Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Investone Retirement Specialists, Inc. v. Motohisa Ohno [2005] GENDND 657 (2 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FHR Real Estate Corporation, Chateau Whistler Resort Partnership v. Last Minute Golf Ltd.

1. The Parties

The Complainants are FHR Real Estate Corporation and its subsidiary, Chateau Whistler Resort Partnership, Toronto, Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Last Minute Golf Ltd., Richmond, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <chateauwhistler.com> (herein the “domain name in dispute”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 12, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name in dispute. On April 14, 2005, Network Solutions, LLC 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. 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 on April 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2005.

The Center appointed J. Nelson Landry as the Sole Panelist in this matter on May 27, 2005. The Panel finds 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

(a) Facts prior to March 23, 2000

The CHATEAU WHISTLER RESORT (herein the “Chateau Whistler resort”) is a resort hotel located in Whistler, British Columbia, Canada. It is one of North America’s top mountain resort destinations and is a Triple A Four Diamond resort and a member of the “Leading Hotels of the World”. It first opened in November 1989 with 379 rooms and suites, expanded in 1997 with the addition of 221 guestrooms. It has a golf course designed by Robert Trent Jr.

The Complainant Chateau Whistler Resort Partnership used the trademarks CHATEAU WHISTLER, CHATEAU WHISTLER RESORT AND CHATEAU WHISTLER RESORT & DESIGN since 1989 and CHATEAU WHISTLER & DESIGN since 1992 to designate and promote its hotel and resort services and golf and country club services, as particularized in the registration of each trademark adduced in evidence (herein collectively, the “Trademarks”).

The public recognition of the Fairmont Chateau Whistler is present in the United States and Canada and has been noted in European publications as well prior to March 2000 as thereafter. In March 1995, the German MännerVogue featured the Chateau Whistler prominently in its piece on Canadian ski resorts and in January 1996 the British weekly The Week dubbed the Chateau Whistler one of three of the world’s most select ski hotels.

The Complainant FHR Real Estate Corporation, the parent of Complainant Chateau Whistler Resort Partnership, owns U.S. Reg. No. 2,818,711 for the trademark CHATEAU WHISTLER for travel agency services.

The Complainant, Chateau Whistler resort spends over 3 millions annually on sales and marketing to promote the Chateau Whistler. Moreover, the Chateau Whistler resort under the Trademarks is featured in a variety of newspapers and magazines widely disseminated to the public and are used in conjunction with information brochures that are sold or given away. The Chateau Whistler has been mentioned in the media thousands of times since 1989.

The Respondent was aware of Complainants’ Chateau Whistler resort as early as February 28, 1997, when Andy Greig on behalf of the Respondent contacted the Chateau Whistler Golf Course to offer its Last Minute Golf booking services.

(b) Facts subsequent to March 23, 2000

The Respondent registered the domain name <chateauwhistler.com> on March 24, 2000.

In 2002, Complainants’ affiliated company Fairmont Hotel Management L.P. launched its website, “www.fairmont.com”, which features an authorized hyperlink to the Chateau Whistler resort at “www.fairmont.com/whistler”. The Chateau Whistler was previously featured on the “www.cphotels.com” website, which was launched at least as early as 1998 where Internet guests can find information about and book reservations at the Chateau Whistler resort. The details of the resort’s amenities, services and facilities, as well as photos of the Chateau Whistler resort, are also provided.

From January through November 2004, over 1,670 reservations for the Chateau Whistler hotel were booked on “www.fairmont.com”.

Respondent’s domain name <chateauwhistler.com> resolves to a webpage that displays pictures of the Chateau Whistler as well as its spa and golf course. Links entitled “The resort”, “The Spa”, “The Golf”, among others, take users to additional pictures featuring the resort, spa and golf club. The site also provides a link and contact information where users can make online bookings and reservations. On the bottom right of the homepage and on three other pages, there is a mention “We are an authorized booking agent for Whistler”.

There is no affiliation of the Respondent with the Complainants. Furthermore, there exists no relationship between the Complainants and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the domain name in dispute.

