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and Mediation Center
Sierra HealthStyles LLC v. LaPorte Holdings
Case No. D2006-0019
1. The Parties
Complainant is Sierra HealthStyles LLC, Tucson, Arizona, United States of America, represented by Hogan & Hartson, L.L.P., United States of America.
Respondent is LaPorte Holdings, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mirivalresort.com> (the “Domain Name”)
is registered with NameKing.com.
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 NameKing.com a request for registrar verification in connection with the Domain Name. On January 12, 2006, NameKing.com transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on January 20, 2006. 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 Respondent of the Complaint, and the proceedings commenced on January 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 14, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 2006.
The Center appointed Douglas M. Isenberg, Terrell C. Birch and Andrew Mansfield as panelists in this matter on March 9, 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.
On March 17, 2006, the Panel issued Procedural Order
No. 1 ordering Complainant to file an amendment to the Complaint indicating
the dates on which Complainant (1) sent or transmitted to Respondent a copy
of the Complaint, together with the cover sheet as proscribed by the Supplemental
Rules, and (2) sent or transmitted to the concerned registrar a copy of the
Complaint. On March 20, 2006, Complainant submitted to the Center an amendment
to the Complaint in which it stated that (1) it sent a copy of the Complaint,
together with the cover sheet as proscribed by the Supplemental Rules, to Respondent
on January 9, 2006, via e-mail, and (2) it “does not have a record showing
that a copy of the Complaint was sent to the Registrar on January 9, 2006.”
Nevertheless, the Panel notes that the registrar, NameKing.com, indicated in
its verification response of January 12, 2006 that it had received a copy of
the Complaint, and that the Center verified that the Complaint satisfies the
formal requirements of the Policy, Rules and Supplemental Rules and that the
Center notified the Registrar of the Complaint.
4. Factual Background
Complainant owns and operates the Miraval Resort, a luxury resort and spa near Tucson, Arizona. According to the Complaint, the Miraval Resort has received recognition that includes, but is not limited to, selection as the number one destination spa by the readers of Travel + Leisure magazine for three consecutive years, selection as the number one spa in the world by Zagat in 2005, and selection as the number one spa by the readers of Condй Nast Traveler in 1999. The Miraval Resort has also been featured on the poplar television show Oprah.
Complainant advertises and promotes the Miraval Resort through websites at the domain names <miravalresort.com> and <miravallifeinbalance.com>.
Complainant owns three United States trademark registrations. The first, Registration No. 2,152,729, is a word mark for MIRAVAL. The second and third registered trademarks, Registration No. 2,114,500 and Registration No. 2,114,511, are for a word mark and a design mark in MIRAVAL LIFE IN BALANCE. Complainant or its predecessors in interest first used the trademark MIRAVAL in 1995. Complainant has nine pending trademark applications before the United States Patent and Trademark Office, each of which contains the word MIRAVAL.
At the time the Complaint was filed, the Domain Name
displayed a page of links to third-party spa-related websites. The search results
were supplied by searchportal.com.
5. Parties’ Contentions
Complainant asserts that it has trademark rights to MIRAVAL (including the registrations cited above) and common-law trademark rights in MIRAVAL RESORT.
Complainant asserts that the Domain Name is confusingly similar to the trademarks MIRAVAL and MIRAVAL RESORT. Complainant argues that Respondent has engaged in “typosquatting,” as evidenced by the fact that the Domain Name is a misspelling of MIRAVAL through the change of one character. The first “a” is rendered as “i,” resulting in MIRIVAL. Complainant indicates that panels constituted under the Policy have a long history of finding that such slight misspellings render domain names confusingly similar to related trademarks. In addition, argues Complainant, the “.com” suffix does not distinguish the Domain Name from Complainant’s trademarks.
Complainant presents evidence that Respondent has no rights or legitimate interest in respect of the Domain Name. Complainant argues that Respondent is making commercial use of the Domain Name by displaying links to competing spa-related websites. Although this is a commercial use, Complainant states that such use is not a bona fide offering of goods or services. The Domain Name is not being used, according to Complainant, for legitimate noncommercial purposes or in a manner that constitutes a fair use of the trademarks at issue. Finally, to Complainant’s knowledge, Respondent has never been known by the Domain Name or any variation of it.
