DECISION

Best Western International, Inc. v. Spider Inc.

Claim Number: FA0208000123878

PARTIES

Complainant is Best Western International, Inc., Phoenix, AZ (“Complainant”) represented by Meghan A. Wharton, of Brown & Bain.  Respondent is Spider Inc., E. Northport, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestwesten.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 26, 2002; the Forum received a hard copy of the Complaint on August 28, 2002.

On August 29, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bestwesten.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 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@bestwesten.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 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 <bestwesten.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 <bestwesten.com> domain name.

c. Respondent registered and used the <bestwesten.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 United States Registration Numbers 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 <bestwesten.com> domain name on May 18, 1998. Currently, Respondent’s domain name resolves to a generic “placeholder page” that contains no original information.

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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 to 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 <bestwesten.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 omission of the letter “r” from Respondent’s otherwise identical domain name.

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 Mattel, Inc. v. Zuccarini, FA109048, at 3 (Nat. Arb. Forum May 22, 2002) (“The omission of a letter does not distinguish the domain name from Complainant’s mark so as to defeat a claim of confusing similarity…”); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

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 to or Legitimate Interests

Complainant successfully presented a prima facie case that Complainant has rights in the disputed domain name and that Respondent does not, thereby shifting the burden of demonstrating rights and legitimate interests in the domain name 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).

Complainant shows in its Submission that Respondent is not using its domain name in connection with a bona fide offering of goods or services and does not hold any trademarks resembling that domain name. Furthermore, Respondent does not appear to have any rights in the domain name <bestwesten.com>, and Respondent is not commonly known by that name. Complainant has also shown that Respondent is not making any legitimate noncommercial or fair use of the domain name; indeed, Respondent has made no use of the domain. These showings by Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims Respondent could make under the Policy. Complainant adequately meets the burden of demonstrating Respondent’s lack of rights and legitimate interest in the domain name. 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”).

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 use its <bestwesten.com> domain name or affirmatively demonstrate any rights or legitimate interests in the domain name 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to Complaint and had made no use of the domain name in question).

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

Although the Policy lists four circumstances that are considered to be evidence of bad faith registration and use, the circumstances described therein are not exhaustive, but are rather merely illustrative of situations clearly defining bad faith registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

One established example of bad faith registration not specifically enumerated within the Policy is when a Respondent registers a domain name that it knew (or had reason to know) was similar to a prominent mark. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith). Furthermore, passive holding of a domain name, without any further justification or demonstrable preparations for use, infers bad faith use and registration of the domain name. Respondent has made no use of the domain name since its registration in May of 1998. It has passively held the <bestwesten.com> domain name for over four years. In light of the fact that Respondent has made no submission to the contrary, it is acceptable to infer bad faith use on behalf of Respondent with regard to its passively held domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); See also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith). Together, these two principles underscore the fact that when a registrant registers a widely acknowledged mark, and subsequently fails to develop its domain, that registrant has exhibited bad faith use and registration. See TV Globo Ltda v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) Respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) Respondent failed to develop the site).

Circumstances indicate that Respondent had previous knowledge of Complainant’s BEST WESTERN mark. Complainant holds many registrations incorporating variations of its BEST WESTERN mark, registrations that predate Respondent’s acquisition of the <bestwesten.com> domain name. Even if Respondent did not know that its domain name was confusingly similar to the BEST WESTERN mark, that mark’s listing with the Principal Register of the USPTO operates as constructive notice of the existence of the mark. 

Accordingly, 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 <bestwesten.com> domain name be TRANSFERRED from Respondent to Complainant.

                 

Hon. Carolyn Marks Johnson, Panelist

Dated: October 21, 2002.

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