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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wyndham International, Inc. and Wyndham Hotels and Resorts v. Lorna Kang
Case No. D2002-0459
1. The Parties
The Complainants are Wyndham International, Inc. and Wyndham Hotels and Resorts, both of Dallas, Texas, United States of America.
The Respondent is Lorna Kang, Telok Intan, Perak, Malaysia. Administrative and Technical Contact for the domain name is the same person, of the same address.
2. The Domain Name and Registrar
The domain name in issue <wyndhamhotels.com> (hereafter "the domain name").
The domain name was registered with iHoldings.com d/b/a Dotregistrar.com.
The domain name was registered on or about April 1, 2002.
3. Procedural History
(1) The Complaint in this case was filed in email form on May 14, 2002, and in hardcopy on May 22, 2002.
(2) The WIPO Arbitration and Mediation Center ("the Center") has found that:
- The Complaint was filed in accordance with the requirements of the Rules and WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (respectively, "the Rules", "the Supplemental Rules");
- Payment for filing was properly made;
- The Complaint complied with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint was not filed;
- The Respondent was appropriately served with a Notice of Default; and that
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) For reasons explained in section 4.A. below, on June 25, 2002, I made an order that the Complainants provide additional information as to trademark registration and corporate ownership within 14 days, and that the Respondent be given an opportunity to respond to this additional information. The Complainants responded to this order within the time allowed (as explained in section 4, below) but the Respondent made no response in relation to this information.
(5) The date scheduled for issuance of a decision was July 3, 2002, however by virtue of the facts provided in the previous paragraph the decision date was amended to July 19, 2002.
(6) No other extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its marks
The firstnamed Complainant (hereafter "Wyndham") is an international enterprise engaged in the hotel and resort industry and headquartered in Dallas, Texas, United States of America. Wyndham owns, leases, manages, and franchises hotels worldwide. Wyndham promotes its premier properties under the name Wyndham, including Wyndham Hotels and Wyndham Luxury Resorts. Wyndham owns or operates approximately 220 properties in the United States, Canada, Mexico, the Caribbean, and Europe. Over 150 of these hotels use the word Wyndham in their name. In 2001, Wyndham had a total of over 10 million guests lodge at its properties worldwide. Wyndham has received numerous industry awards for its accommodations and services, including: the Hospitality Sales & Marketing Association International's "Best of Show" Award for excellence in advertising in February 2002; the 2001 Hospitality Technology Lodging Award for IT Operator of the Year; the 2001 Information Week 500 award; and the 2001 CIO-100 Award from CIO Magazine. Further, Wyndham's The Lodge at Ventana Canyon was voted the No. 1 Resort in North America and The Boulders was voted the No. 3 Resort by Conde Nast Traveler in November 2001.
The Complainants indicate in the Complaint that they are the registered proprietor of some 400 United States and international trademarks and service marks, all for the mark "WYNDHAM" or "WYNDHAM HOTELS". However they provided documentary evidence for only two marks, both of which are registered in the US Principal Register, work mark No. 2,300,685 ("WYNDHAM INTERNATIONAL") in international class 42 and word and device mark No. 2,096,650 ("WYNDHAM HOTELS & RESORTS" and device). (Hereafter these registrations will be referred to as "the Complainant’s marks".) Both of these marks are registered to "Wyndham IP Corporation," however the latter mark indicated that the mark was assigned from the firstnamed Complainant. In light of the equivocal evidence of ownership, on June 25, 2002, I made the following order:
"In accordance with the Panel’s discretion under Rules, paragraph 12, the Panel makes the following order:
1. The Complainants have provided trademark registration documents that indicate ownership of the trademarks by a non-party to the action ("Wyndham IP Corporation"), but indicate the name of one of the Complainants as assignee of the marks. The Respondent should not be disadvantaged by the Complainant's mistake.
2. The Complainants are requested to provide either (1) evidence of corporate ownership of Wyndham IP Corporation residing in the Complainants, or (2) evidence of a license, assignment, or other legal relationship in respect of the trademarks, from Wyndham IP Corporation to the Complainants.
The Complainants should provide such further information by July 11, 2002.[…]
If the Respondent wishes to file a response to any such further information provided by the Complainant, the Respondent is requested to indicate such to the Center (by email to <email@example.com>) by July 15, 2002. If the Respondent so indicates its intention to file a response, the Respondent will have until July 25, 2002, to file arguments in response to any further evidence provided by the Complainant. If no communication is received from the Respondent, the Panel will proceed to render its decision.
Unless a communication is received from the Respondent as requested above, the Panel will render its decision to the Center by July 19, 2002."
On July 11, 2002, the Complainants provided an affidavit sworn by John Bohlmann, a deputy general counsel and officer of the firstnamed Complainant. Mr. Bohlmann’s affidavit attests to the fact that the owner of the trademarks, Wyndham IP Corporation, is a wholly-owned subsidiary of the firstnamed Complainant. The effect of this evidence will be discussed in section 6, below.
The Respondent made no submissions in relation to this evidence.
B. The Respondent
According to the Whois database of the concerned registrar the Respondent in this administrative proceeding is as provided above. No Response was filed and so no further information is known about the Respondent.
C. The Use of the Domain Name
When Complainants first discovered Respondent’s unauthorized use of <wyndhamhotels.com>, the domain name resolved to the travel page for <gito.com>, which advertises hotel reservation booking, among other travel services, through Priceline.com®. After a cease-and-desist letter from the Complainants, Respondent altered its diversion of Internet users from Gito.com's travel page to <hotwire.com>, the Hotwire.com™ hotel reservation Web page. When Complainants notified Hotwire.com™ of the Respondent’s unauthorized use of their protected marks, Respondent altered the diversion of Internet users to another travel reservation site, OneTravel.com at <http://www.ownbox.com/treasure/travel.html>.
