WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diamond Resorts Holdings, LLC v. Walter P. Dolan, American Dream Connection
Case No. D2012-2483
1. The Parties
Complainant is Diamond Resorts Holdings, LLC of Las Vegas, Nevada, United States of America, represented by Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, United States of America.
Respondent is Walter P. Dolan, American Dream Connection of Cave Creek, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <diamondclubmember.net>, <diamondclubmembership.com>, <diamondclubmembership.net>, <diamondcruisevacation.com>, <diamondhotelvacation.com>, <diamondmember.net>, <diamondmemberships.net>, <diamondresortvacation.com>, <diamondvacationclub.com>, <diamondvacationclub.net>, <diamondvacationpoints.com>, <diamondvacationrewards.com>, <diamondvacationrewards.net>, <diamondvacationsclub.com>, <diamondvacationsclub.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with 14 of the 15 disputed domain names. On December 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on December 20, 2012, requesting clarification regarding one of the domain names listed in the Complaint. In response to this request, Complainant filed an amendment to the Complaint on January 11, 2013, dropping one domain name from the Complaint, and including another domain name. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added domain name. On January 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On January 1, 3 and 5, 2013, Respondent submitted a Response and Annexes.
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 Respondent of the Complaint, and the proceedings commenced on January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. On January 16, 2013, the Center requested confirmation from Respondent whether Respondent’s submissions of January 1, 3 and 5, 2013 could be regarded as its complete Response. Respondent replied on January 17, 2013, stating that it would submit an “Addendum Response” on or before February 5, 2013. Respondent filed a second Response with the Center on February 4, 2013.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on February 13, 2013. 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 does have concerns about Respondent’s submissions, including the excessive length, the difficulty of review due to its mixture of single spacing and capitalization, the failure to follow a standard format for answering the enumerated claims of Complainant, the citation to cases separate from the answer, and the duplicative arguments made. Nevertheless, the Panel has considered all of the submissions.
4. Factual Background
There are very few facts that are not in dispute. Complainant Diamond Resorts Holdings, LLC is a United States of America (“U.S.”) company located in Nevada. Complainant is in the hospitality business owning branded and affiliated resorts throughout the United States and abroad. Complainant, who has an online presence at <diamondresorts.com>, has been using the DIAMOND RESORTS INTERNATIONAL name since 1999 in connection with the provision of hotels and temporary accommodations including the sales, marketing, advertising, business management and administration of hotels and vacation properties.
The disputed domain names were all registered between December 17, 2011 and January 12, 2012. As of the date the first of the disputed domain names was registered, Complainant owned four U.S. Principal Registrations for variants of DIAMOND RESORTS and one U.S. Supplemental Registration for THE CLUB. None of these registrations give Complainant exclusive rights in the word “diamond.” Further none of the disputed domain names is identical to the marks previously registered. During the period over which Respondent registered the disputed domain names and up through the filing of the pleadings in this case, numerous third parties have used, owned and/or registered domain names that include the words “diamond” and the words “club” without objection by Complainant. Complainant is aware of at least one such domain name, <diamondmembership.net>, which it originally included in the Complaint and subsequently dropped upon learning that this domain name was owned by a third party.
There appears to have been no communication or contact between the parties from December 17, 2011 when Respondent registered the first of the disputed domain names until December 5, 2012. During this period, Respondent did not make any active use of the disputed domain names. Respondent claims to have registered the disputed domain names with the possible intention of using them for or in connection with an online vacation club. None of the disputed domain names were ever used for that purpose. Instead, the disputed domain names appear to be on parked pages provided by the Registrar.
On December 5, 2012, almost one year after Respondent registered the last of the disputed domain names, Respondent contacted Complainant. At the time of this initial contact, six of the disputed domain names had expiration dates of December 17, 2012. Respondent identified the disputed domain names in his email to Complainant, advised Complainant that he learned of Complainant “after doing some research,” noted that Complainant might want to own the disputed domain names for Complainant’s marketing campaign, and asked if Complainant had any interest in purchasing the disputed domain names to allow Complainant to develop a more “expanded” online presence. In response to the email, Complainant’s Chairman and CEO responded as follows: “I’m sure our attorneys will have a fun time with you. Enjoy!” Respondent followed up with Complainant advising that his offer still stood and invited Complainant to make an offer for the disputed domain names if Complainant was so interested. There do not appear to have been further discussions. Two weeks later, on December 17, 2012, Complainant filed the present Complaint. In connection with the filing of this Complaint, Complainant also took upon itself the renewal of six of the disputed domain names that had December 17, 2012 expiration dates.
