Lodgeworks L.P. v. Sierra Hospitality
Claim Number: FA0802001155663
Complainant is Lodgeworks L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sierrahotels.us> and <sierra-hotels.us>, registered with Godaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 2, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on
Complainant filed a timely Additional Submission on
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sierrahotels.us> and <sierra-hotels.us> domain names are confusingly similar to Complainant’s SIERRA SUITES and subsequent related marks.
2. Respondent does not have any rights or legitimate interests in the <sierrahotels.us> and <sierra-hotels.us> domain names.
3. Respondent registered and used the <sierrahotels.us> and <sierra-hotels.us> domain names in bad faith, primarily due to Respondent’s offer to sell the domain names.
B. Respondent makes the following assertions:
1. There is widespread use of the word “Sierra” in connection with the hotel business, therefore Complainant does not have exclusive rights to “Sierra” and consumers must distinguish between “Sierra” websites found on the Internet.
2. Respondent’s last name is Sierra and he has operated in the hotel industry under the name Sierra Hospitality since 1997. The disputed <sierrahotels.us> and <sierra-hotels.us> domain names bear a logical relationship to Respondent’s business.
3. Respondent did not register or use the <sierrahotels.us> and <sierra-hotels.us> domain names in bad faith.
C. Additional Submissions:
1. Complainant states that its use of SIERRA SUITES pre-dates Respondent’s use of SIERRA HOSPITALITY. Complainant also alleges that it is “either operating under agreement … or involved in various stages of formal disputes or settlement discussions” with third parties using the word SIERRA in connection with the hotel industry. Finally, Complainant asserts that its prominence in the hotel industry accords it the right to use SIERRA exclusively.
2. Respondent reiterates that Complainant’s rights to SIERRA in the hotel and hospitality field are not exclusive, and may be deemed relatively weak due to extensive third party use, including Respondent’s own SIERRA HOSPITALITY mark.
Complainant holds a U.S. Trademark Registration for the SIERRA SUITES mark, filed in December 1995 and registered in April 2002. The first of Complainant’s trademark registrations for any variant of the SIERRA SUITES mark is for the SIERRA SUITES HOTEL mark, filed in June 2004 and registered in June 2006. Respondent began using the mark SIERRA HOSPITALITY in September 1997, and registered the <sierrahotels.us> and <sierra-hotels.us> domain names in November 2007.
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.”
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant registered numerous
marks with the United States Patent and Trademark Office (“USPTO”) in
connection with its hospitality business operations. The mark
that is most applicable to the current dispute is the HOTEL SIERRA service mark
(Reg. No. 3,353,018 issued December 11, 2007, filed October 13, 2006). The Panel finds that the registration with
the USPTO sufficiently establishes rights in the mark for the purposes of
Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal
trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were
adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)).
The Panel also finds that Complainant’s rights in the
mark date back to the filing date of the mark registration. See Hershey
The <sierrahotels.us> and <sierra-hotels.us> domain
names contain the entire mark simply transposing the words and adding the
letter “s.” The addition of the
country-code top-level domain “.us” and a hyphen does not affect an analysis
under Policy ¶ 4(a)(i). The Panel deems
the disputed domain names confusingly similar to Complainant’s mark. See
Respondent makes a valid argument that the <sierrahotels.us> and <sierra-hotels.us> domain names are comprised of common and/or descriptive terms, subject to many uses by third-parties, and as such cannot be found to be confusingly similar to Complainant’s mark. The Panel, however, finds that it is not necessary to make that determination. Policy ¶ 4(a)(i) only addresses whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under UDRP ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In its Complaint, Complainant made scant statements that Respondent is not known by the disputed domain names, does not have any intellectual property rights in SIERRA HOTELS, and that Respondent is not licensed by Complainant. In its Additional Submission, Complainant argues that its SIERRA marks are famous in the hotel industry, that Respondent should have known of them, and that Respondent’s use of SIERRA HOSPITALITY is “meager” by comparison. No evidence was provided to support the contention that any of Complainant’s SIERRA marks have become famous. Likewise, Complainant refers to its “market share”, but does not tell the Panel what that market share is.
In fact, Respondent demonstrated that he IS known by the business name “Sierra Hospitality Management and Consulting, Inc.,” that indeed his last name is SIERRA, and that he has been operating in the hotel industry since 1997, thereby establishing rights to use “SIERRA.” For example, Mr. Sierra taught courses for the Tourism and Hospitality Department of a local college, conducted training for the Preferred Hotel Group, and published a Hotel Operations manual.
