Best Western International, Inc. v. Azra Khan
Claim Number: FA0209000125265
Complainant is Best Western International, Phoenix, AZ, USA (“Complainant”) represented by Meghan A. Wharton, of Brown & Bain, P.A. Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestwestren.com>, registered with Iholdings.com, 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 17, 2002; the Forum received a hard copy of the Complaint on September 18, 2002.
On September 17, 2002, Iholdings.com, Inc. confirmed by e-mail to the Forum that the domain name <bestwestren.com> is registered with Iholdings.com, Inc. and that Respondent is the current registrant of the name. Iholdings.com, Inc. has verified that Respondent is bound by the Iholdings.com, 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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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 firstname.lastname@example.org 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 28, 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:
1. Respondent’s <bestwestren.com> domain name is confusingly similar to Complainant’s registered BEST WESTERN family of marks.
2. Respondent does not have any rights or legitimate interests in the <bestwestren.com> domain name.
3. Respondent registered and used the <bestwestren.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. Specifically, 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 (“USPTO”) 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, including Pakistan.
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, including hotels in Pakistan.
Respondent registered the <bestwestren.com> domain name on January 10, 2002, and is not licensed or otherwise authorized to make any use of the BEST WESTERN family of marks for any purpose. Currently, Respondent’s domain name redirects consumers to <vipfares.com>, a travel reservation site. In addition, once an Internet users reaches the disputed domain name a “pop-up” advertisement appears for an online casino.
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 its BEST WESTERN family of marks through registration on the Principal Register of the USPTO, as well as via continuous and widespread use of the mark worldwide.
Respondent’s <bestwestren.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark. The main difference between Respondent’s domain name and the registered mark of Complainant is the transposing of the letters “e” and “r” in the Complainant’s mark WESTERN. In addition, Respondent has added the top-level domain “.com” and removed the space between the words BEST and WESTERN. Other than these minimal differences, the domain name <bestwestren.com> is identical to the BEST WESTERN mark.
It is well established that the mere transposition of two letters in 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 Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
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 the <bestwestren.com> domain name is confusingly similar to Complainant’s registered BEST WESTERN mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden 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).
It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark is using the domain to divert Internet users to websites competing with a complainant. 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 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 AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website). Respondent is taking advantage of the confusing similarity between Complainant’s registered mark and the disputed domain name to gain profit from advertising, while directing visitors to a website that competes with Complainant. This is not a noncommercial use of the site, nor a bona fide offering of goods or services.
Respondent does not appear to have any rights in, nor is it commonly known by, the name BEST WESTREN. 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).
As stated, once a complainant has successfully presented its prima facie case illustrating a 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 the respondent.
As Respondent submitted nothing to the Panel in Response to this Complaint, Respondent fails to meet that burden. See 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)
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s <bestwestren.com> domain name was registered and used in bad faith.
As a registered trademark operates as constructive notice to the existence of a mark, it is evidence that a domain has been registered and used in bad faith when a respondent registers a domain name that is confusingly similar to a trademark despite actual or constructive notice of the mark. Because Complainant’s BEST WESTERN mark has attained significant international source identification, it is presumed that Respondent had knowledge of Complainant’s rights in the mark. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can be presumed that Respondent knew of U-HAUL before registering the disputed domain names); see also 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).
Policy ¶ 4(b)(iv) states that when a domain name is used to intentionally attempt to attract, “for commercial gain, Internet users to [Respondent’s] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it is an example of bad faith use and registration. Taken together, the use of a registered mark to divert Internet traffic to a website unrelated to and unauthorized by the holder of the mark evidences bad faith use and registration. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).
When Respondent diverts Internet users to gambling websites or gains additional revenue via pop-up advertisements, it is further evidence of bad faith use. See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).
In this dispute, Respondent registered its <bestwestren.com> domain name on January 10, 2002, decades after Complainant’s first use of the BEST WESTERN registered family of marks. Respondent’s use of Complainant’s registered mark in its domain name is an action that evidences bad faith registration. Respondent’s use of Complainant’s mark for commercial gain via “pop up” advertisements for gambling websites also evidences bad faith. Most importantly, in diverting Internet users who are searching for Complainant’s site to the site of a competitor, Respondent creates confusion as to the source or sponsorship of the <vipfares.com> website, in direct violation of the Policy.
Accordingly, 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 <bestwestren.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 30, 2002
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