5. Parties’ Contentions
A. The Complainants’ assertions
The Complainants assert that Respondent’s domain name is identical or confusingly similar to the Complainants’ marks. Specifically, the Complainants assert:
(1) That they are the registered owner of relevant trade and service marks, and common law trademarks;
(2) By virtue of the arbitrary nature of the WYNDHAM and WYNDHAM HOTELS marks, as applied to Wyndham's goods and services, and Wyndham's extensive use, promotion, and registration of its marks, the WYNDHAM and WYNDHAM HOTELS marks have become well-known around the world in the hospitality industry and to individuals and organizations that require hotel and related services.
The Complainants assert that Respondent has no rights or legitimate interests in the domain name. Specifically, the Complainants assert:
(1) Respondent is not using, has not used, and has at no time demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services. The only use of the site is improperly utilizing Wyndham's name and marks to attract Wyndham's customers to competing travel services benefiting Respondent;
(2) Respondent is not and has not been commonly known by the domain name; and
(3) Respondent is not making legitimate non-commercial or fair use of the domain name, without intending to mislead and divert consumers or to tarnish Wyndham's WYNDHAM or WYNDHAM HOTELS marks for commercial gain.
The Complainants assert that Respondent registered the domain name and is using it in bad faith. Specifically, the Complainants assert:
(1) Respondent's pattern of misappropriation demonstrates bad faith under paragraph 4(b)(ii) of the Policy;
(2) Respondent's intentional creation of likelihood of confusion with Wyndham's marks and diversion of Internet users to another website demonstrate bad faith under paragraph 4(b)(iv) of the Policy;
(3) Respondent's registration was for the primary purpose of disrupting its competitor Wyndham's business demonstrates bad faith under paragraph 4(b)(iii) of the Policy.
Accordingly the Panel should order that the domain name be transferred to the Complainant.
B. The Respondent’s assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to make out three elements:
A. 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
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and
C. 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 marks.
The Complainants provided registration documents for two marks, within the USA. However, as discussed above, the registration of these marks are in the name of Wyndham IP Corporation, though with an indication on the register that this corporation takes these marks as assignee of the firstnamed Complainant. By virtue of the events explained in section 4.A. above, the Complainants have established that Wyndham IP Corporation is a wholly-owned subsidiary of the firstnamed Complainant. As a result I conclude that the firstnamed Complainant – as the corporate owner of the registered proprietor of the marks – has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).
The second requirement is that the domain name be identical or confusingly similar to the marks. The domain name is not identical to the Complainants’ marks, but it does comprise the salient and memorable features of the Complainant’s marks, together with a description of the service they offer. Moreover, the domain name restates the Complainants’ obvious contraction ("Wyndham Hotels"). The domain is very likely to result in confusion in the minds of users, and therefore I conclude that the domain name is confusingly similar to the Complainants’ marks.
The firstnamed Complainant has shown that it has rights in trade marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the firstnamed Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. The Respondent has no rights or legitimate interest in respect of the domain name
The Complainants assert that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the Policy. They make a number of specific arguments on this point, as provided above in section 5.
The Complainants’ assertions go to the requirements under Paragraph 4(c) of the Policy. This is appropriate, since, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4(c) might apply. Paragraph 4(c) of the Policy provides the following examples to the Respondent:
"(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 here. Instead, one piece of evidence specifically negatives any assumption of legitimate use by the Respondent. The domain name has, at various times, resolved to a number of sites which offer commercial services such as hotel reservations, as described in Section 4.C. above. Clearly the Respondent is seeking to gain advertising or other revenues from the association in people’s minds of the Complainants and the domain name. This evidence, together with the absence of other evidence in the Respondent’s favor, removes any need to consider more closely whether the Respondent has any rights or legitimate interest in the name.
As a result I conclude that, even having considered the possible application of Paragraph 4(c), the Respondent has no rights or legitimate interest in the domain name. I conclude 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 domain name in bad faith and continues to use it in bad faith. The Complainants make three submissions in relation to this point, which go to three of the sections of paragraph 4(b).
Paragraph 4(b) of the Policy provides exemplar scenarios which will be sufficient to establish the requirements of Paragraph 4(a)(iii). Pursuant to paragraph 4(b)(iv) where the Respondent has used the domain name in an attempt "to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion of the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [Respondent’s] web site or location", bad faith will be established. As explained in the previous section, this has occurred here. The Wyndham name is well-known as a brand denoting a chain of hotels. The Respondent uses the well-known Wyndham brand as a domain name, and directs this to hotel-booking sites. This activity falls clearly into the exemplar of Paragraph 4(b)(iv). Secondly, the Respondent appears to be engaged in a pattern of misappropriation of domain names in this area—specifically her registration of multiple domain names from the hotel industry—as provided for in paragraph 4(b)(ii). However, given that that the name Lorna Kang may be an alias, it is hard to say this definitively. The answer to this question is moot, since I find the elements of paragraph 4(b)(iv) to be established here. This means that the requirements of paragraph 4(a)(iii) are presumptively established.
I therefore conclude that the Complainants have satisfied paragraph 4(a)(iii) of the Policy.
The firstnamed Complainant has made out all of the elements of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name <wyndhamhotels.com> be transferred forthwith to the firstnamed Complainant.
Dated: July 19, 2002