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Fairmont Hotel Management L.P. v. Puts [2001] GENDND 968 (17 May 2001)

World Intellectual Property Organization

ADMINISTRATIVE PANEL DECISION

Fairmont Hotel Management L.P. v. Puts

Case No. D2001-0431

1.1. This Complaint was filed by Fairmont Hotel Management L.P., a Delaware limited partnership doing business at 100 Wellington Street West, Suite 1600, T.D. Centre, P.O. Box 40, Toronto, Ontario M5K 1B7 Canada ("Complainant").

1.2. The Respondent is Puts, apparently an individual purportedly contactable at POSTBUS 93118 Amsterdam, noordholland 109bc, the Netherlands ("Respondent").

2.1. The domain names the subject of this Complaint are <fairmonthotels.com> and <fairmont-resorts.com> (collectively "domain names").

2.2. The registrar of these domain names is Tucows.com Inc., of Toronto, Ontario, Canada ("Registrar").

3.1. On March 26, 2001, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on March 26, 2001, and the copy of the Complaint submitted by courier was received on March 29, 2001.

3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on April 2, 2001. By email to the WIPO Center on April 4, 2001, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the registrar of the domain names the subject of this Complaint; confirmed that the current registrant of those domain names is the Respondent, and provided a postal contact address for the Respondent; informed that the Administrative, Technical and Billing contacts of the Respondent ("Respondent’s Contacts") is one Henry Puts, and provided postal, telephone and email details for him; confirmed that the Uniform Policy applies to the domain names the subject of this Complaint; and informed that the current status of the domain names is "on hold".

3.3. On April 5, 2001, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier to the postal address of the Respondent and the Respondent’s Contacts as provided by the Registrar (this address being the same), and by email to the email address of the Respondent’s Contacts as provided by the Registrar as well as to postmaster@fairmonthotels.com and to postmaster@fairmont-resorts.com. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date. Records of the WIPO Center show that the emails to the Respondent’s Contacts and to postmaster@fairmonthotels.com and postmaster@fairmont-resorts.com were not deliverable, each having permanent fatal errors in the address. In addition, the hardcopy of the Notification of Complaint and Commencement of Administrative Proceeding sent by courier to the postal address of the Respondent and the Respondent’s Contacts was returned to the WIPO Center as undeliverable.

3.4. Rule 2(a) of the Uniform Rules requires the WIPO Center "to employ reasonably available means calculated to achieve actual notice to Respondent"; the Rule does not require that the Respondent actually receive such notice. Rule 2(a) specifies certain means, which, if adopted, shall discharge the WIPO Center’s responsibility in this respect. The case file records provided by the WIPO Center demonstrate that it has adopted those specified means. Accordingly, this Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules.

3.5. No Response was filed by the Respondent by the time specified in the Notification of Complaint. As at the date of this decision, no communication has been received from the Respondent. On April 25, 2001, the WIPO Center dispatched to the Respondent and the Respondent’s Contacts by courier and email a Notification of Respondent Default.

Constitution of Administrative Panel

3.6. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On May 8, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by May 22, 2001. The case before this Administrative Panel was conducted in the English language, this being the language of the registration agreement applicable to the domain name in issue.

3.7. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Complainant began providing service in the hospitality industry in 1907, and is now the largest luxury hotel management company in North America, with a collection of 36 hotels and 18,150 rooms throughout the United States, Canada, Bermuda, Barbados and Mexico operated under the trade name FAIRMONT HOTELS & RESORTS. Some of the most famous hotels in the world are part of the FAIRMONT HOTELS & RESORTS Group, including the world-renowned Fairmont San Francisco, the Plaza Hotel in New York, and The Copley Plaza in Boston.

4.2. The Complainant has used and owned the trademark FAIRMONT and variations thereof (the "FAIRMONT marks") for over 90 years. The Complainant has numerous registered, valid and subsisting registrations for the FAIRMONT marks in the United States Patent and Trademark Office, and in Canada. The Complainant has also obtained several Community Trademark (CTM) registrations for its FAIRMONT marks, giving it rights throughout Europe. Copies of Complainant’s registration certificates and/or printouts from the database providing full particulars of the Complainant’s registrations are annexed as Exhibit E to the Complaint. Most of these registrations are in international class 42, for hotel services.

