Best Western International, Inc. v. Lost in Space, SA
Claim Number: FA0210000126834
Complainant is Best Western International, Inc., Phoenix, AZ, USA (“Complainant”) represented by Meghan A. Wharton, of Brown & Bain, P.A. Respondent is Lost in Space, SA, Majorca, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebestwesterninn.com>, registered with Tucows.
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 October 2, 2002; the Forum received a hard copy of the Complaint on October 3, 2002.
On October 3, 2002, Tucows confirmed by e-mail to the Forum that the domain name <thebestwesterninn.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 October 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 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 November 6, 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:
Respondent’s <thebestwesterninn.com> domain name is confusingly similar to Complainant’s registered BEST WESTERN mark.
Respondent does not have any rights or legitimate interests in the <thebestwesterninn.com> domain name.
Respondent registered and used the <thebestwesterninn.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 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, as the world’s largest hotel brand, has registered its BEST WESTERN mark in a range of formats and variations throughout the world, including Spain, Respondent’s place of domicile (Spanish Certificates of Registration and Renewal for Trademarks Nos. 943,929; 1,815,140; and, 2,297,170).
Complainant has 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.
Respondent registered the <thebestwesterninn.com> domain name on October 26, 2000. As of August 23, 2002, Respondent’s domain name displayed a scrolling advertisement for the organization “Temptations@Work”, a “brand new form of global staffing agency” that includes their “famous SEXETARIES”; this site operates as an Internet escort service. As of September 12, 2002, Internet users were able to view information and pornographic photographs of “Sophie”. An Internet user who repeatedly selected the link to view “MORE” pictures of “Sophie” would eventually reach the website for “Temptations@Work.”
On August 23, 2002, Complainant contacted Respondent with a cease and desist letter informing them of their trademark infringing domain name and demanding transfer of its registration. Respondent replied with a sale offer of $1500 for the domain name registration, stating in further communications that it “would not consider anything less than $1500—which is the arbitration costs alone for [Complainant]—we always ignore the WIPO (World Intellectual Property Organization, an ICANN authorized domain name dispute arbitrator) route and appeal the decision in Virginia courts. The domain could be yours in less than 48 hours.” Respondent and/or persons associated with Respondent have been ordered to transfer registered domain names in at least twenty-one decisions by tribunals engaged under ICANN.
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 mark through registration on the Principal Register of the USPTO as well as via continuous and widespread use and registration of the mark worldwide.
Respondent’s <thebestwesterninn.com> domain name is confusingly similar to Complainant’s registered BEST WESTERN mark. The only differences between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com”, the deletion of the space between the words BEST and WESTERN, the addition of the generic word “the”, and the addition of the descriptive word “inn”.
The addition of a top-level domain is irrelevant when determining whether a domain name is confusingly similar to a mark in which a complainant has established rights. Removing the space between words in a registered mark is also irrelevant; both of these differences are dictated by the standardized nature of second- and top-level domain names. See 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); see also 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”).
Furthermore, the addition of the generic words “the” and “inn” to the disputed domain name does not defeat a finding of confusing similarity by the Panel under Policy ¶ 4(a)(i). The generic word “inn”, describing the type of business in which Complainant is engaged, does not change the fact that the dominant feature of the disputed domain name is Complainant’s distinctive and registered BEST WESTERN mark. The generic word “the” likewise does nothing to distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Accordingly, the Panel finds that the <thebestwesterninn.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 a “bona fide offering of 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), thereby 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 diverts Internet users to its own website for commercial gain. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name). Misdirecting confused Internet users to websites hosting pornographic material, which tarnish Complainant’s mark, is evidence that Respondent has no legitimate rights or interests in the domain name. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use). Respondent’s use of confusingly similar domain names to gain a commercial profit by directing unsuspecting Internet users to a pornographic website is not a bona fide offering of goods or services, nor a noncommercial or fair use of the domain name.
Noting that it is willing to tie up any dispute over the domain name in the courts unless Complainant buys the disputed domain name registration for $1500 is further evidence that Respondent is not legitimately using its domain name, and that its intention is to tarnish Complainant’s mark. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).
Respondent is not commonly known by the name THEBESTWESTERNINN or <thebestwesterninn> and Complainant has not given Respondent permission or consent to use its registered BEST WESTERN mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). By these showings, Complainant sufficiently refutes any claim that Respondent could make under Policy ¶ 4(c)(ii).
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, and the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
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 registered and used the disputed <thebestwesterninn> domain name in bad faith. Policy ¶ 4(b)(iv) states that in circumstances indicating that the disputed domain name was registered to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location,” bad faith use and registration is evidenced. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain). When Internet users are directed to websites hosting pornographic material, it is further evidence of bad faith use and registration. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith). Respondent’s use of its confusingly similar domain name in connection with a pornographic website, in light of the fame of Complainant’s mark, is evidence of bad faith.
It is further evidence of bad faith that Respondent, when confronted by Complainant about the infringing domain name, offered to sell its rights to Complainant for $1500. Policy ¶ 4(b)(i) states that in “circumstances indicating that [Respondent] registered…the domain name primarily for the purpose of selling…the domain registration to the complainant who is the owner of the trademark…for valuable consideration in excess of [Respondent’s] out-of-pocket costs,” bad faith use and registration is evidenced. Noting that the offered sale price of a domain name registration is lower than the costs associated with arbitration or adjudication of the dispute is one example of a violation of Policy ¶ 4(b)(i). See Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where Respondent offered to sell the domain name for $900, specifically noting that it would cost Complainant more to enforce its rights legally than to succumb to Respondent's attempted extortion); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
In the present dispute, Respondent not only offered to sell the disputed domain name registration for more than its out-of-pocket expenses, but specifically noted that its offer was identical to what Complainant would have to pay in order for it to have this dispute arbitrated. Respondent stated that it “always ignores [arbitration] decisions,” and implied that it would tie up proceedings over the disputed domain name in the courts—or transfer the domain name registration for profit “in less than 48 hours.” In light of Respondent’s lack of response to the Complaint, the Panel concludes from the evidence offered by Complainant that Respondent’s attempts to extort a price of $1500 for the disputed domain name registration is evidence that it registered the domain name for this purpose. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to 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).
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 <thebestwesterninn> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 7, 2002
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