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Generic Top Level Domain Name (gTLD) Decisions |
Best Western International, Inc. v. QTK
Internet
Claim Number: FA0209000124994
PARTIES
Complainant
is Best Western International, Inc.,
Phoenix, AZ (“Complainant”) represented by Meghan
A. Wharton, of Brown & Bain P.A. Respondent is QTK Internet, Turtle Creek, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bestweston.com>,
registered with Go Daddy Software, 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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 11, 2002; the Forum
received a hard copy of the
Complaint on September 12, 2002.
On
September 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <bestweston.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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
September 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 2, 2002 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@bestweston.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 16, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
a. Respondent’s <bestweston.com>
domain name is confusingly similar to Complainant’s registered BEST WESTERN marks.
b. Respondent does not have any rights or
legitimate interests in the <bestweston.com> domain name.
c. Respondent registered and used the <bestweston.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds many registrations
incorporating variations of its BEST WESTERN mark. Complainant owns U.S. Reg.
Nos. 1,427,735
and 1,432,431 for its BEST WESTERN mark, registered with the
U.S. Patent and Trademark Office (“USTPO”) on February 3, 1987 and March
10,
1987, respectively. Complainant has registered its BEST WESTERN mark, in a
range of formats and variations, throughout the world.
Complainant has also been using the
domain <bestwestern.com> since November 1, 1994. At this site, consumers
obtain information
about Complainant’s properties worldwide and make
reservations at their numerous hotels and motels. It is at this site that
consumers
learn about Complainant’s special programs and promotions.
Since as early as 1946, Complainant has
continuously used this BEST WESTERN family of marks in connection with its
worldwide hotel/motel
services. Complainant is the world’s largest hotel brand,
with over 4,000 hotels throughout the world bearing the BEST WESTERN mark.
Respondent registered the <bestweston.com>
domain name on August 14, 2001. Currently, Respondent’s domain name redirects
consumers to <roomsusa.com>, a travel reservation
site that allows
Internet users to book hotel and motel rooms worldwide. This is the same type
of activity that Complainant deals
in. Respondent is not licensed or otherwise
authorized to make any use of the BEST WESTERN family of marks for any purpose.
DISCUSSION
Paragraph 15(a) of 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.”
In view
of Respondent's failure to submit a Response, 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 and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2)
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
Complainant has established rights in the
BEST WESTERN family of marks through registration with the USPTO and subsequent
continuous
use of the marks.
Respondent’s <bestweston.com>
domain name is confusingly similar to Complainant’s BEST WESTERN mark. The only
differences between Respondent’s domain name
and the registered mark of
Complainant are the addition of the top level domain “.com”, the removal of the
space between the words
BEST and WESTERN, and the misspelling of the word
“western” by removing the “er” and replacing it with the letter “o”. Other than
these cosmetic differences, the domain name <bestweston.com> is
identical to the BEST WESTERN mark.
It is well established that the mere
omission of one letter from a domain name does not prevent a finding of
“confusing similarity”
under Policy ¶ 4(a)(i), especially when the domain name
reflects a prominent and widely recognized mark. See Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar
to Complainant’s
HEWLETT-PACKARD mark); see Little Six Inc. v. Iggi Networks, Inc., FA
101812, at 3 (Nat. Arb. Forum Dec. 11, 2001) (“Respondent’s
<clubingo.com> domain name is confusingly similar to Complainant’s
mark
because the disputed domain name is a misspelling of Complainant’s mark and
phonetically similar.”)
Furthermore,
as spaces are impermissible in domain name registrations and a generic
top-level domain (such as “.com”) is required
for every domain name, neither of
these differences have any effect on whether Respondent’s domain name is
confusingly similar to
Complainant’s mark. See Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible
in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Once a Complainant has successfully
presented a prima facie case illustrating Respondent’s lack of rights or
legitimate interests in its domain name, the burden of demonstrating rights and
legitimate interests in the domain name shifts to Respondent. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name).
A Complainant can meet this burden by
successfully addressing any claims Respondent could make under Policy ¶¶
4(c)(i-iii) in its
defense. See Body
Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000)
(finding “that on the evidence provided by the Complainant and in the absence
of any submissions
from the Respondents, that the Complainant has established
that (i) the Respondents are not using and have not used, or are not
demonstrating
and have not demonstrated, an intent to use the said domain name
in connection with a bona fide offering of goods or services; (ii)
the
Respondents are not and have not been commonly known by the said domain name;
and (iii) the Respondents are not making legitimate
noncommercial or fair use
of the said domain name, without intending to mislead and divert consumers or
to tarnish Complainant’s
<THE BODY SHOP> trademark and service mark”).