4.3. There can be little doubt that the FAIRMONT marks of the Complainant are widely known and that their fame existed long before the registration of the domain names by the Respondent. Furthermore, the general public and media alike have recognized Fairmont as being a world leader in the hotel industry. Fairmont Hotels & Resorts dominated the 2001, Condé Nast Traveler’s Readers Choice Poll, with eighteen of its hotels and resorts appearing in the magazine’s coveted 2001, Gold List. The Gold List, known as the largest private poll of consumer attitudes in the United States, are based on the opinions of over 25,000 readers of the Condé Nast Traveler magazine. Fourteen Fairmont properties were named on the 2000 Travel & Leisure’s "World’s Best" readers poll, while Gourmet Magazine’s "Rooms At the Top" list included fifteen. Copies of all articles cited are included as Exhibit F to the Complaint. The public recognition of the Fairmont name has not been limited to the United States, but has been noted in European publications as well. In May of 2000, readers of the Condé Nast Traveller UK ranked Fairmont’s Banff Springs’ Solace Spa second for facilities and services in their Annual Readers’ Travel Awards, as shown by Exhibit F to the Complaint.

4.4. The Complainant has spent hundreds of millions of dollars in advertising and marketing the Fairmont Hotels & Resorts under the FAIRMONT marks. The Complainant constantly runs ads in such widely circulated magazines as Forbes, Vanity Fair, The New Yorker, Vogue and almost every travel magazine available in North America. In all advertisements, the FAIRMONT marks are prominently shown.

4.5. The Complainant already has a strong presence on the Internet. In June of 1999, Fairmont Hotels & Resorts launched its website, <fairmont.com>. On the Complainant’s authorized website, guests can link directly to information about each of the Fairmont Hotels & Resorts, as well as to information about the city in which the hotel is located. The details of each hotel's amenities, services and facilities, as well as more than 200 photos of Fairmont properties including exterior shots, guestrooms, dining facilities and meeting rooms, are also provided. There is a section of the website called "Our Concierge Suggests," that is updated daily, which provides a virtual concierge and offers web surfers local information typically provided by Fairmont's real concierges, including upcoming events, favorite local restaurants, area attractions and important travel tips. Other sections that are continuously updated include Dining & Entertainment and Packages & Promotions. Printouts from the Complainant’s website are annexed as Exhibit G to the Complaint.

4.6. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. On December 1, 2000, the Respondent registered the domain names <fairmonthotels.com> and <fairmont-resorts.com>. On January 1, 2001, H. Puts sent to a representative of the Complainant an email stating as follows:

"Att. Board of Directors // Sales-department now on auction: <fairmonthotels.com> <fairmonthotels.com> 30000 visitors per year, without website promotion. One and only one possibility to rent, lease or buy this domain. We can also make a redirection or url-forwarding to your "FAIRMONT" ulr/website. If you are interested please contact within 7 days: H. Puts h.j.a.puts@chello.nl"

4.7. On March 23, 2001, the Complainant visited the websites at <fairmonthotels.com> and <fairmont-resorts.com>, and found at these sites essentially identical webpages stating "This domain is for sale or rent - Please contact: h.j.a.puts@chello.nl". A copy of a printout of these pages are Exhibit B to the Complaint. The email address h.j.a.puts@chello.nl is the email address of the Respondent’s Contacts, as provided to the WIPO Center by the Registrar.

5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute, as follows.

5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain names <fairmonthotels.com> and <fairmont-resorts.com> incorporate in their entirety the Complainant’s FAIRMONT mark, making the domain names confusingly similar to the Complainant’s FAIRMONT marks. Consumers, almost all of whom have been exposed to the FAIRMONT marks, are likely to believe (wrongly) that these domain names are related to or associated with the Complainant.