The Chateau Whistler staff has received numerous complaints from guests who booked or sought to book at the resort through the domain name in dispute.

Respondent is not commonly known by the domain name in dispute.

Between May 4, 2000 and October 14, 2002, Complainant Chateau Whistler Resort Partnership permitted Respondent to sell golf course tee time through Respondent’s Last Minute Golf service, a service that sells third party tee times on short notice at reduced rates. The Respondent signed three agreements, one in 2000, one in 2001 and one in 2002, for each year it was authorized to sell Complainant’s tee time. This only relationship was terminated in 2002. These agreements merely allowed the Respondent to sell tee times at the Chateau Whistler golf clubs, and nothing else. In each of the three agreements, in the section described as “Tariff/Brochure Publication”, Complainant Chateau Whistler Resort Partnership retained the right to pre approve all descriptive and/or advertising copy relating to the Chateau Whistler resort and its golf club. The Complainants never approved Respondent’s registration or use of the domain name in dispute.

On August 6, 2002 , the Complainants sent a letter to the Respondent demanding that he transfer the domain name in dispute to Complainants and cease using Complainants’ Marks. On September 23, 2002 Respondent’s attorney responded to Complainants’ legal counsel that Respondent was willing to transfer “all right, title and interest in the registered domain name <chateauwhister.com>” for “an appropriate sum”. On September 18, 2003, Complainants’ legal counsel reiterated its cease and desist requests. Respondent failed to respond to Complainant’s second request.

The Respondent did not reply to the Complainants’ factual contentions.

5. Parties’ Contentions

A. Complainant

The Complainants submit that there can be little doubt that the CHATEAU WHISTLER Trademarks are famous and that their fame existed long before the registration of the Domain Name by Respondent in 2000. Since the Chateau Whistler opened its doors in 1989, the general public and media alike have recognized it as a world leader in the hotel and resort industry.

According to the Complainants, the Chateau Whistler resort has reaped accolades in both Canada and the United States from prestigious magazines such as Condé Nast Traveler, Town and Country, Snow Country and Ski Magazine since 1989. The Chateau Whistler golf course located at the resort has also received many awards. It has been selected ‘Best Resort Course in Canada’ by Score, given the ‘Gold Medal Award’ by Golf and rated ‘Platinum’ by Canada’s Golf Course Ranking magazine.

The Complainants further submit that the fame and public recognition of the Chateau Whistler resort is not limited to the United States and Canada, but has been noted in European publications as well. In March 1995, the German MännerVogue featured the Chateau Whistler prominently in its piece on Canadian ski resorts and in January 1996 the British weekly ‘The Week’ dubbed the Chateau Whistler one of three of the world’s most select ski hotels.

The Complainants contend that because of the tremendous number of visitors to the Chateau Whistler resort and the surrounding publicity, the CHATEAU WHISTLER Trademarks are distinctive, well known, and their registrations are valid, in full force and effect, and serve as prima facie evidence of Complainants’ exclusive right to use the Trademarks for the goods and services listed in the registrations, which are more than sufficient to establish Complainants’ rights under the Policy. See Bennett Coleman & Co., Ltd. v. Steven S. Lalwani, WIPO Cases No. D2000-0014 and D2000-0015.

According to the Complainants from all of the above facts, it is evident that the Complainants have extraordinarily strong rights in their CHATEAU WHISTLER Trademarks which are entitled to protection from Respondent’s acts of cybersquatting.

The Complainants allege that the Respondent cannot claim or show any rights to the domain name in dispute that are superior to Complainants’ rights in the CHATEAU WHISTLER Trademarks, nor can the Respondent demonstrate that it was unaware of Complainants’ CHATEAU WHISTLER Trademarks at the time it registered the domain name, as the Respondent had contacted the Complainants as early as February 28, 1997 to solicit business from the Complainants.

The Complainants represent that the Respondent’s domain name in dispute incorporates in its entirety Complainants’ CHATEAU WHISTLER Trademarks and that Internet users are likely to believe that the domain name in dispute is related to, associated with, or authorized by the Complainants. See Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO Case No. D2000-0074. This false association is further reinforced by Respondent’s false claim on its homepage that it is “an authorized booking agent for Whistler”.

