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Generic Top Level Domain Name (gTLD) Decisions |
Best Western International, Inc. v. Lost
in Space, SA
Claim Number: FA0210000126834
PARTIES
Complainant
is Best Western International, Inc.,
Phoenix, AZ, USA (“Complainant”) represented by Meghan A. Wharton, of Brown
& Bain, P.A. Respondent is Lost
in Space, SA, Majorca, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <thebestwesterninn.com>,
registered with Tucows.
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 October 2, 2002; the Forum received
a hard copy of the
Complaint on October 3, 2002.
On
October 3, 2002, Tucows confirmed by e-mail to the Forum that the domain name <thebestwesterninn.com> is
registered with Tucows and that Respondent is the current registrant of the
name. Tucows has verified that Respondent is bound
by the Tucows 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
October 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 23,
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@thebestwesterninn.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
November 6, 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:
Respondent’s
<thebestwesterninn.com> domain name is confusingly similar to
Complainant’s registered BEST WESTERN mark.
Respondent does not have any rights or legitimate
interests in the <thebestwesterninn.com> domain
name.
Respondent registered and used the <thebestwesterninn.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, as the world’s largest
hotel brand, has registered its BEST WESTERN mark in
a range of formats and
variations throughout the world, including Spain, Respondent’s place of
domicile (Spanish Certificates of
Registration and Renewal for Trademarks Nos.
943,929; 1,815,140; and, 2,297,170).
Complainant has 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.
Respondent registered the <thebestwesterninn.com> domain
name on October 26, 2000. As of August 23, 2002, Respondent’s domain name
displayed a scrolling advertisement for the organization
“Temptations@Work”, a
“brand new form of global staffing agency” that includes their “famous
SEXETARIES”; this site operates as an
Internet escort service. As of September
12, 2002, Internet users were able to view information and pornographic
photographs of “Sophie”.
An Internet user who repeatedly selected the link to
view “MORE” pictures of “Sophie” would eventually reach the website for
“Temptations@Work.”
On August 23, 2002, Complainant contacted
Respondent with a cease and desist letter informing them of their trademark
infringing domain
name and demanding transfer of its registration. Respondent
replied with a sale offer of $1500 for the domain name registration,
stating in
further communications that it “would not consider anything less than
$1500—which is the arbitration costs alone for [Complainant]—we
always ignore
the WIPO (World Intellectual Property Organization, an ICANN authorized domain
name dispute arbitrator) route and appeal
the decision in Virginia courts. The
domain could be yours in less than 48 hours.” Respondent and/or persons
associated with Respondent
have been ordered to transfer registered domain
names in at least twenty-one decisions by tribunals engaged under ICANN.
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 its
BEST WESTERN mark through registration on the Principal Register of the USPTO
as well as
via continuous and widespread use and registration of the mark worldwide.
Respondent’s <thebestwesterninn.com> domain name is confusingly similar to
Complainant’s registered BEST WESTERN mark. The only differences between
Respondent’s domain
name and the registered mark of Complainant is the addition
of the top-level domain “.com”, the deletion of the space between the
words
BEST and WESTERN, the addition of the generic word “the”, and the addition of
the descriptive word “inn”.
The addition of a top-level domain is
irrelevant when determining whether a domain name is confusingly similar to a
mark in which
a complainant has established rights. Removing the space between
words in a registered mark is also irrelevant; both of these differences
are
dictated by the standardized nature of second- and top-level domain names. See
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); see also 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”).
Furthermore, the addition of the generic
words “the” and “inn” to the disputed domain name does not defeat a finding of
confusing
similarity by the Panel under Policy ¶ 4(a)(i). The generic
word “inn”, describing the type of business in which Complainant is engaged, does not change the fact that the
dominant feature of the disputed domain name is Complainant’s distinctive and
registered BEST WESTERN
mark. The generic word “the” likewise does nothing to
distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business);
see also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar
to Complainant’s
MARRIOTT mark).
