Smith Travel Research, Inc. v. Victor An
Claim Number: FA0904001259999
Complainant is Smith Travel Research, Inc. (“Complainant”), represented by Wendy
L Robertson, of Baker, Donelson, Bearman, Caldwell &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <str.com>, registered with Spot Domain.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
On June 1, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first states that it is the owner of registered trademarks which include “STR;” “STR & Design;” “STR GLOBAL & Design;” and “STR LODGING REVIEW.” It has provided lodging industry information to the trade since 1986. Complainant asserts that the domain name in dispute wholly incorporates its registered “STR” mark and is therefore identical to or confusingly similar to its mark. Complainant next argues that Respondent has no rights or legitimate interests in the name. Complainant notes that Respondent has no connection or affiliation with Complainant, and that Respondent is not commonly known by the domain name. Complainant contends that Respondent is not using the name for a bona fide offering of goods and services. Rather, Respondent, for commercial gain, is using the confusingly similar name to redirect Internet users searching for Complainant’s website to Respondent’s site, where Respondent earns referral fees by linking to other providers in the travel industry. Finally, Complainant asserts that the name was registered and is being used in bad faith. Complainant asserts that Respondent is intentionally attempting to attract, for commercial gain, Internet users who will likely be confused by the name and associate it with Complainant’s services. Respondent’s website provides visitors with links to other websites for booking hotels, and presumably Respondent earns referral fees. As such, Complainant argues that Respondent is trading on the goodwill and notoriety of Complainant’s marks. Additionally, Complainant asserts that given its longstanding notoriety in the travel industry, Respondent must have been aware of its mark when Respondent registered the domain name. For these reasons the name was registered and is being used in bad faith.
Respondent contends that the three-letter term “STR” is a very popular
abbreviation and has been used by many businesses, including perfume merchants
and the city of
C. Additional Submissions
In its Additional Submission Complainant contests three points made by
Respondent in its Response. First, Complainant disagrees that its own business
is limited to industry professionals while Respondent’s site attracts only
ordinary people. By way of example, Complainant notes that if one clicks on
“find a hotel” on Respondent’s website under “Australia,” the user will get a
list of hotels in a given city in Australia with the hotel’s star rating,
number of guest rooms and other similar information. Complainant points out
that its own Census Report provides similar information, and given the
notoriety of Complainant’s STR mark in the industry there is great potential
for confusion. Users might believe that Complainant was affiliated with or
endorsed the hotels or other travel products connected to Respondent’s website.
Complainant also rejects the argument that Respondent’s website is for common
people while Complainant deals only with industry professionals, noting that
Complainant’s reports are commonly reviewed by the media and by students, and
that even industry professionals need to make hotel reservations and would be
confused by the domain name. Complainant also takes issue with Respondent’s
denial that it is diverting Internet users for commercial gain. As stated in
the Complaint, Complainant believes Respondent is receiving referral fees.
Third, Complainant challenges Respondent’s contention that it had no knowledge
of Complainant’s mark at the time the name was registered. Complainant states
that it has been offering lodging industry information under the STR mark since
1986, and is routinely mentioned in media in the
In its Additional Submission Respondent once again contends that there is no connection between the services it offers and the services Complainant offers, and therefore no potential for confusion. Respondent’s products are hotel room reservations while Complainant’s products are reports to travel industry professionals. Respondent reiterates that it is using the name for a bona fide offering of goods and services, wholly distinct from the services offered by Complainant. Finally, Respondent again asserts that it could not have registered the name in bad faith since it was not aware of Complainant’s marks at the time of registration. Respondent points out that various Russian news articles submitted by Complainant with its Additional Submission were actually published after Respondent acquired the name in October, 2008, thus they cannot serve as evidence that Respondent must have known of Complainant’s mark at the time the name was registered.
The Panel finds that (1) the domain name is identical to or confusingly similar to a registered trademark in which Complainant has rights; (2) that Respondent has no rights or legitimate interest in the name; and (3) that the name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 and is being used in bad faith.
First, it is clear that Complainant has rights in its mark, as reflected by registration of the marks with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007). The domain name wholly incorporates the mark, and for purposes of analysis the Panel disregards the gTLD “.com.” See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008). While it may be true, as Respondent contends, that the domain name is comprised of a common three-letter combination, this fact does not deprive Complainant of protection under the Policy. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (holding that under the Policy ¶ 4(a)(i) respondent’s argument that complainant’s mark was too generic to receive protection was belied by the fact that the USPTO granted trademark registration). The only issues for the Panel are whether the domain is identical to or confusingly similar to the mark, which it unquestionably is, and whether Complainant has rights in the mark, which it unquestionably does. The Panel therefore concludes that the name is identical or confusingly similar to a mark in which Complainant has rights.
It is undisputed that Respondent is not known
by the domain name, and that Respondent was not granted any license by, and has
no affiliation or association with Complainant, reflecting Respondent’s lack of
any rights or legitimate interests in the name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335
(Nat. Arb. Forum
Despite Respondent’s protestations to the contrary, the Panel determines that the Complainant and the Respondent both compete in the travel business. The Panel finds that Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark, creating confusion as to whether Complainant was the source of, or had some affiliation with Respondent’s website, and profiting from the confusion by receiving click-through fees. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006). The Panel recognizes that the three-letter combination in Complainant’s mark is used in other contexts and by other businesses. Nevertheless the Panel concludes that given Complainant’s notoriety in the travel business, it seems clear that it was no accident that Respondent chose the same three letters for its domain name in an attempt to attract users familiar with Complainant’s travel industry expertise. For all of the reasons set forth above the Panel concludes that the domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <str.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: June 15, 2009
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