Best Western International, Inc. v.
Spider Inc.
Claim Number: FA0208000123878
PARTIES
Complainant
is Best Western International, Inc.,
Phoenix, AZ (“Complainant”) represented by Meghan
A. Wharton, of Brown & Bain. Respondent is Spider Inc., E. Northport, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bestwesten.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 26, 2002; the Forum received a hard copy of the
Complaint on August 28, 2002.
On
August 29, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <bestwesten.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
August 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 2002 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@bestwesten.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 7, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
a. Respondent’s <bestwesten.com>
domain name is confusingly similar to Complainant’s registered BEST WESTERN
marks.
b. Respondent does not have any rights or
legitimate interests in the <bestwesten.com> domain name.
c. Respondent registered and used the <bestwesten.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds many registrations
incorporating variations of its BEST WESTERN mark. Complainant owns United
States Registration Numbers 1,427,735 and 1,432,431 for its BEST WESTERN mark,
registered with the U.S. Patent and Trademark Office (“USTPO”) on February 3,
1987 and March 10, 1987, respectively. Complainant has registered its BEST
WESTERN mark, in a range of formats and variations, throughout the world.
Complainant has also been using the
domain <bestwestern.com> since November 1, 1994. At this site, consumers
obtain information about Complainant’s properties worldwide and make
reservations at their numerous hotels and motels. It is at this site that
consumers learn about Complainant’s special programs and promotions.
Since as early as 1946, Complainant has
continuously used this BEST WESTERN family of marks in connection with its
worldwide hotel/motel services. Complainant is the world’s largest hotel brand,
with over 4,000 hotels throughout the world bearing the BEST WESTERN mark.
Respondent registered the <bestwesten.com>
domain name on May 18, 1998. Currently, Respondent’s domain name resolves to a
generic “placeholder page” that contains no original information.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph
4(a) of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 to and/or Confusingly Similar
Complainant has established rights in the
BEST WESTERN family of marks through registration with the USPTO and subsequent
continuous use of the marks.
Respondent’s <bestwesten.com>
domain name is confusingly similar to Complainant’s BEST WESTERN mark. The only
differences between Respondent’s domain name and the registered mark of
Complainant are the addition of the top level domain “.com”, the removal of the
space between the words BEST and WESTERN, and the omission of the letter “r”
from Respondent’s otherwise identical domain name.
It is well established that the mere
omission of one letter from a domain name does not prevent a finding of
“confusing similarity” under Policy ¶ 4(a)(i), especially when the domain name
reflects a prominent and widely recognized mark. See Mattel, Inc. v.
Zuccarini, FA109048, at 3 (Nat. Arb. Forum May 22, 2002) (“The omission of
a letter does not distinguish the domain name from Complainant’s mark so as to
defeat a claim of confusing similarity…”); see also Compaq Info. Techs.
Group, L.P. v. Seocho, FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark).
Furthermore,
as spaces are impermissible in domain name registrations and a generic
top-level domain (such as “.com”) is required for every domain name, neither of
these differences have any effect on whether Respondent’s domain name is
confusingly similar to Complainant’s mark. See Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant successfully presented a prima
facie case that Complainant has rights in the disputed domain name and that
Respondent does not, thereby shifting the burden of demonstrating rights and
legitimate interests in the domain name to Respondent. See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name).
Complainant shows in its Submission that
Respondent is not using its domain name in connection with a bona fide offering
of goods or services and does not hold any trademarks resembling that domain
name. Furthermore, Respondent does not appear to have any rights in the domain
name <bestwesten.com>, and Respondent is not commonly known by
that name. Complainant has also shown that Respondent is not making any
legitimate noncommercial or fair use of the domain name; indeed, Respondent has
made no use of the domain. These showings by Complainant, following the
criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims
Respondent could make under the Policy. Complainant adequately meets the burden
of demonstrating Respondent’s lack of rights and legitimate interest in the
domain name. See Body Shop Int’l
PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding
“that on the evidence provided by the Complainant and in the absence of any
submissions from the Respondents, that the Complainant has established that (i)
the Respondents are not using and have not used, or are not demonstrating and
have not demonstrated, an intent to use the said domain name in connection with
a bona fide offering of goods or services; (ii) the Respondents are not and
have not been commonly known by the said domain name; and (iii) the Respondents
are not making legitimate noncommercial or fair use of the said domain name,
without intending to mislead and divert consumers or to tarnish Complainant’s <THE
BODY SHOP> trademark and service mark”).
As stated above, Respondent failed to
submit a Response in this proceeding. Because Complainant’s assertions are
uncontested, it is proper for the Panel to accept Complainant’s reasonable
contentions as true. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
In these circumstances, Respondent’s
failure to use its <bestwesten.com> domain name or affirmatively
demonstrate any rights or legitimate interests in the domain name can only
result in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interest in the domain
name because Respondent never submitted a Response nor provided the Panel with
evidence to suggest otherwise); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where Respondent has advanced no basis on which
the Panel could conclude that it has a right or legitimate interest in the
domain names, and no use of the domain names has been established); see also
See Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to Complaint and had
made no use of the domain name in question).
The Panel finds that Respondent does not
have any rights or legitimate interests in the domain name under Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Although the
Policy lists four circumstances that are considered to be evidence of bad faith
registration and use, the circumstances described therein are not exhaustive,
but are rather merely illustrative of situations clearly defining bad faith
registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”).
One established example of bad faith
registration not specifically enumerated within the Policy is when a Respondent
registers a domain name that it knew (or had reason to know) was similar to a
prominent mark. See Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent
had actual and constructive knowledge of Complainant’s EXXON mark given the
world-wide prominence of the mark and thus Respondent registered the domain
name in bad faith). Furthermore, passive holding of a domain name, without any
further justification or demonstrable preparations for use, infers bad faith
use and registration of the domain name. Respondent has made no use of the
domain name since its registration in May of 1998. It has passively held the
<bestwesten.com> domain name for over four years. In light of the
fact that Respondent has made no submission to the contrary, it is acceptable
to infer bad faith use on behalf of Respondent with regard to its passively
held domain name. See Caravan Club
v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith); See also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website
in a two year period raises the inference of registration in bad faith).
Together, these two principles underscore the fact that when a registrant
registers a widely acknowledged mark, and subsequently fails to develop its
domain, that registrant has exhibited bad faith use and registration. See TV Globo Ltda v. Globoesportes.com,
D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name
in dispute is obviously connected with a well-known mark, (2) Respondent
deliberately chose a domain name which is the mark of the largest TV operator
in the world’s largest Portuguese speaking country, and (3) Respondent failed
to develop the site).
Circumstances indicate that Respondent
had previous knowledge of Complainant’s BEST WESTERN mark. Complainant holds
many registrations incorporating variations of its BEST WESTERN mark,
registrations that predate Respondent’s acquisition of the <bestwesten.com>
domain name. Even if Respondent did not know that its domain name was
confusingly similar to the BEST WESTERN mark, that mark’s listing with the
Principal Register of the USPTO operates as constructive notice of the existence
of the mark.
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <bestwesten.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 21, 2002.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page