Complainant argues that Respondent registered and is using the Domain Name in bad faith. Typosquatting, Complainant argues, is evidence of bad faith. Complainant asserts that Respondent is profiting from the confusion between MIRAVAL and the Domain Name. Complainant presents evidence that Respondent has been a party in 25 prior domain name disputes brought under the Policy and that such a history is further evidence of registration and use in bad faith. Complainant argues that Respondent must have known of its trademark prior to the registration and use of the Domain Name as evidenced by the slight misspelling of its mark coupled with the offering of competing services on the website at the Domain Name.
Complainant notes that Respondent received the Domain Name from the initial registrant after the initial registrant received notice that the Domain Name infringed Complainant’s trademarks. The initial registrant also has a history of registering domain names with slight misspellings of trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the registrations cited by Complainant, the Panel is convinced that Complainant has rights in the mark MIRAVAL. With respect to the mark MIRAVAL RESORT, the Complaint contains only brief, unsupported (albeit unrebutted) assertions about Complainant’s usage of and common-law rights in this mark. However, as discussed below, the Panel need not consider Complainant’s rights in the mark MIRAVAL RESORT and, accordingly, it does not do so.
As to whether the Domain Name, <mirivalresort.com>, is identical or confusingly similar to Complainant’s MIRAVAL trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “mirivalresort”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
The Domain Name, <mirivalresort.com>, is not identical to the trademark
MIRAVAL, given the slight difference in spelling of the word “mirival”
and the presence of the word “resort” in the Domain Name. However,
Complainant need prove only that the Domain Name is “confusingly similar”
to a mark in which Complainant has rights. With respect to the slight misspelling
(“mirival” versus MIRAVAL), the Panel agrees with the cases cited
by Complainant, as well as many similar cases, finding that a slight misspelling
does not eliminate confusion. See, e.g., AltaVista Company v. Saeid Yomtobian,
WIPO Case No. D2000-0937 (finding the
domain name <altabista.com> confusingly similar to the mark ALTAVISTA,
without the need for discussion). Furthermore, a recent panel in a case involving
the same Complainant as in this case found the domain name <mirival.com>
confusingly similar to the mark MIRAVAL. Sierra HealthStyles LLC v. Modern
Limited - Cayman Web Development, WIPO Case No.
With respect to the addition of the word “resort” to the Domain
Name, the Panel finds that this word does not eliminate any confusing similarity.
Indeed, given that the word “resort” is clearly relevant to and
descriptive of Complainant’s business, the addition of this word “merely
compound[s] the confusion created by the incorporation of the Complainant’s
trademark.” Fairmont Hotel Management L.P. v. Puts, WIPO
Case No. D2001-0431 (“the added words ‘hotel’ and ‘-resorts’…
do not serve to make the inclusion of the Complainant’s trademark in the
domain names non-confusing.”).
Therefore, Complainant has proven that the Domain Name is confusingly similar to Complainant’s MIRAVAL mark, and Complainant has proven the first of the three elements required by the Policy.
B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out an initial prima
facie case that the respondent lacks rights or legitimate interests. Once
such prima facie case is made, respondent carries the burden of demonstrating
rights or legitimate interests in the domain name. If the respondent fails to
do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph
(visited March 21, 2006).
Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
As in another case involving Complainant, Sierra HealthStyles LLC v. Modern
Limited - Cayman Web Development, WIPO Case No.
D2006-0020, given Complainant’s federal trademark registration, use
of the Domain Name in connection with a website that provides links to competitors
of Complainant, and Respondent’s pattern of registering domain names that
contain trademarks owned by others, “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.”
Therefore, the Panel is convinced of the existence of bad faith, and Complainant
has proven the third of the three elements required by the Policy.
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, <mirivalresort.com>, be transferred to Complainant.
Douglas M. Isenberg
Terrell C. Birch
Dated: March 21, 2006