WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc.
Case No. D2010-1064
1. The Parties
Complainants are Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC of McLean, Virginia, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America. Complainants are collectively referred to herein as “Complainant.”
Respondent is mga enterprises limited/ Domains by Proxy, Inc. of Derby, United Kingdom of Great Britain and Northern Ireland, and of Scottsdale, Arizona, United States of America respectively.
2. The Disputed Domain Names And Registrar
The disputed domain names <embassysuiteorlando.com>, <hamptoninn-outerbank.com>, <hiltondestin.com>, <hiltonemployee.com>, <hiltongradeninn.com>, <hiltonkeywestresort.com>, <hiltonneworleansriverside.com>, <niagarafallshampton.com>, <niagrafallsdoubletree.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2010. On July 1, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 2, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 27, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on August 10, 2010. 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 is a recognized leader in the global hotel lodging industry, offering rooms in 81 countries under the following brands, among others: HILTON, HILTON GARDEN INN, HILTON GRAND VACATIONS, DOUBLETREE, EMBASSY SUITES, HAMPTON and HAMPTON INN.
Complainant is the owner of numerous trademark registrations for the trademarks, HILTON, EMBASSY SUITES, DOUBLETREE, HAMPTON and HAMPTON INN for use in connection with hotel services. Details of Complainant’s United States Trademark registrations are attached in the Annexes to the Complaint.
Complainant is also the registrant of the domain names <hilton.com>, <hiltonhotels.com>, <embassysuites.com>, <doubletree.com> and <hampton.com>.
5. Parties’ Contentions
Complainant contends that the disputed domain names incorporate Complainant’s marks, are identical to and/or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
Complainant has demonstrated that it owns strong rights in the trademarks HILTON, DOUBLETREE, EMBASSY SUITES, HAMPTON and HAMPTON INN in the fields of hotel services. Each of the disputed domain names incorporates one of Complainant’s trademarks in its entirety. The addition of a descriptive word, such as “employee” or a misspelling of “garden,” or geographic locations such as “new Orleans,” “riverside,” “key west,” “niagara falls,” “outerbank,” “destin,” or “orlando” (some mistyped) do not add any distinctive subject matter for the purpose of evaluating confusing similarity, particularly as Complainant has numerous employees and operates hotels in the geographic locations indicated in the disputed domain names. Moreover, the generic “.com” extensions do not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Complainant contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the HILTON, EMBASSY SUITES, DOUBLETREE or HAMPTON trademarks.
There is no evidence of any commercial relationship between Complainant and Respondent which would entitle Respondent the use of Complainant’s marks.
There is no evidence that Respondent is or has been commonly known by any of the disputed domain names or has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Respondent is using the disputed domain names in connection with monetized parking pages that include links to websites offering services competitive with those offered by Complainant. Such use is not a bona fide offering of goods or services under the Policy.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or 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 the documented out of pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 the respondent has engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location of a product or service on the respondent’s website or location.
Respondent was obviously aware of Complainant’s trademark rights at the time of registering the disputed domain names. This is supported by the fact that the majority of the disputed domain names contain a geographical indication in connection with Complainant’s trademarks, which coincides with existing hotels owned by Complainant. Respondent is offering links on the websites at the disputed domain names to Complainant’s websites and to websites of Complainant’s competitors. Respondent is seeking to obtain a commercial benefit by attracting Internet users based on the confusion caused by the disputed domain names.
The submitted evidence demonstrates that Respondent is deliberately trading off the goodwill associated with Complainant’s marks and Internet traffic intended for Complainant’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s marks and thereby obtaining a commercial benefit. Such use evidences Respondent’s bad faith. In addition, the record indicates that Respondent has a pattern of registering domain names that incorporate well-known trademarks. See Humana Inc. v. MGA Enterprises Limited and Domains by Proxy Inc., WIPO Case No. D2006-1405; Morgan Stanley v. mga enterprises limited, NAF Claim No. 635051, Lauth Group Inc. v. MGA Enterprises Limited, NAF Claim No. 1124267; Exxon Mobil Corporation v. mga enterprises limited, NAF Claim No. 1273445; and Hasbro, Inc. v. mgaenterpriseslimited, NAF Claim No. 1281068.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith.
For all 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 <embassysuiteorlando.com>, <hamptoninn-outerbank.com>, <hiltondestin.com>, <hiltonemployee.com>, <hiltongradeninn.com>, <hiltonkeywestresort.com>, <hiltonneworleansriverside.com>, <niagarafallshampton.com> and <niagrafallsdoubletree.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Dated: August 27, 2010