The <sierrahotels.us> and <sierra-hotels.us> domain names bear a logical relationship to Respondent’s business and he registered them when he renewed and registered other related marks in 2007.
Respondent admits that he had heard of SIERRA SUITES, the only mark Complainant was using at the time Respondent started using the business name SIERRA HOSPITALITY. However, Respondent believed and believes that, in a crowded field of marks containing SIERRA, both parties could legitimately use the word SIERRA in combination with other descriptive words. Indeed, the Panel notes that Complainant’s later registration for SIERRA SUITES HOTEL required a disclaimer of “SUITES HOTEL” and its later registration of HOTEL SIERRA required a disclaimer of “HOTEL”. Respondent provided evidence of numerous other coexisting uses of the word SIERRA in the hotel industry, even in 1995. Respondent’s business, Sierra Hospitality and Consulting, Inc., has itself coexisted with Complainant for more than 10 years. Complainant provided no evidence to support its suggestion that it was in a position to stop all of the third party uses of SIERRA, other than providing copies of pending Oppositions to trademark applications for GRAND SIERRA RESORT. (The Panel here notes that it did consider the exhibits to Complainant’s Additional Submission, though they were one day late, primarily because Respondent exercised his right to fully respond.) Finally, Respondent also points out that the word “sierra” is a common dictionary word meaning mountain range.
For all of the foregoing reasons, the Panel finds that both Complainant and Respondent have a legitimate right to use the word SIERRA in the hotel industry and that add-on words, such as “hospitality,” “suites,” “hotel” and “resort” are descriptive and not distinctive in the crowded field of hotel services.
The Panel finds that Respondent’s business in the hotel industry constitutes a bona fide offering of goods or services under the word and his name SIERRA and that he therefore has a legitimate interest in the related <sierrahotels.us> and <sierra-hotels.us> domain names under Policy ¶ 4(c)(iii). See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (finding that the respondent was commonly known by the <lexusmichaels.com> domain name because the respondent’s stage name was LEXUS MICHAELS); see also Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO Apr. 27, 2004) (finding that the <harrodssalon.com> domain name was used in a bona fide manner because the respondent had been in the salon business for ten years prior to registering the domain name and the owner’s surname was “Harrod”).
Respondent asserts plans to use the <sierrahotels.us> and <sierra-hotels.us> domain names in connection with Respondent’s already established and related business. The Panel finds that Respondent’s intention to use is sufficient under Policy ¶ 4(c)(ii). See Downstream Exch. Co. v. Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001) (finding that the respondent established rights in the <downstreamexchange.com> domain name pursuant to UDRP Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Because the timing of each party’s use of SIERRA is in issue, the Panel elects to also address bad faith. Complainant states that Respondent must have known of Complainant’s marks when it registered the <sierrahotels.us> and <sierra-hotels.us> domain names and therefore Respondent must have registered in bad faith. However, the Panel finds that the relevant time to impute knowledge of Complainant’s superior trademark rights in “SIERRA” and variants thereof is in 1997, when Respondent started using his name SIERRA as a trademark. Complainant began using SIERRA SUITES in 1995, but it does not give any evidence whatsoever as to the extent of its use of that mark at that time. Complainant does not address the concurrent uses of SIERRA in the hotel industry by third parties at that time. The Panel finds that Respondent had a legitimate basis upon which to begin using his name SIERRA as a trademark in 1997. Complainant has not demonstrated that, at that time, Respondent should have known that Complainant had superior rights in the word SIERRA, particularly as combined with any and all descriptive words. The Panel therefore finds that the subsequent registration of the <sierrahotels.us> and <sierra-hotels.us> domain names were not in bad faith, as they are natural extensions of Respondent’s legitimate use of SIERRA in the hotel industry.
Finally, Complainant claims bad faith due to Respondent’s offer to sell the disputed domain names to Complainant for an “exorbitant amount.” Again, Complainant fails to state what that amount was. Respondent states that, once he found out that Complainant rebranded itself as HOTEL SIERRA, after he registered the <sierrahotels.us> and <sierra-hotels.us> domain names, he did indicate a willingness to sell the disputed domain names. Respondent further indicated that Complainant’s hostile demand that he stop using his own name and mark completely had an effect on the price that was discussed. The Panel finds that the discussion of the sale of a legitimately-held domain name is not an indication of bad faith. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish two of the three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: April 17, 2008
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