WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development
Case No. D2006-0020
1. The Parties
The Complainant is Sierra HealthStyles LLC, Tucson, Arizona, United States of America, represented by Hogan & Hartson, LLP, United States of America.
The Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2006. On January 12, 2006, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On January 12, 2006, BulkR 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. BulkR also confirmed that the language of the registration agreement is English. The Center verified that 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 January 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February�5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2006.
The Center appointed Warwick A. Rothnie, Terrell C. Birch and Joseph Dalby as panelists in this matter on February 21, 2006. The Panel finds that it was properly constituted. Each member of 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
The Complainant operates the Miraval Resort outside Tucson, Arizona in the United States of America.
The Complaint provides evidence that the Complainant has registered three trademarks in the United States:
Reg. No
Trademark
Filed
Services
2152729
MIRAVAL
June 7, 1995
Health care services in the fields of wellness and stress management
2114500
MIRAVAL LIFE IN BALANCE
June 22, 1995
Health care services in the fields of wellness and stress management
2114511
MIRAVAL LIFE IN BALANCE (fancy script)
July 24, 1995
Health care services in the fields of wellness and stress management
It also has a number of more recent, pending trademark applications in the United States of America which feature the word MIRAVAL.
The Complainant also alleges that its resort has a well established reputation as a luxury resort which, it is claimed, has received extensive publicity including being featured on the Oprah television show, voted the number one destination spa by readers of Travel + Leisure magazine for three years in a row and rated the number one spa in the world in 2005 by Zagat.
The Respondent would appear to have registered the domain name in 2003. Currently, and when the Complaint was lodged, the domain name resolves to a website which, under the heading “ Here are some related websites for: ”, features “sponsored links” to a number of spas, resorts and accommodation as well as links to “popular categories”. See Annex E to the Complaint. The spas, resorts and the like do not appear to be the Complainant’s resort.
5. Discussion and Findings
As noted above, there has been no Response. The Center did forward the Complaint to the Respondent by e-mail, fax and courier, however, to the addresses shown in the contact details for the domain name which have been confirmed as current and correct by the Registrar. Accordingly, the Panel finds that reasonable efforts have been taken to bring the dispute to the Respondent’s attention and to enable the Respondent to be heard.
In these circumstances, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name 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.
The Panel deals with each of these requirements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those trademark rights.
Here, the Complainant has demonstrated ownership of the registered trademarks in the United States of America identified above. These include Registration No. 2152729 MIRAVAL. The Panel also notes that the other two registrations feature the word MIRAVAL as a key element.
The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).
Here, the domain name has two differences from Registration No. 2152729 and the key element of the other two registrations: the addition of the .com suffix and the substitution of “i” for the first “a” in the trademark.
It has been well established that the inclusion of the gTLD should be disregarded for the purposes of the comparison. See for example Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No.�D2002-0582 concerning the inclusion of a gTLD.
The substitution of the “i” for the first “a” is visually apparent on close inspection. The domain name and the trademark, MIRAVAL, however, are phonetically similar. There are various ways that both versions of the word may be pronounced and some of these will or may sound the same or similar. The word element of the domain name created by the substitution of the “i” for the “a” is not a plain English word or otherwise generic. There are likely to be circumstances where a person might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the internet to “guess” at domain names. In these circumstances a finding of confusing similarity in line with the “typosquatting” cases is appropriate. See e.g. AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
Consequently, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s registered trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.”
The examples given in paragraph 4(c) are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty that a complainant faces in proving a negative of the sort required by paragraph 4(a)(ii) of the Policy, panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.
Although it is not expressly stated in the Complaint, it is clear from the Complaint that the Complainant contends that it has not licensed or approved the use of the domain name by the Respondent. The Complainant also points out that the Respondent does not appear to be commonly known by the word element of the domain name. The domain name is obviously not derived from the Respondent’s own name. The Complainant also points out that the domain name is being used to divert internet browsers to persons providing services competitive with the Complainant’s resort. The Respondent appears to derive revenues from such use, at least those described on its website as “sponsored links”. Further, neither term “Miraval” nor “Mirival” are generic terms or descriptive of spas and resorts or related services.
As already noted, the Respondent has failed to submit a Response. Therefore, the Panel is entitled to infer that the Respondent could not provide any information in rebuttal of the inference to be drawn from the combined weight of the matters alleged by the Complainant.
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent does not have rights or legitimate interests in the domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 that 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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As with the matters set out under paragraph 4(c), these factors are examples only and not an exhaustive listing of the grounds for bad faith.
The Complainant relies principally on the fact that the domain name resolves to a website which features links to websites and services of persons that compete with the Complainant. As already noted, this linking is done for the commercial gain of the Respondent. The Panel notes that the sponsored links on the Respondent’s website emphasise spas and resorts in Arizona (the location of the Complainant’s resort) and California.
Further, the Complainant points out that the Respondent has a history of registering other persons’ trademarks as domain names. Annex G to the Complaint contains a list of 16 previous domain name disputes in which the Respondent has had orders made against it. The Respondent has also been involved in many other disputes.
Thirdly, at least some of these disputes concerned allegations of typosquatting by the Respondent. See e.g. CIT Group Inc. v. SearchTerms and Modern Limited – Cayman Web Development, WIPO Case No. D2005-0921; WeddingC Inc. v. Modern Limited – Cayman Web Development, National Arbitration Forum Case No. FA271153; and Georgia Boot LLC v. Modern Limited – Cayman Web Development, National Arbitration Forum Case No. FA149173.
In these circumstances, the inference is clearly open that the Respondent knew of the Complainant’s trademark, MIRAVAL, and deliberately set out to adopt a domain name confusingly similar to that trademark with the intention of diverting customers from the Complainant and for the Respondent’s own commercial gain. The Respondent has not sought to rebut that inference.
Accordingly, the Panel finds that the Respondent has registered and used the domain name in bad faith.
6. 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, , be transferred to the Complainant.
Warwick A. Rothnie
Presiding Panelist
Terrell C. Birch
Panelist
Joseph Dalby
Panelist
Dated: March 7, 2006
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