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National Trust for Historic Preservation v. Barry Preston [2005] GENDND 1460 (10 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Trust for Historic Preservation v. Barry Preston

Case No. D2005-0424

1. The Parties

The Complainant is National Trust for Historic Preservation, Washington, D.C., United States of America, represented by Anita Canovas, Washington, D.C United States of America.

The Respondent is Barry Preston, New York, New York, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <historichotels.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 21, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On April 22, 2005, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2005. The Response was filed with the Center May 16, 2005. Thereafter, on May 19, 2005 the Complainant forwarded to the Center a supplemental filing, to which the Respondent objected. Under the Policy, it is in the sole discretion of the Panel to determine whether to admit and consider supplemental submissions in rendering its decision.

The Center appointed William R. Towns, David H. Bernstein and Nelson A. Diaz as panelists in this matter on August 1, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a private, nonprofit membership organization founded in 1949, and dedicated to the preservation of historic places in the United States. Historic Hotels of America is a program commenced by the Complainant in 1989 to identify and register hotels that have maintained their historic integrity, architecture and ambiance, and to promote these establishments nationally and internationally to those who prefer historic settings for their leisure and business travel.

To this end, the Complainant, in 1996, applied to the United States Patent and Trademark Office (“USPTO”) and obtained federal registration of the mark HISTORIC HOTELS OF AMERICA. Since October 2000, the Complainant has maintained a website at “www.historichotels.org” in connection with the Historic Hotels of America program, where visitors can make online reservations at select historic hotels. On July 21, 2004, the Complainant filed for federal registration of the mark HISTORIC HOTELS in connection with guidebooks and directories of historic hotels. A final USPTO decision on the Complainant’s application is pending.¹

The Respondent acquired the disputed domain name <historichotels.com> in October 2003. The Respondent is a WorldChoiceTravel.com affiliate. Visitors to the “www.historichotels.com” website can search for and make online reservations for hotels, air travel, rental cars, and vacation packages, using a search engine powered by WorldChoiceTravel.com, a division of Travelocity. The Respondent earns commissions when this happens. According to the Respondent’s website, visitors have access to over 55,000 hotels worldwide in all categories. The website does not contain a specific search engine for “historic hotels” per se.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its federally registered HISTORIC HOTELS OF AMERICA mark is well known, and that the abbreviated phrase “Historic Hotels” has come to be viewed by the public as designating the Complainant’s products and services. Accordingly, the Complainant asserts that the disputed domain name <historichotels.com> is confusingly similar to its HISTORIC HOTELS OF AMERICA mark. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not using the domain name specifically in connection with historic hotels. Rather, the Complainant argues that the Respondent in bad faith has adopted and is using a confusingly similar domain name in order to trade on the Complainant’s reputation and the goodwill associated with its mark, as a means of attracting Internet users to his website for commercial gain.

B. Respondent

The Respondent’s position is that the disputed domain name merely incorporates the common descriptive term “historic hotels”, which is not exclusively associated with the Complainant, and that his use of the domain name in connection with the World Travel Choice affiliate program constitutes a bona fide offering of goods and services sufficient to establish a legitimate interest in the domain name. The Respondent argues that the Complainant has not established trademark rights in the descriptive term “historic hotels”. The USPTO issued a non-final office action refusing registration of HISTORIC HOTELS on the grounds that it is merely descriptive of the Complainant’s goods or services, and the Respondent maintains that widespread third party use of this descriptive term precludes any finding of secondary meaning.²

The Respondent further contends that the Complainant’s registered HISTORIC HOTELS OF AMERICA mark is not enforceable under the Policy because the mark is merely descriptive, if not generic, with respect to the goods or services in question. Given what the Respondent characterizes as “overwhelming evidence of third party usage and the USPTO trademark examiner’s conclusion” with respect to “historic hotels”, the Respondent urges that the dissimilarities between the disputed domain name and the Complainant’s HISTORIC HOTELS OF AMERICA mark are sufficient to dispel any confusion in the mind of the purchasing public.

In an affidavit submitted in support of his Response, the Respondent states that he was unaware of the Complainant or its mark when he registered the disputed domain name, and selected it solely because it incorporates a common descriptive term. The Respondent states that he did not register the disputed domain name to sell to the Complainant, to disrupt the Complainant’s business, to prevent the Complainant from registering a domain name incorporating its mark, or to confuse Internet users seeking to find the Complainant’s website.

Finally, the Respondent alleges reverse domain name hijacking on the grounds that the Complainant brought forth a complaint without any merit because it did so with knowledge that is had no enforceable trademark rights under the Policy with respect to “historic hotels”.

5. Preliminary Matters

The Panel must determine as a preliminary matter whether the Complainant’s supplemental submission and the Respondent’s reply thereto, should be considered, consistent with the Policy and the Rules. The Complainant’s supplemental submission concerns the non-final office action of the USPTO respecting registration of the proposed HISTORIC HOTELS mark, and includes the Complainant’s response to the office action, urging registration of the HISTORIC HOTELS mark as distinctive based on the prior registration for HISTORIC HOTELS OF AMERICA.

No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental filings by either party to the administrative proceeding without leave from the Panel. Rule 12 provides that in addition to the complaint and response, the Panel may request, in its sole discretion, further statements or documents from either of the parties. But the Policy and the Rules demonstrate a strong preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.

