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Prime Hospitality L.L.C. v. Forum LLC [2005] GENDND 2108 (15 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prime Hospitality L.L.C. v. Forum LLC

Case No. D2005-1091

1. The Parties

The Complainant is Prime Hospitality L.L.C., Fairfield, New Jersey, United States of America, represented by Lydecker & Wadsworth, L.L.C., Miami, Florida, United States of America

The Respondent is Forum LLC, Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <wellesleyhotels.com> is registered with Fabulous.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2005. On October 21, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On October 24, 2005, Fabulous.com 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 28, 2005. The Center verified that the Complaint, together with the amendment to 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 on November 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2005.

The Center appointed Thomas Hoeren as the sole panelist in this matter on December 1, 2005. The Panel find that it was properly constituted. 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 has owned and operated hotels for more than twenty years. Presently, it owns and operates around 100 hotels in 32 states in the United States.

The Complainant is owner of the following registered trademarks, among others:

- The United States trademark WELLESLEY INN & SUITES No 2447804, registered on May 1, 2001, for hotel services (Class 42);

- The United States trademark WELLESLEY INN, No 2446251 registered on April 24, 2001 for hotel services (Class 42);

- The United States trademark WELLESLEY INNS, No 1528973 registered on March 7, 1989, for hotel services (Class 42).

- The United States trademark WELLESLEY SUITES, No 2718966 registered on March 4, 2003 for hotelservices (Class 42).

The Complainant registered and has used <wellesleyinnandsuites.com> since May 1999, <wellesleyonline.com> since August 2000, <wellesleyinnsandsuites.com> since December 2002 and <wellesleyonline.net> since August 2000.

The Respondent registered the domain name <wellesleyhotels.com> on June 14, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following allegations: The public frequently refers to WELLESLEY INN and WELLESLEY INN & SUITES as “Wellesley” or “Wellesley Hotels”. As a result, Complainant is entitled to trademark protection for the trademark and family trademark name WELLESLEY and WELLESLEY HOTELS.

The overall impression created by the domain name at issue and Complainant’s trademarks is practically identical. As a result, the public could easily confuse Complainant’s trademarks with the domain name at issue. Moreover, consumer confusion is likely to result once consumers reach the website that the disputed domain name leads to, and find the trademarked term of Complainant in the web site address/domain name being used to advertise other hotels. Consequently, the similarity of the marketing channels between the parties also leads to confusion even if the term “hotels” is added to the domain (see E. Gluck Corporation v. James L. Clark d/b/a Animationwerks, WIPO Case No. D2000-1651; ACCOR v. Park Junghee, WIPO Case No. D2004-0478).

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute: The Respondent is not a franchisee or otherwise affiliated with the Complainant. It cannot claim innocent use as a defense while it advertises Complainant’s hotels on the website that the disputed domain name leads to. By offering hotel reservation services for not only Complainant’s hotels, but also for hotels that are in direct competition with Complainant, Respondent is not using the domain name for legitimate purposes. Instead, Respondent is attempting to profit from Complainant’s good will established in the “Wellesley” name.

Finally, the Complainant submits that the disputed domain name in question was registered and is being used in bad faith by the Respondent. By registering a domain name that is identical to the Complainant’s existing WELLESLEY trademarks and offering competing services, Respondent intentionally has attempted to attract, for commercial gain, Internet users to its website. The domain name is thus registered and used primarily for the purpose of disrupting the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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.”

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The domain name <wellesleyhotels.com> is confusingly similar to the Complainant’s registered trademarks WELLESLEY SUITES and the other “WELLESLEY- based” registered trademarks.

The disputed domain name is similar to Complainant’s registered trademarks. The domain name at issue and the trademarks both use the key term “wellesley”. The only difference between the disputed domain name and the trademarks of the Complainant lies in the addition of the descriptive term “hotels”. The word “hotels” does not add a distinctive element to the disputed domain name that can be seen as taking the domain name outside the realm of the obvious similarity with the Complainant’s marks. In fact, these descriptive trademarks relate to types of hotel services with which the Complainant’s marks are associated.

The disputed domain name is as well ‘confusingly’ similar to Complainant’s trademarks. Complainant and Respondent are both working for commercial gain in the hotel business. Even though the content of the website is irrelevant in the finding of confusing similarity, the Panel notes that the Respondent uses the domain at issue to build up a web portal for hotel reservations including the hotel facilities of competitors of the Complainant. The use of the disputed domain name can clearly give the wrong and misleading impression that the website was launched by the Complainant.

As the Complainant has well demonstrated to the satisfaction of this Panel with proper reliance on earlier UDRP decisions, the addition of descriptive terms to the distinctive element “wellesley” into the domain name in dispute does not take away the likelihood of confusion; on the contrary; when one considers the diversity of such terms in the family trademarks, a person would normally consider, as this Panel considers, that the domain name in dispute is part of the family of trademarks and domain names of the Complainant. In fact, there have been several UDRP decisions that have held such descriptive terms incapable of negating the confusion or identity between the disputed domain name and the protected trademarks. The Panel cites, by way of example, the following UDRP decisions: Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Expedia, Inc v. European Travel Network, WIPO Case No. D2000-0137, Expedia, Inc v. European Travel Network, WIPO Case No. D2001-0329, Meon Travel Limited v. Lawrence Snare, WIPO Case No. D2004-0831, and ACCOR v. Park Junghee, WIPO Case No. D2004-0478.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not filed any Response to the Complaint. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name. Furthermore, the Complainant does not appear to have authorized the Respondent to use its trademarks nor, in particular, to register a domain name composed of the Complainant’s trademarks. Furthermore, the Respondent is using the domain name for offering hotel reservation services which are for hotels that are also in direct competition with Complainant.

Thus, the Panel concludes that the Complainant has demonstrated a prima facie case of Respondent’s lack of rights or legitimate interests. Consequently, the second element of the Policy has been met.

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

The Respondent registered and is using the domain name <wellesleyhotels.com> to attract consumers so that they will access the website operated by the Respondent. The website leads to hotel services offered by the Complainant, but also to those offered by the Complainant’s competitors. Therefore, it appears clear to the Panel that the Respondent has sought to increase the number of “hits” to its website by using the Complainant’s trademark as a part of the domain name in question. That increases the commercial value of the Respondent’s website, which is done through misuse of the trademarks in which the Complainant holds rights. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Panel is thus satisfied that the Respondent registered and is using the domain name at issue in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wellesleyhotels.com > be transferred to the Complainant.

Thomas Hoeren

Sole Panelist

Date: December 15, 2005