Accordingly, the Panel finds that the <thebestwesterninn.com> domain
name is confusingly similar to Complainant’s registered BEST WESTERN mark under
Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶
4(c)(i-iii), Respondent can rely on a “bona fide offering of goods or
services” connected with the disputed domain name, the fact
that it has been
“commonly known by the domain name,” or that it is making a “legitimate noncommercial
or fair use of the domain
name” to demonstrate a right or legitimate interest
in a domain name. If Complainant rebuts each of these elements, it has
satisfied
its burden by successfully addressing any of the specified claims
Respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting
the burden
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).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶
4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark diverts Internet users to its
own
website for commercial gain. See Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name). Misdirecting confused Internet users to websites hosting
pornographic material,
which tarnish Complainant’s mark, is evidence that
Respondent has no legitimate rights or interests in the domain name. See MatchNet plc v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or
services to use a domain name for commercial
gain by attracting Internet users to
third party sites offering sexually explicit and pornographic material, where
such use is calculated
to mislead consumers and tarnish Complainant’s mark); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another's well-known mark to provide a link to a pornographic
site is not a
legitimate or fair use). Respondent’s use of confusingly similar domain names
to gain a commercial profit by directing
unsuspecting Internet users to a
pornographic website is not a bona fide offering of goods or services, nor a
noncommercial or fair
use of the domain name.
Noting that it is willing to tie up any
dispute over the domain name in the courts unless Complainant buys the disputed
domain name
registration for $1500 is further evidence that Respondent is not
legitimately using its domain name, and that its intention is to
tarnish
Complainant’s mark. See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use);
see also Dollar
Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000)
(finding that the Respondent demonstrated bad faith by registering the domain
name with
the intent to transfer it to Complainant for $3,000, an amount in
excess of its out of pocket costs).
Respondent is not commonly known by the
name THEBESTWESTERNINN or <thebestwesterninn> and Complainant has
not given Respondent permission or consent to use its registered BEST WESTERN
mark. See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark). By these showings, Complainant sufficiently refutes
any claim that Respondent could make under Policy ¶ 4(c)(ii).
Once a complainant has successfully
presented its prima facie case illustrating a 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 the respondent.
As Respondent submitted nothing to the
Panel in response to this Complaint, Respondent fails to meet that burden, and
the Panel may
conclude that Respondent has no rights or legitimate interests in
the disputed domain name. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the
disputed <thebestwesterninn> domain name in bad faith. Policy ¶ 4(b)(iv) states that in
circumstances indicating that the disputed domain name was registered to
“intentionally attempt to
attract, for commercial gain, Internet users…by
creating a likelihood of confusion as to the source, sponsorship, affiliation,
or
endorsement of [Respondent’s] website or location,” bad faith use and
registration is evidenced. See
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain). When Internet users
are directed to websites hosting pornographic material, it is further
evidence
of bad faith use and registration. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can
constitute bad faith); see also Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known
mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain
name in bad faith).
Respondent’s
use of its confusingly similar domain name in connection with a pornographic
website, in light of the fame of Complainant’s
mark, is evidence of bad faith.
It is further
evidence of bad faith that Respondent, when confronted by Complainant about the
infringing domain name, offered to sell
its rights to Complainant for $1500.
Policy ¶ 4(b)(i) states that in “circumstances indicating that [Respondent]
registered…the domain
name primarily for the purpose of selling…the domain
registration to the complainant who is the owner of the trademark…for valuable
consideration in excess of [Respondent’s] out-of-pocket costs,” bad faith use
and registration is evidenced. Noting that the offered
sale price of a domain
name registration is lower than the costs associated with arbitration or adjudication
of the dispute is one
example of a violation of Policy ¶ 4(b)(i). See
Prudential Ins. Co. of Am.
v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(i) where Respondent offered
to
sell the domain name for $900, specifically noting that it would cost
Complainant more to enforce its rights legally than to succumb
to Respondent's
attempted extortion); see also Wal-Mart Stores, Inc. v.
Stork, D2000-0628 (WIPO
Aug. 11, 2000) (finding that the
attempted sale of a domain name is evidence of bad faith).
In the present
dispute, Respondent not only offered to sell the disputed domain name
registration for more than its out-of-pocket
expenses, but specifically noted
that its offer was identical to what Complainant would have to pay in order for
it to have this
dispute arbitrated. Respondent stated that it “always ignores
[arbitration] decisions,” and implied that it would tie up proceedings
over the
disputed domain name in the courts—or transfer the domain name registration for
profit “in less than 48 hours.” In light
of Respondent’s lack of response to
the Complaint, the Panel concludes from the evidence offered by Complainant
that Respondent’s
attempts to extort a price of $1500 for the disputed domain
name registration is evidence that it registered the domain name for
this
purpose. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from Respondent’s
failure to reply
to 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).
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 <thebestwesterninn> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 7, 2002
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