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WIPO Domain Name DisputeCase No. D2005-0269

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WIPO Domain Name DisputeCase No. D2005-0269 Powered By Docstoc
					                WIPO Arbitration and Mediation Center

                       ADMINISTRATIVE PANEL DECISION

                   Dolce International Holdings, Inc. v. Dolce Hotels

                                  Case No. D2005-0269




1.   The Parties

     The Complainant is Dolce International Holdings, Inc., Montvale, New Jersey,
     United States of America, represented by Bracewell & Patterson, LLP,
     United States of America.

     The Respondent is Dolce Hotels, David Wani, Newport Beach, California,
     United States of America.


2.   The Domain Name and Registrar

     The disputed domain name is <dolcehotels.com> (the “Domain Name”) which is
     registered with Tucows.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on March 16, 2005. That same day, the Center transmitted by email to
     Tucows a request for registrar verification in connection with the Domain Name. On
     March 16, 2005, Tucows transmitted by email to the Center its verification response
     confirming that the Respondent is listed as the registrant and providing the contact
     details for the administrative, billing, and technical contact. In response to a
     notification by the Center that the Complaint was administratively deficient, the
     Complainant filed an amendment to the Complaint on April 5, 2005. 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”), 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 the
     Respondent of the Complaint, and the proceedings commenced on April 14, 2005. In

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     accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2005.
     The Respondent did not submit any response. Accordingly, the Center notified the
     Respondent’s default on May 12, 2005.

     The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on
     May 25, 2005. 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 owns hotel, conference center and resort facilities throughout the
     United States, Canada and Europe. Complainant also owns a family of DOLCE marks
     (e.g. Dolce Conference Solutions, Dolce Conference & Resort Destinations, Dolce
     Conference Technology) for use in connection with hotel and resort related services. A
     number of those marks are registered or in the process of being registered in the United
     States and in other countries (the “DOLCE Marks”). For example, Complainant began
     using the DOLCE INTERNATIONAL® mark (U.S. Reg. No. 2,094,545) in the United
     States in connection with managing and operating resort hotels and business conference
     centers at least at early as January of 1993, and has continuously used the mark ever
     since. Complainant also owns the domain name <dolce.com>, which it registered with
     Network Solutions, L.L.C. on May 10, 1996, (the “DOLCE domain name”).


5.   Parties’ Contentions

     A.   Complainant

     The Domain Name is identical or confusingly similar to Complainant’s DOLCE Marks
     and DOLCE domain name. Respondent has no rights or legitimate interests in the
     Domain Name. The Domain Name was registered and is being used in bad faith.

     B.   Respondent

     The Respondent did not reply to Complainant’s contentions.


6.   Discussion and Findings

     Paragraph 4(a) of the Policy requires that a Complainant prove each of the following
     three elements to obtain an order that a domain name should be cancelled or
     transferred:

          (i)   the domain name registered by the Respondent is identical or confusingly
                similar to a trademark or service mark in which the Complainant has rights;
                and
          (ii) the Respondent has no rights or legitimate interests in respect of the domain
                name; and
          (iii) the domain name has been registered and is being used in bad faith.




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A.    Identical or Confusingly Similar

Complainant has established rights in the DOLCE Marks from use and registration on
the Principal Register of the United States Patent and Trademark Office (“PTO), as well
as rights in <dolce.com>. Those registrations are entitled to a presumption of validity,
which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding,
WIPO Case No. D2004-0261 (June 1, 2004).

The principal issue here is whether, taken as a whole, <dolcehotels.com> is confusingly
similar to the DOLCE Marks or Complainant’s domain name <dolce.com>. The Panel
determines that confusing similarity exists. See The Boston Consulting Group, Inc. v.
Rodney Thomas, WIPO Case No. D2005-0259 (May 2, 2005) (holding
<bostonconsults.com> is confusingly similar to “the Boston Consulting Group”).

Regarding likelihood of confusion, it is well settled that the use of lower case letter
format and the addition of the gTLD “.com” are not significant in determining whether
the Domain Name is identical or confusingly similar to the mark at issue.
CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834
(September 4, 2000). Likewise, Respondent’s use of the descriptive word “hotel” in
the Domain Name does not avoid confusion. To the contrary, it increases the
likelihood of confusion to consumers because the word “hotels” is descriptive of the
primary services provided by Complainant (in connection with its family of DOLCE
Marks and the DOLCE domain name) as well as Respondent. As a result, an Internet
user interested in making a hotel reservation using Respondent’s website may well be
confused into believing that Respondent’s website is related to or affiliated with
Complainant’s hotels and conference centers.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been
satisfied.