5. Parties’ Contentions
With respect to the specific elements that Complainant must prove under the Policy, Complainant makes the following claims:
1. Complainant alleges that it has trademark rights in DIAMOND RESORTS INTERNATIONAL, other DIAMOND marks, and the mark THE CLUB by virtue of its use of such marks and its ownership of numerous registrations for such marks in the U.S. and elsewhere.
2. Complainant contends that “its DIAMOND and THE CLUB marks” are associated by consumers exclusively with Complainant.1
3. Complainant contends that the disputed domain names either are identical or are confusingly similar to the DIAMOND and THE CLUB marks of Complainant. With respect to the disputed domain name <diamondresortvacation.com>, Complainant alleges confusing similarity because the domain name incorporates Complainant’s DIAMOND RESORTS mark in its entirety. Complainant also contends that each of the disputed domain names includes the word “diamond,” that the word “diamond” is the dominant element of each of the disputed domain names, and that this is identical to the primary distinctive term in each of Complainant’s marks although Complainant does not claim to have exclusive rights in the word “diamond” per se and has not submitted any proof of rights in the term “diamond.”
4. Complainant contends that Respondent has no rights or legitimate interests with respect to any of the disputed domain names on the grounds that Respondent was on constructive notice of Complainant’s registered marks before registering any of the disputed domain names, none of the disputed domain names resolve to any active website, Respondent has no license or permission to use Complainant’s marks, and Respondent is not commonly known by any of the disputed domain names.
5. Complainant contends that the disputed domain names were registered and are being used in bad faith. As evidence of bad faith, Complainant alleges that Respondent contacted Complainant with the intent to sell the disputed domain names to Complainant. Complainant also alleges that Respondent has a history of registering domain names for the purpose of selling them, that the existence of fifteen domain names that include the term “diamond” reflect a pattern of conduct intending to prevent Complainant from reflecting its marks in corresponding domain names, that Respondent has failed to actively use the disputed domain names, and that the domain names are parked on a website that appears to have sponsored ads.
With respect to the specific elements alleged by Complainant, Respondent asserts the following:
1. Respondent registered each of the disputed domain names in good faith to be used in connection with an online vacation club company but never used any of the names for that purpose.
2. The disputed domain names were not registered for purposes of reselling them to Complainant or any other entity.
3. Respondent did not register any of the disputed domain names with prior actual knowledge of Complainant or any of Complainant’s trademarks.
4. Only after Respondent decided not to use the disputed domain names did he contact Complainant. This contact occurred almost one year after the last of the disputed domain names was registered. Respondent never demanded any payment from Complainant for any of the disputed domain names.
5. Respondent has never engaged in registering domain names for purposes of resale.
6. The terms “diamond” and “club” are commonly used by third parties without objection by Complainant.
7. Respondent is not using the disputed domain names for profit, including for click-through revenue.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. If Complainant cannot satisfy any one of these three elements, the Complaint must be denied. Munchkin, Inc. v. WhoIs Privacy Protection Services, Inc. and Mamas and Munchkins, LLC, WIPO Case No. D2010-0014 (“The Policy’s requirements are conjunctive; Complainant’s failure to carry its burden of proof under any of the provisions of paragraph 4(a) results in a denial of the Complaint”). And if Complainant fails to satisfy any one of the three elements above, it is not necessary for the Panel to address the remaining elements. See Guarani S.A. v. Marchex Sales, Inc, Brendhan Hight, WIPO Case No. D2012-2139 (Panel refused to comment or address certain issues in rendering its decision on the grounds that the Complaint was denied on other grounds).
A. Identical or Confusingly Similar
Complainant has offered copies of registrations of DIAMOND RESORTS and other DIAMOND variant marks in the United States and elsewhere. Complainant’s ownership of these registered marks satisfies the threshold requirement of standing to pursue the UDRP.
As to whether the disputed domain names are identical or confusingly similar to Complainant’s rights, this presents a harder issue. None of the disputed domain names registered are identical to any of the trademarks owned or registered by Complainant. The closest is the domain name <diamondresortvacation.com>. Clearly, that domain name is confusingly similar to Complainant’s DIAMOND RESORTS INTERNATIONAL trademark registrations. As to the remainder of the disputed domain names, a determination on similarity is not necessary because even if the disputed domain names were deemed to be confusingly similar to Complainant’s marks, in light of the Panel’s determination of bad faith use and registration set forth below, the Panel need not parse which of the remaining disputed domain names may or may not be confusingly similar to Complainant’s identified marks. Metropolitan Life Insurance Company v. HLP General Partners Inc., WIPO Case No. D2005-1323.
