WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hyatt Corporation v. Stealth Commerce
Case No. D2002-0365
1. The Parties
The Complainant is Hyatt Corporation ("the Complainant") of 200 West Madison, Chicago, Illinois, United States of America.
The Respondent is Stealth Commerce ("the Respondent") of Pasae Estate, Road Town, Tortola, British Virgin Islands.
2. The Domain Names and Registrars
The Domain Names the subject of the Complaint are <thehyatthotel.com> ("the Hyatt Domain Name") and <stanhopehotel.com> ("the Stanhope Domain Name"), (collectively called the "Domain Names").
The Registrar with which the Hyatt Domain Name is registered is Tucows, Inc. of 96 Mowat Ave., Toronto, Ontario, Canada.
The Registrar with which the Stanhope Domain Name is registered is Intercosmos Media Group, Inc. of 650 Poydras Street, Suite 2311, New Orleans, Louisiana, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received an electronic copy of the Complaint on April 18, 2002, and a hard copy of the Complaint on April 24, 2002. Additional e-mail communications were received by the Center from the Complainant on April 18 and 19, 2002, regarding its attempts to forward the entire Complaint by e-mail, and to inform the Center that a hard copy was being forwarded by Federal Express. An acknowledgement of Receipt of Complaint was sent by the Center on April 20, 2002.
On April 23, 2002, a Request for Registrar Verification was transmitted to both Registrars requesting them to :
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Rules"), Paragraph 4(b);
(2) confirm that the relevant Domain Name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the relevant Domain name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrarís WHOIS database for the relevant Domain Name registrant, technical contact, administrative contact and billing contact, for the domain name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the relevant Domain Name;
(6) indicate the current status of the relevant Domain Name;
(7) confirm the language of the registration agreement, and
(8) indicate whether the registrant for the relevant Domain Name has submitted in its registration agreement to the jurisdiction at the location of the principle office of the Registrar for court adjudication of disputes concerning or arising from the use of the relevant Domain Name (Rules, Paragraph 1).
On April 23, 2002, the Registrar, Tucows, Inc. confirmed by reply e-mail that the Hyatt Domain Name is registered with it and that the Respondent was the current registrant of the Hyatt Domain Name. Also on April 23, 2002, the Registrar, Intercosmos Media Group confirmed by reply e-mail that the Stanhope Domain Name is registered with it and that the Respondent was the current registrant of the Stanhope Domain Name.
Both Registrars also confirmed the Respondentís address and that the Respondent was listed as the Administrative, Technical and Billing Contact, providing e-mail and telephone details. The Registrars also forwarded the requested WHOIS details and confirmed that the Policy applies to the Domain Names at issue. The Registrar also confirmed that the language of the registration agreement is English.
The Registrars also confirmed that the Respondent has submitted in his Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.
On April 24, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
On April 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail to the Respondent. The Complaint Notification and the enclosed documentation were also forwarded to the Respondent by post.
As no Response was filed within the time specified by paragraph 5 of the Rules, on May 23, 2002, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant selected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.
The Administrative Panel appointed consists of Dr Annabelle Bennett SC ("the Panelist"). On June 6, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.
4. Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.
The Complainant is an internationally renowned hotel management company that, with its affiliates, operates various Hyatt hotels and resorts. The Complainant, and authorised users of its trade marks, own and/or operate Hyatt hotels in 37 countries throughout the world, including 120 hotels and resorts with more that 55,000 rooms in the United States, Canada and the Caribbean alone. One of these Hyatt hotels is The Stanhope Park Hyatt, New York, which is located in New York, New York, United Stated of America.
The Complainant maintains a significant internet presence, owning and operating the Hyatt website <www.hyatt.com>, which commenced operation prior to 2000. This website provides information on the Complainant's hotel services and related consumer-orientated promotions offered under the Complainant's trade marks. The Complainant's website allows customers to place, confirm and cancel reservations at Hyatt hotels worldwide, including the Stanhope. Information for the Stanhope can be accessed at <http://stanhopepark.hyatt.com>.
The Hyatt Trade Mark
The Complainant and its affiliates own numerous trade marks that are registered, or pending registration, in the United States of America and internationally. Examples of the Hyatt trade marks that are registered in the United States are:-
"Hyatt" - registration number 945,3843.
Date of registration: October 17, 1972, in respect of hotel, motel and reservation services, and
"Hyatt" - registration number 1,646,414.
Date of registration: May 28, 1991, in respect of hotel and restaurant services.