B.    Rights or Legitimate Interests

Complainant has established rights in the DOLCE Marks and DOLCE domain
name for, among other things, hotel services; the same kinds of services that
Respondent provides. It is uncontested that Complainant has not licensed or
otherwise authorized Respondent to use the DOLCE Marks or the DOLCE
domain name in connection with Respondent’s business or as part of the
Domain Name. Insofar as Complainant has made a prima facie showing that
Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail
Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the
burden to Respondent to show by concrete evidence that it has rights or
legitimate interests in the Domain Names. See, e.g., Document Technologies,
Inc. v. International Electronic Communications, Inc., WIPO Case
No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy,
Respondent may satisfy its burden by demonstrating any of the following:

      (i)    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 before any notice of the
             dispute; or

      (ii)   that it has been commonly known by the domain name, even if it
             has acquired no trademark or service mark rights; or


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      (iii) that it was 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.

Respondent has provided no evidence to carry its burden. For example, there is no
evidence that Respondent has been commonly known by the Domain Name. In fact it
is unrebutted that Respondent did not register Dolce Hotels Corporation as a
corporation in the State of California until July 26, 2002, which is after the date on
which it registered the Domain Name (October 4, 2001).

There is also unrebutted evidence that the DOLCE Marks were well-known in the
hotel industry at the time Respondent obtained the Domain Name. A reasonable
investigation by Respondent at the time of registration would have shown that:
(a) Complainant was using the DOLCE Marks in the hotel industry; (b) certain of
Complainant’s DOLCE Marks were the subject of PTO registrations for hotel related
services; and Complainant was using its DOLCE domain name in the hotel industry.
Thus, the evidence strongly suggests that by using a domain name that is confusingly
similar to the DOLCE Marks and the DOLCE domain name to sell hotel related
services, Respondent is not making a bona fide or fair use of the Domain Name
without the intent to gain a commercial benefit and to divert customers from a
competitor. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case
No. D2004-0261 (June 1, 2004); See also, Household International, Inc. v. Cyntom
Enterprises, NAF Case No. FA0010000095784 (November 7, 2000) (Holding that
Respondent could not have any legitimate interest in the domain name at issue where
“[t]he only inference is that he knew perfectly well that he would create confusion, or
was willfully blind to this fact”.).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has
been satisfied.

C.    Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be
evidence of the registration and use of the domain name in bad faith:

      (i)    circumstances indicating that you have registered or you have 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 your documented
             out-of-pocket costs directly related to the domain name; or

      (ii)   you have 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 you have engaged in a pattern of such conduct;
             or

      (iii) you have registered the domain name primarily for the purpose of
            disrupting the business of a competitor; or

      (iv) by using the domain name, you have intentionally attempted to attract, for
           commercial gain, Internet users to your website or other on-line location, by
           creating a likelihood of confusion with the Complainant’s mark as to the


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                 source, sponsorship, affiliation, or endorsement of your website or location
                 or of a product or service on your website or location.

     Respondent either knew, or should have known, of the DOLCE Marks and DOLCE
     domain name at the time it registered the Domain Name insofar as the DOLCE Marks
     and DOLCE domain name were already being used and/or registered by the PTO in
     connection with similar and competing services as those proposed to be provided by
     Respondent. Respondent clearly had constructive, and likely had actual, notice of the
     DOLCE Marks and DOLCE domain name in conjunction with its hotel-related services
     and nonetheless selected a domain name that incorporated a prominent portion of the
     DOLCE Marks and DOLCE domain name. Kate Spade, LLC v. Darmstadter Designs,
     WIPO Case No. D2001-1384 (January 3, 2002). To have proceeded with registration
     knowing of Complainant’s rights in the DOLCE Marks and DOLCE domain name
     demonstrates Respondent’s bad faith. See, America Online, Inc. v. Anson Chan, WIPO
     Case No. D2001-0004 (February 22, 2001) (Respondent’s knowledge of Complainant’s
     mark before he registered the disputed domain name constitutes bad faith, especially
     where Respondent knew or should have known of the registration and use of the
     trademark prior to registering the domain name); See also, Educational Testing Service
     v. Park Jeong Foreign Language Inst., WIPO Case No. D2001-1064
     (November 15, 2001); Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The
     Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000).

     Respondent is using the Domain Name in connection with a website that offers
     competing services to those of Complainant. It is unrebutted that Respondent is using
     the Domain Name to its advantage by attempting to attract, for commercial gain,
     Internet users to its website by creating a likelihood of confusion with the DOLCE
     Marks and DOLCE domain name as to the source, sponsorship, affiliation, or
     endorsement of the website.

     For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been
     satisfied.


7.   Decision

     For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and
     15 of the Rules, the Panel orders that the domain name <dolcehotels.com> be
     transferred to the Complainant.




                                     Harrie R. Samaras
                                       Sole Panelist

                                   Dated: June 21, 2005




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