5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that the Complainant has never given the Respondent any license, permission or authorization by which the Respondent could own or use the domain names which incorporate in whole the Complainant’s FAIRMONT mark. The Respondent is not using the domain names in connection with a bona fide offering of goods or services, nor is the Respondent making legitimate commercial, non-commercial or fair use of the domain names; rather, the Respondent has offered to sell the domain names. The fact that the Respondent is willing to sell the domain names shows that it had no intent to use the names for any legitimate purpose, and can therefore demonstrate no legitimate interest or rights in the domain names. Where, as here, the FAIRMONT mark is venerable and distinctive, it is not reasonably possible for the Respondent to demonstrate any legitimate interest in domain names consisting in whole or in part of the FAIRMONT mark, particularly when coupled with the words "hotels" and "resorts". Although the domain names have been registered since December 1, 2000, the Respondent has no functioning web site attached to either of the domain names other than a listing that "This Domain Name is for Sale or Rent." This failure to use the domain names further supports a finding of no legitimate interest.

5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends as follows. First, the fact that the Respondent has taken the Complainant’s very trademark FAIRMONT as the dominant part of the domain names <fairmonthotels.com> and <fairmont-resorts.com> and coupled it with words describing the Complainant’s hotels and resorts is compelling evidence of bad faith. Second, the Respondent has failed to use the domain names to sell or provide any goods or services. Third, offering to sell a domain name is also evidence of bad faith, and the Respondent has unquestionably offered both <fairmonthotels.com> and <fairmont-resorts.com> for sale. Fourth, the domain names incorporate the Complainant's registered FAIRMONT mark and are confusingly similar to the Complainant's FAIRMONT and FAIRMONT HOTELS trademarks. Because the ultimate effect of any use of <fairmonthotels.com> and <fairmont-resorts.com> will be to cause confusion with Fairmont, the use and registration of the domain names must be considered to be in bad faith.

5.5. The Respondent did not file a Response.

6.1. In relation to the domain name <fairmonthotels.com>, the relevant part of this domain name is "fairmonthotels". In relation to the domain name <fairmont-resorts.com>, the relevant part of this domain name is "fairmont-resorts". Both domain names fully incorporate the Complainant’s trademark FAIRMONT. The added words "hotel" and "-resorts", respectively, do not serve to make the inclusion of the Complainant’s trademark in the domain names non-confusing. Rather, given that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complaint, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark. Accordingly, this Administrative Panel finds that both the domain names the subject of this Complaint are confusingly similar to a trademark in which the Complainant has rights.

6.2. The Complainant has never given the Respondent any license, permission or authorization to use the Complainant’s FAIRMONT mark. When this fact is combined with the facts (i) the Respondent is not using the domain names in connection with a bona fide offering of goods or services, (ii) the Respondent is not making a legitimate commercial, non-commercial or fair use of the domain names, and (iii) the Respondent has not provided evidence of or even asserted the existence of any other circumstance that would give rise to a right to or legitimate interest in the domain names, there are sufficient grounds to persuade this Administrative Panel that the Respondent has no rights or legitimate interests in either of the domain names the subject of this Complaint.

6.3. The Complainant’s registered trademark is long-established and widely known and so, in the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of registration of the domain names. When this imputed knowledge is combined with the facts (i) the Respondent has registered domain names that incorporate this trademark together with words that are descriptive of the Complainant’s activities, (ii) the Respondent has no right or legitimate interest in the domain names, (iii) the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain names, and (iv) the Respondent’s only use of the domain names has been to offer to sell them (including, in respect of <fairmonthotels.com>, an offer to sell it to the Complainant), there are sufficient grounds to persuade this Administrative Panel that the domain names were registered and are being used by the Respondent in bad faith.

7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain names the subject of this Complaint.

7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainant contained in paragraph 36 of the Complaint, this Administrative Panel requires that the Registrar, Tucows.com Inc., transfer to the Complainant, Fairmont Hotel Management L.P., the domain names <fairmonthotels.com> and <fairmont-resorts.com>.

Andrew F. Christie
Sole Panelist

Dated: May 17, 2001