The Respondent obviously registered the domain name in dispute precisely because of its association with Complainants’ CHATEAU WHISTLER Trademarks. The Complainants affirm that Respondent’s registration and use of the domain name in dispute has caused actual consumer confusion which is in evidence.

According to the Complainants, the Respondent can demonstrate no legitimate interest in the domain name in dispute, which it is using to create the false impression that it is an authorized booking agent for the Chateau Whistler when, in fact, it is not. Indeed, as mentioned above, Respondent is using the domain name in dispute to divert web traffic to its own Chateau Whister resort booking site. Where, as here, Complainant’s CHATEAU WHISTLER Trademarks are so well known and recognized, there can be no legitimate use by the Respondent. See Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Fiber-Shield Industries, Inc. v. Fiber Shield, NAF Claim No. 1000092054.

The Complainants submit that the Respondent is not commonly known by the domain name in dispute and is not making legitimate noncommercial or fair use of it.

Furthermore, according to the Complainants, there exists no relationship between the Complainants and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the domain name in dispute. Even when for a limited period of time, the Respondent was authorized to sell tee time at the Chateau Whistler Golf Course. This obviously does not give the Respondent any rights in or legitimate interest to use the famous CHATEAU WHISTLER Trademarks in domain names. See Motorola Inc. v NewGate Internet Inc, WIPO Case No. D2000-0079; Stanley Works and Stanley Logistics Inc. v. Camp Creek Co, WIPO Case No. D2000-0113; Nokia Corporation v. Nick Holmes t/a Etype Media, WIPO Case No. D2002-0001. See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.

The Complainants, on the basis of six different arguments and sets of facts, contend that the Respondent’s activities are in bad faith. First, the fact that the Respondent acquired and has continued to use the Complainants’ distinctive CHATEAU WHISTLER Trademarks as its domain name, <chateauwhistler.com>, in breach of its agreements with the Complainants and for no apparent legitimate reason is compelling evidence of bad faith. See, San Rio Co. Ltd. v. DLI, WIPO Case No. D2000-0159.

Second, that the domain name in dispute incorporates the registered CHATEAU WHISTLER Trademarks, and is confusingly similar to the Chateau Whistler resort trade name, is evidence of bad faith. In this case, Respondent’s use of the domain name in dispute is not merely likely to cause consumer confusion; it has in fact caused consumer confusion, as stated hereinabove. The use and registration of the domain name in dispute must be considered to be in bad faith. See Embratel v. McCarthy, WIPO Case No. D2000-0164 and Forte (UK) Ltd. v. Ceschel, WIPO Case No. D2000-0283.

Third, Respondent was on constructive, if not actual, notice of Complainants’ rights in its Trademarks before it registered the domain name in dispute. The Complainant Chateau Whistler Resort Partnership has owned a Canadian trademark since June 15, 1990. Also, the Respondent solicited business from Complainants three years prior to registering the domain name in dispute in 2000. As such, it is clear that Respondent’s registration of the domain name in dispute was deliberately designed to trade on the goodwill in the Complainants’ Trademarks and therefore was in bad faith. See Cellular One Group v. Paul Bryan, WIPO Case No. D2000-0028, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Fourth, the fact that Respondent’s website at “www.chateauwhistler.com” is a booking site for reservations at the Chateau Whistler is additional evidence that Respondent knew of the fame of the CHATEAU WHISTLER Trademarks when it registered the domain name in dispute. If the Respondent knew of the fame of Complainants’ CHATEAU WHISTLER Trademarks, the fact that it proceeded with the registration of the domain name in dispute supports a finding of registration and use in bad faith. See Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 and Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.