Copies of the certificates of registration were included in the Complaint. The Complainant or its predecessors first used the Hyatt trade mark in the United States as early as 1954. The Complainant's Hyatt trade mark is well known, inherently distinctive, famous and serves to identify the Complainant's goods and services. The trade mark has become distinctive as a result of the Complainant's many years of continuous, widespread use and extensive advertising and promotion of the trade mark. The trade mark is immediately recognizable by worldwide consumers of hotel services as identifying the Complainant's goods and services. The Complainant has acquired substantial goodwill in its Hyatt trade mark.
Further, the Complainant maintains a worldwide trade mark policy program to prosecute and deter infringement of its trade marks.
The Stanhope Trade Mark
The Complainant or its predecessors have continuously used the name and the trade mark Stanhope in connection with a hotel in Manhattan since at least 1926. The Stanhope hotel is part of the Complainant's "Park Hyatt" chain of luxury, boutique hotels. A page entitled "The Stanhope Park Hyatt New York", being a page from the Complainant's website was enclosed with the Complaint.
The Stanhope trade mark has become well known and distinctive among consumers of luxury hotel related goods and services as a result of almost eight decades of continuous, widespread use and extensive advertising and promotion. As a result, the Complainant has established substantial goodwill in its Stanhope trade mark.
The Respondent's Activities
Since about September 19, 2001, the Respondent, or its predecessor Telmex Management Services ("Telmex"), used the Hyatt Domain Name to link to a third party website, <www.virtualimo.com/t@w/index.html> or <http://temptationsatwork.com>, which promotes staffing services that combine secretarial and escort services of an adult nature. Copies of this website were included with the Complainant.
The Domain Names were originally registered by Telmex, a corporation that appears to be an affiliate of the Respondent as it has the same address as the Respondent. Further, in the WIPO decision of Six Continents Hotels, Inc. v Telmex Mgmt. Servs. WIPO Case No. D2001-0996, it was found that the Respondent and Telmex "represent the same person or interestsÖ".
In about September 2001, shortly after learning that the Respondent had registered the Hyatt Domain Name, the Complainant sent a letter to the Respondent via e-mail and Federal Express, informing the Respondent of the Complainant's registration, rights and interest in the Hyatt trade marks and requesting that the Respondent immediately refrain from using the Hyatt Domain Name. The Complainant also requested that the Hyatt Domain Name be assigned to it.
On about December 18, 2001, shortly after learning that the Respondent had registered the Stanhope Domain Name, the Complainant sent a letter to the Respondent via e-mail and Federal Express, informing the Respondent of the Complainant's rights and interest in the Stanhope trade mark, asserting that the Respondent's use of the Stanhope Domain Name violates these rights and requesting that the Respondent immediately refrain from using the Stanhope Domain Name. The Complainant also requested that the Stanhope Domain Name be assigned to it.
The Federal Express returned both the above letters as undeliverable.
5. Partiesí Assertions
A. The Complainant
The Complainant asserts that the Domain Names should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
The Complainant asserts that the Domain Names are identical to or confusingly similar to trade marks in which it has rights.
Two of the registration numbers of the Complainantís Hyatt trade mark and the goods or services in respect of which they are registered, are detailed in paragraph 4 above. The Complainantís extensive use of the Hyatt trade mark is also detailed above.
While the Complainant has not stated whether or not the Stanhope trade mark is registered, there is no requirement in paragraph 4(a)(i) of the Policy for a trade mark to be registered before the Complainant is entitled to the protection offered by the mandatory administrative proceedings offered by the Policy. The Complainant's rights in the Stanhope trade mark have arisen as a result of its continuous use over an extensive period of time, as detailed in paragraph 4 above.
The Complainant asserts that both the Domain Names are virtually identical to and confusingly similar to its trade marks. It asserts that the Hyatt Domain Name and the Stanhope Domain Name are instantly recognisable by the public as the Complainant's proprietary trade marks, Hyatt and Stanhope respectively. It also asserts that the inclusion in the Domain Names of the words "the" and "hotel" does nothing to diminish or alter that recognition, but rather adds to it. The Complainant relies upon the following WIPO decisions in support of this assertion: Six Continents Hotels, Inc v Telmex Mgmt. Servs., WIPO Case No. D2001-0996, McKinsey & Co., Inc and McKinsey Holdings, Inc. v Jerome Zimmermann, WIPO Case No. D2001-0009 and Volvo Trademark Holding AB v Cup Int'l Ltd., WIPO Case No. D2000-0338.
