DECISION

Regent Hospitality Worldwide, Inc. c/o Carlson Companies, Inc. v. Regent Plaza Hotel

Claim Number: FA0105000097262

PARTIES

The Complainant is Regent Hospitality Worldwide, Inc. c/o Carlson Companies, Inc., Minneapolis, MN, USA (“Complainant”) represented by Gregory C. Golla, of Merchant & Gould P.C.  The Respondent is Regent Plaza Hotel, Karachi, Sind, Pakistan (“Respondent”) represented by Mahmood F. Baweja.

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is <regentplazahotel.com>, registered with Network Solutions, 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 (“the Forum”) electronically on May 18, 2001; the Forum received a hard copy of the Complaint on May 18, 2001.

On May 22, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <regentplazahotel.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 May 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2001 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@regentplazahotel.com by e-mail.

A timely response was received and determined to be complete on June 11, 2001.

On June 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to or confusingly similar to its marks registered for the use by the Complainant.  Further the Complainant contends that the Respondent has no rights or legitimate interests in the domain name, and that the Respondent has registered and is using the domain name in bad faith.

B. Respondent

Respondent did not interpose its contentions, but did fax a letter to the Forum on June 9, three days before the deadline, indicating that Respondent faxed a letter to the registrar requesting that it cancel the domain name.  Alternatively, Respondent requested a six-week extension of time to submit a formal response.  Respondent’s request for an extension was not in conformance with Rules and therefore invalid.  Respondent, in its facsimile, included a copy of a trademark search conducted in Pakistan for the REGENT

Mark, in which it claims to have a pending application in connection with hotel development.

FINDINGS

In 1996 Complainant commenced operating Regent hotels in the United States and  worldwide after acquiring these hotels from Four Seasons, which used the REGENT name since 1971.    In addition to the international trademarks, Complainant owns U.S. Federal Trademarks Registrations for the Regent mark.  The Respondent registered its domain name with Network Solutions, Inc. on October 6, 2000.

The subject domain name and the Complainant’s Regent mark have one dominant word: REGENT.  In addition, both  thereafter have the word HOTEL 

The Complainant has invested substantial sums of money in developing and marketing its business under the Regent Hospitality Worldwide mark and has developed substantial good will and customer loyalty.

The Respondent has no statutory or common law trademark or any other rights to the mark Regent or on the infringing domain name <regentplazahotel.com> which predate Complainant’s rights. 

Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor and has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site at <regentplazahotel.com> by creating a likelihood of confusion with the Complainant’s mark REGENT .  In addition, the subject web site offers products and services that are directly competitive with Complainant’s products and services under the mark REGENT.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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

In view of Respondent’s failure to submit a response in accordance with and in conformance with the rules, the “response” submitted by the Respondent is therefore deemed invalid. The Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e) 14(a) and 15(a) of  the Rules.

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

The regentplazahotel.com domain name is confusingly similar as it contains the identical mark of the Complainant, combined with generic words describing the type of business in which Complainant is engaged.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusingly similarity).

In addition, the Respondent’s domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Rights or Legitimate Interests

Respondent is not making a legitimate noncommercial or fair use of the domain name.  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services)

Respondent did not use the domain name in connection with a bona fide offering of goods or services because of Complainant’s well-established use of its mark.  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).

Registration and Use in Bad Faith

Respondent has registered the <regentplazahotel.com> domain name primarily for the purpose of disrupting the business of Complainant. See Surface Protection Indus. v. The Webposters, D2000-1613 (WIPO Feb 5, 2001)  (finding that given competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with intent to disrupt Complainant’s business and create user confusion); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Respondent,  by creating a likelihood of confusion with Complainant’s mark has intentionally attempted to attract Internet users to its website for commercial gain, evidencing bad faith.  See Identigen, Inc.v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site): see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec.11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s make by offering the same chat services via his web-site as the Complainant.

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.

Accordingly, it is Ordered that the <regentplazahotel.com> domain name be transferred from the Respondent to the Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: June 25, 2001

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