Fifth, since the Respondent is using the domain name in dispute for a website devoted to selling Complainants’ very goods and services, he is clearly attempting to divert Internet users to his site, where he obtains a commercial benefit from those Internet users booking hotel reservations or tee time through his site. Those Internet users would inevitably believe the site was maintained by, sponsored by, affiliated with, or endorsed by the Complainants. This activity is clearly bad faith use of the recognition and fame of Complainants’ CHATEAU WHISTLER Trademarks to financially benefit Respondent in violation of the applicable trademark and unfair competition laws. See Best Western International, Inc. v. Patrick Ory, NAF Claim No. FA0210000128709 and Identigene, Inc. v. Genetest Lab., WIPO Case No. D2000-1100.

Sixth, the Respondent has attempted to sell the domain name in dispute to the Complainants. On August 6, 2002 , the Complainants sent a letter to the Respondent demanding that he transfer the domain name in dispute to the Complainants and cease using Complainants’ Trademarks. On September 23, 2002, Respondent’s attorney responded to Complainants’ legal counsel that the Respondent was willing to transfer “all right, title and interest in the registered domain name <chateauwhister.com>” for “an appropriate sum”. Respondent’s offer to sell the domain name is evidence of bad faith. See Heidi Weisel, Inc. v. Jerry DeSantis, NAF Claim No. 97870, Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115, and Little Six, Inc v. Domain For Sale, NAF Claim No. FA 96967. Accordingly, Respondent’s conduct violates paragraph 4(b)(i) of the Policy.

Finally, on September 18, 2003, Complainants’ legal counsel reiterated its cease and desist requests made in its letter of August 6, 2002. Respondent failed to respond to Complainant’s second request. Previous panels have found that respondent’s failure to respond to Complainant’s cease and desist letter is indicative of continuing bad faith use. See NFL Properties, Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147, Playboy Enterprises International Inc. v. Beg Service KB, WIPO Case No. D2001-0494, and Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090.

B. Respondent

The Respondent did not file any response nor any representation.

6. Discussion and Findings

Prior to engaging into the discussion, the Panel considers appropriate to comment on the scope of the substantial evidence in this case. Considering that the domain name in dispute was registered on March 24, 2000, the Panel considers appropriate the segment the evidence in two portions, one prior to and another subsequent to the said registration, which periods are distinctly relevant to the consideration of the evidence in relation to the three criteria or elements to be proven pursuant to paragraph 4(a) of the Policy.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be 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 interest in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant Chateau Whistler Resort Partnership has in its evidence clearly demonstrated that it has rights in the family of CHATEAU WHISTLER Trademarks which are all registered in Canada and incorporate the Chateau Whistler distinctive elements. The Complainant Chateau Whistler Resort Partnership has furthermore amply shown the extensive use and recognition of the Trademarks from the period of their adoption in 1989 to March 2000 and even thereafter in association with the services mentioned in each of the four trademark registrations. By March 2000 the Complainant Chateau Whistler Resort Partnership had thus built important goodwill and reputation in association with this family of CHATEAU WHISTLER Trademarks.

The Complainant FHR Real Estate Corporation, which is the parent of the other Complainant owns a US registration for the trademark CHATEAU WHISTLER in association for travel agency services. While there is no specific evidence of the use of this Trademark, it is registered and thus has been used prior to registration in the United States and is likely associated with the use of the other four Trademarks mentioned herein. Thus, the Complainant FHR Real Estate Corporation has rights in the US trademark CHATEAU WHISTLER which also embodies the same two elements as found in the four Canadian Trademarks.

The domain name in dispute incorporates in its entirety the Chateau Whistler distinctive elements of the family of CHATEAU WHISTLER Trademarks of both Complainants. There is no doubt that the domain name in dispute is identical to the CHATEAU WHISTLER Trademarks for the purposes of the Policy. In the opinion of the Panel, the simple addition of the suffix “.com” does not deter the reader that Chateau Whistler distinctive elements within the Trademarks have been taken and associated with the said suffix and this does not diminish in any way the fact that the domain name in dispute is also confusingly similar to the CHATEAU WHISTLER Trademarks. This is furthermore confirmed by the evidence of confusion adduced by the Complainants.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainants have made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “chateau whistler” or the domain name in dispute, is not making a legitimate non-commercial or fair use of the domain name in dispute.

