale du Crédit Mutuel v. Web Advertising Corp., WIPO Case No. D2007-0655; and Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460.
The Panel finds that the similarity in this case between the disputed domain name <waldorfasoria.com> and the Mark is such as to create a likelihood of confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
With respect to the disputed domain name <waldorfastorianewyork.com>
In comparing the Mark with the disputed domain name <waldorfastorianewyork.com> it is evident that the latter consists solely of the Mark, followed by the geographic identifier “New York”.
The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
Numerous UDRP panels have found that the addition of a geographic name to a domain name that contains a complainant’s trademark “increase[s] the likelihood of confusion between the domain name […] and the mark[].”. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246. See also Six Continents Hotels Inc. v. Mindwerk, Kevin M. Manhan, WIPO Case No. D2006-1074. This is especially true where the geographic identifier is associated with a location in which Complainant conducts business. See Hilton Worlwide; Hilton Hotels Corporation; HLT Domestic IP LLC; HLT International IP LLC v. WhoIs Privacy Service Pty ltd., Customer ID: 17451672649672/ Yorkshire Enterprises Limited, Yorkshire Enterprises, WIPO Case No. D2010-1066; and Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc., WIPO Case No. D2010-1064.
The Panel finds that the disputed domain name <waldorfastorianewyork.com> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain names resolves to monetized parking pages that display links for hotel services that compete with the Complainant's.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain names.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain names, (ii) has no connection to or authorization from the Complainant and (iii) is not commonly known by the disputed domain names.
In the circumstances, the Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy with respect to both disputed domain names.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain names similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
The Panel considers that the notoriety of the Mark makes it highly unlikely that the Respondent would have chosen to register the disputed domain names randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain names. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
The Complainant has argued that the Respondent is not making a bona fide use of the disputed domain names, and has stressed that the disputed domain names are used in connection to divert Internet users for commercial gain to competing services.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Panel also accepts that the Respondent’s website will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the uploading of third party links on the page to which the Respondent’s website resolves. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Besides, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
The Panel has found that there is a clear pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trade marks from reflecting such mark in a corresponding trade name, which is clearly evidenced by the five UDRP case decisions that have found against the Respondent for similar instances of unjustified domain name registration. See Universidad Autonoma de Nuevo Leon v. Above.com Domain Privacy/David Woo, WIPO Case No. D2010-1160; Revlon Consumer Products Corporation v. David Woo / Above.com Domain Privacy, WIPO Case No. D2010-1483; Intesa San Paolo S.p.A. v. Above.com Domain Privacy / David Woo, WIPO Case No. D2010-1566; Intesa San Paolo S.p.A. v. Above.com Pty Ltd./David Woo, WIPO Case No. D2010-1611; The American Automobile Association, Inc. v. Above.com Domain Privacy a/k/a Oliver Goldsmith/Host Master, Transure Enterprise Ltd./David Woo, DNWDDNS/Shu Lin, WIPO Case No. D2011-1884.
In addition, the Panel can discern no legitimate basis for the Respondent’s use of a privacy shield service and considers this fact under the present circumstances as also corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0696.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <waldorfasoria.com> and <waldorfastorianewyork.com>, be transferred to Complainant HLT Domestic IP LLC.
Louis-Bernard Buchman
Panelist
Date: December 6, 2012