Best Western International, Inc. v. QTK Internet
Claim Number: FA0209000124994
Complainant is Best Western International, Inc., Phoenix, AZ (“Complainant”) represented by Meghan A. Wharton, of Brown & Bain P.A. Respondent is QTK Internet, Turtle Creek, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestweston.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 11, 2002; the Forum received a hard copy of the Complaint on September 12, 2002.
On September 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <bestweston.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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 email@example.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 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Submission makes the following assertions:
a. Respondent’s <bestweston.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 <bestweston.com> domain name.
c. Respondent registered and used the <bestweston.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds many registrations incorporating variations of its BEST WESTERN mark. Complainant owns U.S. Reg. Nos. 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 <bestweston.com> domain name on August 14, 2001. Currently, Respondent’s domain name redirects consumers to <roomsusa.com>, a travel reservation site that allows Internet users to book hotel and motel rooms worldwide. This is the same type of activity that Complainant deals in. Respondent is not licensed or otherwise authorized to make any use of the BEST WESTERN family of marks for any purpose.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 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 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 <bestweston.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 misspelling of the word “western” by removing the “er” and replacing it with the letter “o”. Other than these cosmetic differences, the domain name <bestweston.com> is identical to the BEST WESTERN mark.
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 Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see Little Six Inc. v. Iggi Networks, Inc., FA 101812, at 3 (Nat. Arb. Forum Dec. 11, 2001) (“Respondent’s <clubingo.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name is a misspelling of Complainant’s mark and phonetically similar.”)
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 or Legitimate Interests
Once a Complainant has successfully presented a prima facie case illustrating Respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts 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).
A Complainant can meet this burden by successfully addressing any claims Respondent could make under Policy ¶¶ 4(c)(i-iii) in its defense. 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”).
Complainant shows in its submission that Respondent is using its domain name in connection with neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s website offers services comparable to those offered by Complainant. The site that an Internet user is redirected to when they enter <bestweston.com> offers room reservation services in hotels and motels worldwide, as well as special offers and promotions, all directly comparable to activities performed by Complainant. Respondent’s use of another organization’s trademark to attract business is not a bona fide offering of services. Diverting consumers to Respondent’s competing site is also incompatible with a legitimate noncommercial or fair use of a domain name. See Best Western Int’l, Inc. v. Sepia, FA 113984, at 3 (Nat. Arb. Forum June 26, 2002) (“Respondent’s use of [best-western-hotels.com] to divert Internet traffic to Respondent’s competing travel services website is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
Respondent does not appear to have any rights in, nor is it commonly known by, its <bestweston.com> domain name. Furthermore, Complainant has not given Respondent permission or consent to use its BEST WESTERN family of marks. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).
These showings by Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims Respondent could make under the Policy; thus Complainant adequately meets its burden of demonstrating Respondent’s lack of rights and legitimate interest in the domain name.
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 affirmatively demonstrate any rights or legitimate interests in the <bestweston.com> domain 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
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
Having a well-known, registered trademark operates as constructive notice of the existence of the mark. It is evidence that a domain name has been registered and used in bad faith when Respondent registers a domain name that is confusingly similar to a trademark, especially one listed on the Principal Register of the USPTO. Respondent knew, or should have known, that its domain name <bestweston.com> was nearly identical to a registered trademark. Nevertheless, it proceeded to register its domain name; this is evidence of bad faith registration. See Best Western Int’l, Inc. v. Wieczorek, FA 96557 (Nat. Arb. Forum Mar. 27, 2001) (“The popularity of [Best Western’s] mark permits the conclusion that respondent knew or should have known of [Best Western’s] well-known mark prior to registering the disputed domain name. This is evidence of bad faith”); see also Best Western Int’l, Inc. v. Sepia, FA 113984 (Nat. Arb. Forum June 26, 2002) (“Based on the fame of [Best Western’s] mark, it can be inferred the Respondent had notice of [Best Western’s] mark when it registered the disputed domain name. Registration of a domain name despite notice of [Best Western’s] rights is evidence of bad faith registration”).
In addition, Policy ¶ 4(b)(iv) states that evidence of bad faith includes intentional use of a domain name by Respondent to “attract, for commercial gain, Internet users to [its] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site.” By offering services that are closely similar to those offered on Complainant’s website (especially online room reservations in hotels worldwide), and attracting Internet consumers by using a domain name confusingly similar to Complainant’s BEST WESTERN mark, Respondent is using the domain <bestweston.com> in bad faith. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).
The Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <bestweston.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 17, 2002