B. Rights or Legitimate Interests
Respondent does not make any claims that would support a showing of rights or legitimate interests in the disputed domain names. The record in this case does not show any use by Respondent of any of the disputed domain names, any demonstrable preparations to use any of the disputed domain names or the use of any of the disputed domain names in connection with the bona fide offering of goods or services. At most, Respondent has advised that he was considering use of some or all of the disputed domain names for an online vacation club. Yet he has not used any of the disputed domain names as the name of that vacation club and it appears he no longer plans to do so. Further, Respondent has offered no evidence that he has ever been commonly known by any of the disputed domain names. Respondent also failed to show that he is making any legitimate noncommercial or fair use of any of the disputed domain names. Considering also that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, under these circumstances, Complainant has met its burden on this factor.
C. Registered and Used in Bad Faith
Before addressing whether the disputed domain names are registered and are being used in bad faith, it is instructive to bear in mind the purpose of a proceeding under the UDRP and the type of cases that are meant to be decided under the UDRP. The UDRP is a streamlined proceeding with a narrow focus, namely to resolve disputes concerning clear instances of abusive domain name registration and use. See Family Watchdog L.L.C. v. Lester Schweiss, WIPO Case No. D2008-0183. Cases appropriate for the UDRP are those where domain names are registered for the purpose of profiting from the goodwill associated with a complainant’s mark. The UDRP is not a vehicle for determining if a domain name may infringe a complainant’s rights. And the UDRP is not always the most appropriate forum for finding the truth among competing factual claims. Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006.
Neither party in this case has submitted a signed declaration setting forth any facts.2 Instead, the facts are part and parcel of the pleadings and those pleadings present diametrically opposed allegations. Complainant claims that Respondent had knowledge of Complainant’s rights before registering any of the disputed domain names. Respondent denies this. Complainant claims that Respondent targeted Complainant by registering the disputed domain names. Respondent denies this. Complainant alleges that Respondent sought to sell the disputed domain names for a price that exceeds the price that Respondent paid. Respondent denies this. Complainant claims that Respondent is using the disputed domain names for click-through revenue from the Registrar’s parking page. Respondent denies this. Had the facts alleged by Complainant been unrefuted, Complainant would have made out a prima facie case for registration and use of the disputed domain names in bad faith in accordance with paragraph 4(b) of the Policy. But each and every “fact” alleged by Complainant to establish bad faith has been answered by Respondent. While the Panel is not in a position on the submitted to assess the credibility of either side to determine who is or is not telling the truth, some of the documentary materials provided by the parties suggest that Complainant’s description of the facts may not be wholly accurate. For example, Complainant appears to be claiming that Respondent has a history of registering domain names for the purpose of resale, citing an email exchange between the parties attached as Annex C to the Complaint. Complainant does not proffer any reverse WhoIs evidence showing that Respondent has a history of registering domain names that incorporate third party trademarks, has not provided any UDRP or other decisions finding Respondent to be engaged in cybersquatting, and has not provided any examples where Respondent has registered a domain name for the purpose of resale. In addition, Respondent has offered an explanation for the very statements in his email that have been seized upon by Complainant. The Panel’s reading of the email exchange does not suggest any history of registering domain names for purposes of cybersquatting or profit.
Complainant next states that Respondent’s offer to sell the disputed domain names constitutes bad faith use and registration. Again, reviewing the email exchange relied upon by Complainant, the Panel cannot find in the email relied upon any evidence that the disputed domain names were registered for the purposes of resale to Complainant. While an offer for sale may satisfy a showing that the domain names are being used in bad faith, it does not address Complainant’s burden of proving that the disputed domain names have been registered in bad faith. This is especially so here where the offer for sale occurred months after the disputed domain names were registered. The record lacks any evidence to suggest that the disputed domain names were originally registered in order to sell them for valuable consideration.
Complainant next alleges that Respondent was on notice of Complainant’s rights. Respondent claims not to have been on notice. To the extent Complainant relies on the theory of constructive notice of its four U.S. principal registrations for DIAMOND RESORTS marks that pre-date the registration date of the first of the disputed domain names, constructive notice is not a mandatory doctrine under the UDRP.3 PC Mall, Inc. v. NWPCMALL LLC, WIPO Case No. D2007-0420; Kellwood Company v. Onesies Corporation., WIPO Case No. D2008-1172. And even if applicable, bad faith is not established merely because Respondent may have known of Complainant’s interest in the DIAMOND RESORTS marks. See Reliant Energy, Inc. v. Robert Wiggins, WIPO Case No. D2001-0769.