The Complainant also asserts that the Respondent's use of the Domain Names creates a likelihood of confusion among consumers by falsely suggesting that the Complainant is the source, sponsor, affiliate or endorser of the Respondent, its services and any websites that may be offered at or linked to the Domain Names.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:-
(1) Neither the Respondent nor its predecessor or affiliate Telmex are, or ever were, licensees of the Complainant nor were they ever authorised by the Complainant to use either the Hyatt trade mark or the Stanhope trade mark.
(2) The Respondent has no rights or legitimate interests in the Domain Names for adult/escort services.
(3) Neither the Respondent nor its predecessor Telmex were ever known by or doing business under "Hyatt" or "Stanhope" prior to its registration of the Domain Names. There has been no legitimate, non-commercial or fair use of the Domain Names.
(4) The Respondent has no interest in the Domain Names other than to reap commercial gain from misleading consumers and diverting them to its websites. It seeks to improperly trade upon the substantial goodwill associated with the Complainant's trade marks.
The Complainant asserts that the Respondent registered and is using the Domain Names in bad faith and relies upon the following assertions:
(1) The Respondent, under the name of its affiliate or alias Telmax, has registered and the Respondent is using the Domain Names intentionally to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Domain Names.
(2) The Respondent is using the Domain Names to link to sites that offer escort services of an adult nature clearly intending to misdirect internet surfers looking for the Complainant's sites to the Respondent's adult-orientated services. Use of a domain name for escort services of an adult nature is closely akin to using a domain name for a pornographic website. Use of another's mark in a pornographic website is bad faith: National Football League Props., Inc. v One Sex Entm't Co., WIPO Case No. D2000-0118 and Nokia Corp. v Nokiagirls.com, WIPO Case No. D2000-0102.
(3) The Respondent has engaged in a pattern of registering the famous marks of others in domain names for use in connection with adult-escort services. At least six ICANN panels have found that the Respondent, or its affiliate Telmex, registered domain names containing famous marks in bad faith for use in promoting adult-oriented escort services and ordered Telmex to transfer the domain names to the Complainants in each case. The Complainant listed all six of these cases, one of which, for example, is Six Continents Hotels, Inc. v Telmex Mgmt. Servs., WIPO Case No. D2001-0996.
(4) The Complainant asserts that it is clear that it suffers harm through disparagement from the bad faith use of its Hyatt and Stanhope trade marks, as a result of the association of its marks with sites that promote services of an adult nature as set out above.
(5) The Complainant has discovered that the Respondent has posted both the Domain Names for sale at Domainapex.com, an "auction community where buyers and sellers can exchange internet domain names". The Respondent is asking $2,500 for each of the Domain Names. Such an offer to sell the Domain Names is further proof of bad faith under paragraph 4(b)(i) of the Policy. Copies of the relevant printouts of the relevant Domainapex.com web pages describing its services were included with the Complaint.
B. The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))
The Domain Names in issue are <thehyatthotel.com> and <stanhopehotel.com>. The relevant parts of the Domain Names are <hyatt> and <stanhope> respectively.
The Hyatt Domain Name incorporates the relevant portion of the trade mark "Hyatt" and the Stanhope Domain Name incorporates the relevant portion of the trade mark "Stanhope". The Administrative Panel is satisfied that these parts of the Domain Names are identical to or confusingly similar to the respective trade mark "Hyatt" registered in the name of the Complainant and the trade mark "Stanhope" in which the Complainant has rights and interests.
Respondentís Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
The Complainant submitted substantial evidence of its registration and/or use of the "Hyatt" trade mark for over forty years. The Complainant also submitted evidence of its interest in and use of the "Stanhope" trade mark for almost eighty years.
Further, the Complainantís "Hyatt" and "Stanhope" marks have become well known through use over a long period of time. This use has been worldwide and the trade marks are widely known internationally.
The Complainant also submitted substantial evidence in support of its assertion that the Respondent can have no legitimate rights or interests in respect of the Domain Names pursuant to paragraph 4(a)(ii) of the Policy: see paragraph 5A above.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))
For the Complainant to satisfy this requirement it must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy: (Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003).
The Complainant relies upon grounds in support of its assertion that the Respondent has both registered and used the Domain Names in bad faith. These five grounds are detailed in paragraph 5A above and the facts supporting these grounds are detailed in paragraphs 4 and 5A above.
The Panel takes all these matters into account and, in the absence of any response from the Respondent, the Panel finds that the Complainant has established that the Domain Names have been registered and are being used in bad faith.
The Panel decides that:
(i) the Domain Names are identical or confusingly similar to a trade marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names, and
(iii) the Domain Names have been registered and are being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires the Domain Names <thehyatthotel.com> and <stanhopehotel.com> to be transferred to the Complainant.
Dr Annabelle Bennett SC
Dated: June 24, 2002