NATIONAL ARBITRATION FORUM
File No.: FA0110000100487
RADISSON HOTELS INTERNATIONAL, INC., v. NATURAL NET BEHAVIOR
The Complainant is Radisson Hotels International, Inc., Minneapolis, MN. The respondent is Natural Net Behavior, Boise, ID.
REGISTRAR AND DISPUTED DOMAIN NAMES:
The domain name at issue is <18003333333.com> registered with Domain Bank, Inc.
The undersigned certifies that he has acted independently and impartially and has no known conflict in serving as a panelist in this proceeding.
Hon. H. Curtis Meanor, as Panelist.
Complainant submitted a complaint to the National Arbitration Forum ( “the Forum”) electronically on October 8, 2001; the Forum received a hard copy of the Complaint on October 10, 2001.
On October 12, 2001, Domain Bank confirmed by e-mail to the Forum that the domain name <18003333333.com> is registered with Domain Bank and that the Respondent is the current registrant of the name. Domain Bank has verified that Respondent is bound by the Domain Bank 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 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Noficiation”), setting a deadline of November 1, 2001 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 @18003333333.com by e-mail.
A timely response was received and determined to be complete on November 1, 2001.
An additional response by Complainant was received on November 8, 2001.
On November 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed H. Curtis Meanor as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends to have established common law trademark rights to 18003333333, because it has used it in commerce since 1987 for Hotel Services. See Gorstew Limited & Unique Vacations, Inc. v. Berkshire Trust, FA 95430 (Nat. Arb. Forum Oct. 20, 2000) (“Complainant also has a common law trademark in the mark ‘1-800-BEACHES.’ The Complainant uses this mark as its telephone number for customer service, vacation sales, and general information about the Complainant”).
In addition, Complainant contends that Respondent acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding bad faith where Respondent offered domain names for sale).
Complainant also contends that Respondent registered the domain name to intentionally attempt to attract consumers, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Respondent contends that Complainant does not have exclusive rights to the all digit telephone number 1-800-333-3333. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (“[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
Respondent contends that it has rights to sell domain names and doing so does not infringe on Complainant’s rights. See Fifty Phis Media Corp. v. Digital Income, Inc., FA 94294 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had no rights in the domain name and had registered and used the domain name in bad faith where the Respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).
Respondent contends that Complainant does not have exclusive rights to the number and that the domain name may be offered for sale in good faith to the general public. See John Fairfax Publ’n. Pty Ltd v. Domain Names 4U & Fred Gray, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the Respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).
Respondent also contends that Complainant’s domain name is one in which Complainant could not have any proprietary interest since the domain name could not be registered with the United States Patent and Trademark Office.
C. Additional Submissions
Complainant has filed an additional response rebutting several of Respondent’s arguments. In its additional response Complainant contends that Respondent has not challenged its claim to common law trademark rights in the mnemonic telephone number, which is the subject of this arbitration. Complainant points out that such telephone numbers have been held to be protected as trademarks and use of a confusingly similar telephone number can be prohibited as both unfair competition and a trademark infringement citing cases in support of this argument. Complainant also states Respondent does no business with respect to the toll free number at issue and states that Respondent offered to sell its rights in the domain name to Complainant for $15,000. In its additional response, Complainant also asserts that Respondent registered the domain name in bad faith, since it does no business using that domain name.
Complainant has been using its mnemonic telephone number, 1-800-333-3333, since 1987. It has expended considerable effort and made extensive expenditures to popularize this number, which can be used to make reservations at any Radisson Hotel. This toll free number is easily memorized and once or twice utilized will probably not be forgotten. It is obvious that consumers would find it much easier to touch in 1-800-333-3333 than 1-800-RADISSON since, of course, it is much easier to touch in the numbers than to search for letters when utilizing a touch-tone telephone.
Respondent however has not used this domain name in its business and its lack of a business use for the domain name is shown by its offer to sell the number to Radisson for what in the context of the value of that domain name to Radisson is a minute sum.
The domain name registered by Respondent is identical to the toll-free number, 1-800-333-3333, utilized by Complainant. Respondent’s argument that Complainant cannot have a proprietary interest in the toll-free number at issue because that number cannot be a registered trademark with the USPTO is not accurate. In the Dial-A-Mattress Franchise Corporation v. Page, 880 F2d. 675, 678 (2nd Cir. 1989), it was stated: “Telephone numbers may be protected as trademarks, and a competitor’s use of a confusingly similar telephone number may be enjoined as both trademark infringement and unfair competition.” Whether Complainant’s number can be registered with the USPTO is beside the point. It is clear that the Complainant has a common law proprietary interest in the use of this number.
Paragraph 15(a) of the Rules for Uniform Domain Name Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 or Confusingly Similar
As stated above, Respondent’s domain name is identical to Complainant’s toll free 18003333333.
Rights and Legitimate Interests
The Panel finds that Respondent’s passive holding demonstrates that it has no legitimate interest in the domain name it registered.
See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Registration and Use in Bad Faith
The Panel finds that Respondent has acted in bad faith by passively holding the domain name at issue since its registration. See Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enters., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
Finally, at the time of registration, Respondent knew or should have been aware of the Complainant’s famous mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
It would not take much effort for the owner of the domain name <18003333333.com> to use it unfairly against Complainant. If placed on the Web as a source for making hotel reservations, those familiar with it would believe they are reaching a Radisson reservation service. Such customers could be routed to Radisson with the holder of the domain name obtaining a commission which Radisson otherwise would not have to pay. Also, attempts could be made to direct the user to a hotel other than Radisson, especially if the user seemed not to know of the prior use of <18003333333.com> by Radisson. In either event the holder of the domain name would be using Radisson’s proprietary toll free telephone number unfairly to deprive it of business.
For the foregoing reasons set forth above, it is ordered that the domain name at issue be transferred from Respondent to Complainant.
H. CURTIS MEANOR, Panelist
DATED:December 11, 2001
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