As to actual notice, there are certain marks that are so famous and so unique that the registration of a domain name that incorporates such a mark would inevitably lead to a finding of bad faith because it would be impossible for the respondent to be unaware of the marks. Marks such as EXXON and XEROX readily come to mind. Notwithstanding Complainant’s registrations for its marks, there is no evidence that the term “diamond” per se or any of Complainant’s marks is so well known. The Internet is replete with travel companies that use the term “diamond.” Diamond also is suggestive or perhaps descriptive of an exceptional or a luxurious level of service. Respondent has identified dozens of third parties who incorporate the term “diamond” in domain names. Complainant recognized that there are third parties that use the term “diamond” in or as part of a domain name when it dropped the domain name <diamondmembership.net> from its original Complaint because it was owned by a third party. Given that “diamond” is such a commonly used term, it cannot be assumed that any third party who uses “diamond” alone or in connection with other terms as a domain name adopted the domain name for purposes of trading on Complainant’s rights. See Orbas Holdings Limited v. Lu A Feng and Orbis Search, WIPO Case No. D2007-0515. Complainant offers no evidence to show the fame of its marks, no evidence that the term “diamond” is associated exclusively with Complainant, and no evidence that Respondent should have known of Complainant’s rights.
Indeed, Complainant failed to put into evidence any advertising or promotional materials that Respondent would have seen or any evidence of the scope and extent of advertising to make at least a circumstantial case that Respondent would have been exposed to Complainant’s mark. Given the lack of evidence and Respondent’s allegations that he had not heard of Complainant or its marks at the time he registered any of the disputed domain names, the Panel cannot find on this record that Respondent had actual knowledge (or even should have had actual knowledge) of Complainant’s marks when the disputed domain names were registered.
As to Complainant’s allegation that Respondent’s registration of fifteen disputed domain names creates a pattern of conduct of registering domain names “to prevent Complainant from reflecting its DIAMOND and THE CLUB marks in corresponding domain names,” as a preliminary matter the Panel notes that Complainant in fact does use <diamondresorts.com> as its own domain name. This ability to have an Internet presence has not been effected. Further, some of the disputed domain names have been registered for over a year. Complainant’s lack of action during this time is difficult to reconcile with any claim that any of the disputed domain names is needed or would be beneficial to its business.
Finally, Complainant’s allegation that Respondent obtained click-through revenue from the disputed domain names has been expressly denied by Respondent. The Panel cannot determine on the provided record whose version of the facts is correct. The Panel does note, however, that the web pages associated with the disputed domain names (Complaint Annex HH) do not appear to be tailored to Complainant’s services nor do the disputed domain names appear to trigger sponsored ads for obvious competitors of Complainant.
Looking at the facts that have been presented and the provided record, the Panel cannot determine if the disputed domain names were registered in good faith as requested by Respondent. At most the Panel can conclude that there is insufficient evidence on the record presented of bad faith use and registration. It may very well be the case that further evidence would allow a determination of bad faith or good faith to be made. The Panel however is limited to what was presented. Because there is insufficient evidence on balance of bad faith use and registration of the disputed domain names, the Panel finds that Complainant has failed to meet its burden of proof on this element on the provided record in these proceedings.
For the foregoing reasons, the Complaint is denied.
Barbara A. Solomon
Date: March 7, 2013
1 Complainant does not provide any definition for “DIAMOND and THE CLUB marks.” Thus, it is not clear if Complainant is alleging that it owns rights in all marks that include the words “Diamond” and/or “The Club” or only in those marks specifically identified. The Panel notes that there are no registrations identified by Complainant for DIAMOND per se and no indication that Complainant ever uses DIAMOND without other words, terms or phrases.
2 While the Panel has the discretion to request further statements and documents pursuant to paragraph 12 of the Rules, it ultimately is the parties’ burden and obligation to submit materials in a manner and form sufficient to prove the allegations. The Panel considered all of the facts presented and did not discount any allegations due to the lack of a declaration.
3 As to the non-U.S. registrations, Complainant offers no facts, evidence or case support that Respondent, a U.S. citizen, would have had either actual or constructive knowledge of Complainant’s non-U.S. marks at the time it registered any of the disputed domain names.