Furthermore, the Complainants have never given a license nor in any way authorized the Respondent to make use of Complainants’ Trademarks even during the period of their contractual relationship. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks.

While there was a contractual relationship with the Respondent representative from the period of May to November of the years 2000, 2001 and 2002, it is clear from the letters of agreements adduced in evidence by the Complainant Chateau Whistler Resort Partnership that the agreements did not include any authorization to register and use the domain name in dispute which, in fact, has already been registered on March 24, 2000. It is interesting to observe that while an alleged benefit to Complainant Chateau Whistler Resort Partnership is mentioned in the letter of legal counsel to the Respondent in response to the cease and desist letter from legal counsel of Complainant Chateau Whistler Resort Partnership, this point, if it had any basis or merit, was not raised by the Respondent in response to the Complaint. Indeed the Respondent has not filed any response to the contentions and evidence presented by the Complainants.

The activities of the Respondent, associated with the use of a confusingly domain name, are according to the earlier UDRP decisions cited by the Complainants, which this Panel adopts, are illegitimate and not a bona fide offering of goods and services.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainants contend that the domain name in dispute was registered and used in bad faith.

In respect of possible constructive notice of the Trademarks to Canadian citizens, this Panel, having regard to the evidence, considers that the Respondent and its representative were most likely aware of the existence of the CHATEAU WHISTLER Trademarks in March 2000. There is uncontradicted evidence that these marks have been extensively used in Canada and have reached significant renown if not fame in the field of hotel and resort services and golf activities by March 2000 when the Respondent registered the domain name in dispute. It is soon after the said registration that Respondent representative again approached Complainant Chateau Whistler Resort Partnership and entered into an agreement with the latter.

Furthermore, within the evidence provided by the Complainants to substantiate substantial use and alleged fame over the period of 1990 through the date of the filing of the complaint in early 2005, a substantial portion of this evidence is directly applicable to the period prior to March 2000. It is therefore inconceivable to this Panel under the present circumstances that the Respondent could not have had knowledge of the CHATEAU WHISTLER Trademarks at least those of the Chateau Whistler Resort Partnership, particularly when the Respondent adopts the exact trademark CHATEAU WHISTLER and associates these distinctive elements with the suffix “.com”.

This knowledge is further confirmed when one considers the four unauthorized mentions in Respondent’s website that it is a “authorized agent” of the Complainants which representation has been categorically denied by the Complainants and such denial not challenged by the Respondent. This Panel finds that the Respondent registered the domain name in dispute to capitalize on the goodwill associated with the Trademarks to create and benefit from an impression of sponsorship, endorsement and affiliation, which in fact, did occur when one considers the evidence of confusion adduced by the Complainants.

This Panel finds that the domain name in dispute was registered in bad faith by the Respondent.

Relying of the evidence adduced by the Complainants and the UDRP decisions cited in support of their representations, this Panel finds that the Respondent used the domain name in dispute to divert internet users or visitors for commercial benefit to its website which offers very similar services and that in using the domain name, identical to the CHATEAU WHISTLER Trademarks, not only likely created likelihood of confusion but has created such confusion. This is also evidence of use in bad faith.

The Complainants alleged that Respondent attempted to sell the domain name in dispute for a sum in excess of documented out of pocket cost when legal counsel for Respondent offered to sell the domain name in dispute for “an appropriate sum”. Yet one cannot exclude that such “appropriate sum” can, although hardly plausible, be corresponding to the direct out of pocket costs of registration.

This Panel finds that there are already other evidence and grounds to demonstrate that the domain name in dispute is used in bad faith by the Respondent. In so deciding, the Panel acknowledges and adopts the findings and support of the UDRP decisions referred to by the Complainants.

This Panel finds the Respondent used the domain name in dispute in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain name <chateauwhistler.com> is confusingly similar to the Complainants’ Trademarks;

(b) the Respondent has no rights or legitimate interests in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chateauwhistler.com> be transferred to the Complainant Chateau Whistler Resort Partnership.

J. Nelson Landry
Sole Panelist

Dated: June 8, 2005