As noted by the Panel in Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023, circumstances held to support consideration by the Panel of supplemental filings may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint. The Complainant did not submit its response to the USPTO office action until after the filing of its Complaint, and the Panel concludes that for completeness of the record the Complainant’s response to the office action should be noted. Beyond this, the parties’ supplemental submissions serve no useful purpose under the Policy and have not been considered by the Panel in reaching its decision.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <historichotels.com> is confusingly similar to the Complainant’s HISTORIC HOTELS OF AMERICA mark for purposes of paragraph 4(a)(i) of the Policy. While the disputed domain name does not incorporate the entirety of the Complainant’s mark, such a showing is not necessary to establish confusing similarity under the first element of paragraph 4(a). See e.g. Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381. The critical inquiry under the first element is whether the mark and domain name, when directly compared, have confusing similarity. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel finds that they do.

The Panel rejects the Respondent’s argument that the Complainant has not established trademark rights in HISTORIC HOTELS OF AMERICA for purposes of paragraph 4(a)(i). The record is undisputed that the Complainant has used the mark in commerce since 1989. The mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In fact, given the Complainant’s continuous use of the mark for more than five years since its registration, under United States trademark law the Complainant’s rights in the mark are no longer contestable based on descriptiveness. See 15 U.S.C. § 1065.³

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant has demonstrated that the disputed domain name <historichotels.com> is confusingly similar to its HISTORIC HOTELS OF AMERICA mark. When the Respondent registered the disputed domain name in 2003, the Complainant had been operating its website at <historichotels.org> for several years, its mark had been registered for seven years, and the Complainant had been using the mark in commerce for fourteen years. The disputed domain name resolves to a travel-related website where the Respondent arguably competes with the Complainant in the online booking of hotel reservations; but in any event, both the Complainant and the Respondent are involved in the travel industry.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii), requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent maintains that the disputed domain name merely incorporates the common descriptive term “historic hotels”, which is not exclusively associated with the Complainant, and that the use of the domain name in connection with the World Travel Choice affiliate program constitutes a bona fide offering of goods and services establishing a legitimate interest in the domain name under paragraph 4(c)(i). The Respondent has submitted a sworn statement attesting that he was unaware of the Complainant or of the Complainant’s mark when he registered the disputed domain name, and the record reflects the Respondent’s use of the domain name in connection with his travel-related website before he received any notice of this dispute.

The Panel agrees with the Respondent that “historic hotels” is a common descriptive term when used in connection with information, products or services respecting such establishments. The record reflects several domain names other than the disputed domain name using the term in its descriptive sense.⁴ Even were the Panel to assume that the Complainant has or will establish trademark rights in this term, the Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. See Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. And it is well settled that a bona fide offering of goods and services under paragraph 4(c)(i) is not possible under circumstances otherwise evidencing bad faith registration and use of the domain name. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)).

The Complainant contends that the Respondent is not making a descriptive use of the disputed domain name because the Respondent is not operating a website specifically oriented towards historic hotels, and argues from this that the Respondent is instead seeking to trade on the reputation and goodwill of the Complainant and its mark. Accordingly, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith, and has no rights or legitimate interests in the domain name.

It is clear that the Respondent’s website is in the nature of a general online travel site, and that the reservation services offered there are by no means restricted to establishments identified or recognized as historic hotels. Nevertheless, the Respondent claims to have adopted the domain name without awareness of the Complainant or its HISTORIC HOTELS OF AMERICA mark, the Respondent commenced operation of his website before notice of this dispute, and the Respondent’s use of the domain name is descriptive in the sense that it communicates some aspect of the services offered on the Respondent’s travel website. As noted above, there are a number of other domain names incorporating “historic hotels” in its common descriptive sense, and the Panel concludes from the record as a whole that the Respondent is using the disputed domain name in a descriptive rather than a trademark sense, without intent to trade on the goodwill associated with the Complainant’s mark, or to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

Accordingly, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name. This finding ultimately is predicated on the Complainant’s failure to meet its burden of showing bad faith registration and use, which is further discussed below.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.

There is no evidence that the Respondent has engaged in an abusive pattern of registering domain names to prevent the Complainant or other trademark owners from reflecting their marks in corresponding domain names,⁵ or that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business or selling the domain name to the Complainant. And while the Respondent clearly is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain, the record as a whole is consistent with the Respondent’s use of the domain name in its descriptive sense. The Panel is unable to conclude on the record before it that the Respondent is intentionally using the domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In short, the circumstances of this case do not demonstrate that the Respondent registered and is using the disputed domain name in bad faith. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.

In this instance, the Respondent’s claim of reverse domain name hijacking is based on a claim that the Complainant knew it had no enforceable trademark rights in “historic hotels”. Inasmuch as the Panel has found that the Complainant has incontestable rights in its HISTORIC HOTELS OF AMERICA mark, and that the disputed domain name is confusingly similar to that mark, the Panel finds the Respondent’s claim of reverse domain name hijacking unpersuasive. The record does not indicate that the Complaint was brought in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns Presiding Panelist
David H. Bernstein Panelist	Nelson A. Diaz Panelist

Dated: August 10, 2005

² The Respondent asserts that a Google search for “historic hotels” yielded over 660,000 third party pages containing the term, and notes several other domain names that incorporate this term, including <istanbulhistorichotels.com> (Istanbul Historic Hotels), <historic-hotels.com> (Historic Hotels of the Rockies), and <historichotelsofeurope.com> (Historic Hotels of Europe).

³ The Complainant also asserts protectable rights in “Historic Hotels”, apparently based on a claim of common law trademark rights in this term. Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, [1996] USCAFED 239; 77 F.3d 1372 (Fed.Cir. 1996). The Panel does not find sufficient evidence of use in the record to make this determination, but such a determination in any event is unnecessary to the Panel’s finding of confusing similarity under paragraph 4(a)(i).

⁴ Refer to Note 2 supra.

⁵ The record reflects only that the Respondent owns a number of other travel-related domain names comprised of common descriptive words or phrases.