Dolcehotel.com, Dolcehotels.com

The timeline behind dolcehotel.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Dolce International Holdings, Inc. v. Transure Enterprise Ltd c/o Host Master Claim Number: FA0909001286083 PARTIES Complainant is Dolce International Holdings, Inc. (“Complainant”), represented by Wendy L. Robertson, of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Tennessee, USA. Respondent is Transure Enterprise Ltd c/o Host Master (“Respondent”), British Virgin Islands. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <dolcehotel.com> and <dolcehotels.com>, registered with Above, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2009. On September 27, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <dolcehotel.com> and <dolcehotels.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. Above, Inc. has verified that Respondent is bound by the Above, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dolcehotel.com and postmaster@dolcehotels.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <dolcehotel.com> and <dolcehotels.com> domain names are confusingly similar to Complainant’s DOLCE INTERNATIONAL mark. 2. Respondent does not have any rights or legitimate interests in the <dolcehotel.com> and <dolcehotels.com> domain names. 3. Respondent registered and used the <dolcehotel.com> and <dolcehotels.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Dolce International Holdings, Inc., has offered hotel and lodging services under the DOLCE INTERNATIONAL mark since at least as early as 1993. Correspondingly, Complainant is the owner of the DOLCE INTERNATIONAL mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,094,545 issued September 9, 1997). Complainant contends that it also has several pending trademark applications for similar marks incorporating “dolce” with the USPTO and other countries around the world. Complainant owns and operates twenty-four hotels across the United States, Canada, and Europe under the DOLCE INTERNATIONAL mark. Respondent, Transure Enterprise Ltd c/o Host Master, registered the <dolcehotel.com> and <dolcehotels.com> domain names on March 27, 2009 and March 30, 2009, respectively. Each of the disputed domain names resolve to websites featuring sponsored click-through links that further resolve to the websites of Complainant’s competitors in the hotel and conference center industry. DISCUSSION 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Respondent, Transure Enterprise Ltd c/o Host Master, registered the <dolcehotel.com> and <dolcehotels.com> domain names on March 27, 2009 and March 30, 2009, respectively. The Panel finds that Complainant has established rights in the DOLCE INTERNATIONAL mark through its registration of the mark with the USPTO ((Reg. No. 2,094,545 issued September 9, 1997). The Panel also finds that it is not necessary under the Policy for Complainant to have registered its DOLCE INTERNATIONAL mark in the country of Respondent’s residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Respondent’s disputed domain names each incorporate the distinctive portion of Complainant’s DOLCE INTERNATIONAL mark, namely, “DOLCE,” with the addition of the descriptive terms “hotel” or “hotels” and the affixation of the generic top-level domain “.com.” The Panel notes that the descriptive terms “hotel” and “hotels” have an obvious relationship to Complainant’s hotel and resort business and therefore, do not reduce the confusing similarities between the disputed domain names and Complainant’s mark. Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s DOLCE INTERNATIONAL mark under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant presents a prima facie case outlining these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has presented a sufficient prima facie case to support its allegations and that Respondent has failed to submit a response in this proceeding. Therefore, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The disputed domain names each resolve to a website featuring sponsored click-through links that further resolve to the websites of Complainant’s competitors in the hotel and conference center industry. The Panel presumes that Respondent is earning click-through fees for each Internet user that is redirected to the sponsored websites. Thus, the Panel concludes that Respondent’s use of the <dolcehotel.com> and <dolcehotels.com> domain names is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Moreover, Complainant contends that Respondent is not commonly known by either the <dolcehotel.com> or <dolcehotels.com> domain names pursuant to Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant as “Transure Enterprise Ltd c/o Host Master” and the Panel has no other information to rely upon in the record with respect to this element of the Policy. Therefore, the Panel finds that Respondent is not commonly known by either the <dolcehotel.com> or <dolcehotels.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The sponsored click-through links appearing on the websites resolving from the <dolcehotel.com> and <dolcehotels.com> domain names, which were registered on March 27, 2009 and March 30, 2009, respectively, promote hotel and resort businesses that compete with Complainant. The Panel finds that this use disrupts Complainant’s business and is evidence of bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Complainant further contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar disputed domain names by creating a likelihood of confusion with Complainant’s DOLCE INTERNATIONAL mark. The websites resolving from the disputed domain names each contain click-through links that further resolve to the websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use through the accrual of click-through fees. Thus, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <dolcehotel.com> and <dolcehotels.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: November 6, 2009 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.