Complainant shows in its submission that
Respondent is using its domain name in connection with neither a bona fide
offering of goods
or services nor a legitimate noncommercial or fair use.
Respondent’s website offers services comparable to those offered by
Complainant.
The site that an Internet user is redirected to when they enter
<bestweston.com> offers room reservation services in hotels and
motels worldwide, as well as special offers and promotions, all directly
comparable
to activities performed by Complainant. Respondent’s use of another
organization’s trademark to attract business is not a bona fide
offering of
services. Diverting consumers to Respondent’s competing site is also
incompatible with a legitimate noncommercial or
fair use of a domain name. See
Best Western Int’l, Inc. v. Sepia, FA 113984, at 3 (Nat. Arb. Forum
June 26, 2002) (“Respondent’s use of [best-western-hotels.com] to divert
Internet traffic to Respondent’s competing
travel services website is not
considered to be a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶
4(c)(iii)”); see also Ziegenfelder
Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests based on the fact that the
domain names bear no relationship
to the business of Respondent and that Respondent
would only legitimately choose to use Complainant’s mark in a domain name if
Respondent
was seeking to create an impression that the two businesses were
affiliated); see also Am. 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”).
Respondent does not appear to have any
rights in, nor is it commonly known by, its <bestweston.com>
domain name. Furthermore, Complainant has not given Respondent permission or
consent to use its BEST WESTERN family of marks.
See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question); see also Victoria’s
Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly
similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark); see also Am. Airlines, Inc. v. Zuccarini, FA
95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest
in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).
These showings by Complainant, following
the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims
Respondent
could make under the Policy; thus Complainant adequately meets its
burden of demonstrating Respondent’s lack of rights and legitimate
interest in
the domain name.
As stated above, Respondent failed to
submit a Response in this proceeding. Because Complainant’s assertions are
uncontested, it is
proper for the Panel to accept Complainant’s reasonable
contentions as true. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”);
see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true). In these circumstances, Respondent’s failure to
affirmatively demonstrate any rights or legitimate interests
in the <bestweston.com>
domain can only result in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent
never submitted a response nor
provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
The Panel finds that Respondent does not
have any rights or legitimate interests in the domain name under Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Having a well-known, registered trademark
operates as constructive notice of the existence of the mark. It is evidence
that a domain
name has been registered and used in bad faith when Respondent
registers a domain name that is confusingly similar to a trademark,
especially
one listed on the Principal Register of the USPTO. Respondent knew, or should
have known, that its domain name <bestweston.com> was nearly
identical to a registered trademark. Nevertheless, it proceeded to register its
domain name; this is evidence of bad
faith registration. See Best Western
Int’l, Inc. v. Wieczorek, FA 96557 (Nat. Arb. Forum Mar. 27, 2001) (“The
popularity of [Best Western’s] mark permits the conclusion that respondent knew
or
should have known of [Best Western’s] well-known mark prior to registering
the disputed domain name. This is evidence of bad faith”);
see also Best
Western Int’l, Inc. v. Sepia, FA 113984 (Nat. Arb. Forum June 26, 2002)
(“Based on the fame of [Best Western’s] mark, it can be inferred the Respondent
had notice
of [Best Western’s] mark when it registered the disputed domain
name. Registration of a domain name despite notice of [Best Western’s]
rights
is evidence of bad faith registration”).
In addition, Policy ¶ 4(b)(iv) states
that evidence of bad faith includes intentional use of a domain name by
Respondent to “attract,
for commercial gain, Internet users to [its] web
site…by creating a likelihood of confusion with the complainant’s mark as to
the
source, sponsorship, affiliation, or endorsement of [its] web site.” By
offering services that are closely similar to those offered
on Complainant’s
website (especially online room reservations in hotels worldwide), and
attracting Internet consumers by using a
domain name confusingly similar to
Complainant’s BEST WESTERN mark, Respondent is using the domain <bestweston.com>
in bad faith. See AltaVista v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶
4(b)(iv) where Respondent linked the domain name to a website
that offers a
number of web services); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which
contains
Complainant’s Dr. Math mark, to a website run by Respondent, creating
confusion for Internet users regarding the endorsement, sponsorship,
of
affiliation of the website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website).
The Panel finds that Respondent both
registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <bestweston.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 17, 2002
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