Best Western International, Inc. v. Azra
Khan
Claim Number: FA0209000125265
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@bestwestren.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 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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
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.
DECISION
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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