DECISION

Best Western International, Inc. v. Individual

Claim Number:  FA0408000316401

PARTIES

Complainant is Best Western International, Inc. (“Complainant”), 6201 North 24th Parkway, Phoenix, AZ 85016.  Respondent is Individual (“Respondent”), Rue de Sacre Core 5666, Paris, France 454.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestwesternairportinn.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 20, 2004; the Forum received a hard copy of the Complaint on August 23, 2004.

On August 23, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <bestwesternairportinn.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 2004 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@bestwesternairportinn.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 September 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 makes the following assertions:

1. Respondent’s <bestwesternairportinn.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark.

2. Respondent does not have any rights or legitimate interests in the <bestwesternairportinn.com> domain name.

3. Respondent registered and used the <bestwesternairportinn.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Best Western International, Inc., is the world’s largest lodging chain, with over 4,100 properties in eighty-one countries throughout the world.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office for the BEST WESTERN mark (Reg. No. 1,074,300 issued September 27, 1977, Reg. No. 1,427,735 issued February 3, 1987, Reg. No. 1,432,431 issued March 10, 1987, Reg. No. 1,933,830 issued November 7, 1995, and Reg. No. 1,900,620 issued June 20, 1995).  Complainant also holds trademark registrations for the BEST WESTERN mark in multiple countries outside the United States, including Respondent’s purported country of residence, France. 

Complainant has used the BEST WESTERN mark in commerce since 1946 in connection with hotel, motel, and resort services, and related goods and services.   Complainant offers more than 310,000 quality guest rooms located in eighty-one countries and territories throughout North America, South America, Europe, Asia, Africa, the Middle East and the South Pacific.  Under certain conditions, Complainant will allow its member properties, under license, to advertise their services using domain names containing the BEST WESTERN mark.  Oftentimes, those domain names will consist of the mark followed by a term describing the location or one or more of Complainant’s properties.  Examples include <bestwesterndowntown.com> and <bestwesternairportinncalgary.com>.

Complainant registered and uses the <bestwestern.com> domain name to allow consumers to obtain information about Complainant’s various properties throughout the world, to make bookings at the hotels through the global reservation system, and to learn about various special programs and promotions. 

Respondent registered the disputed domain name on December 1, 2003.  Respondent is using the website to redirect Internet users to a site displaying and advertising pornography and sex services.  

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 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 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 mark through registration with the United States Patent and Trademark Office, continuous use of the mark in commerce since 1946, and registration of the mark in Respondent’s purported country of residence, France.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <bestwesternairportinn.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark.  Respondent’s domain name fully incorporates Complainant’s mark, and only deviates with the addition of the generic top-level domain (“gTLD”) “.com,” and the addition of generic terms related to Complainant’s business.  The addition of “.com” and generic terms to Complainant’s mark does not distinguish the domain name pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, 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 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to contest Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name.  Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent.  Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name.  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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is not authorized or licensed by Complainant to use the BEST WESTERN mark in the domain name.  Moreover, no evidence before the Panel suggests that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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 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).

Respondent’s <bestwesternairportinn.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark and is used to redirect Internet users to websites that feature pornography and sex services.  Such use has consistently and frequently been found not 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 eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (stating that “[m]isdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the <bestwesternairportinn.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Specifically, uncontested evidence indicates that the subject domain name earns referral-fee revenue for Respondent.  Thus, the Panel infers that Respondent commercially benefits from its use of Complainant’s BEST WESTERN mark in the domain name.  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known mark in its entirety and deviates only with the addition of generic terms, suggests that Respondent knew of Complainant’s rights in the BEST WESTERN mark at the time the domain name was registered.  Furthermore, the generic or descriptive terms incorporated in the domain name describe segments of Complainant’s business.  Thus, the Panel finds that Respondent most likely chose the disputed domain name based on the distinctive and well-known qualities of Complainant’s mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner….  Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Honorable Paul A. Dorf , (Ret.), Panelist

Dated:  October 4, 2004

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