Mr. Daniel Millard v. Jo Ashing
Claim Number: FA0909001283922
Complainant is Mr. Daniel Millard (“Complainant”), represented by Mark
D. Millard of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com>, all registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding. Hon. Ralph Yachnin (Ret.), Sir Ian Barker, and Hon. Carolyn Marks Johnson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 11, 2009; the National Arbitration Forum received a hard copy of the Complaint September 11, 2009.
On September 11, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.Com, Inc. registration agreement and thereby has 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 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 2009, 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@bestwesterncarlinville.com, postmaster@bestwesterninncarlinville.com, postmaster@carlinvillebestwestern.com, postmaster@carlinvilleinn.com, postmaster@bestwesterncarlinvilleinn.com, and postmaster@carlinvillebestwesterninn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin (Ret.), Sir Ian Barker, and Hon. Carolyn Marks Johnson to sit as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> are confusingly similar to Complainant’s BEST WESTERN mark. Respondent’s <carlinvilleinn.com> domain name is confusingly similar to Complainant’s BEST WESTERN CARLINVILLE INN mark.
2. Respondent has no rights to or legitimate interests in the <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names.
3. Respondent registered and used the <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant established both legal and common law rights in its family of marks related to its BEST WESTERN inns and services.
Complainant established legal rights from the USPTO registration of BEST WESTERN at least as early as 1987 and established common law rights in the mark BEST WESTERN CARLINVILLE INN by use in commerce dating from 2005.
Respondent registered the group of disputed domain names in July of 2009. The domain names are confusingly similar to Complainant’s marks.
Respondent failed to show rights or license to use Complainant’s protected marks in a domain name or in any other way.
Given Complainant’s well known system of inns and its registered marks for those inns, Respondent knew or should have known that the disputed domain names opportunistically utilized the mark of another. Such conduct constitutes bad faith registration and use.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant provided evidence of trademark registration for the BEST WESTERN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,427,735 issued February 2, 1987). Respondent registered the group of disputed domain names in July of 2009. Complainant, as the owner of a franchised hotel, has rights to use the BEST WESTERN mark. The Panel finds Complainant’s evidence to be sufficient to establish Complainant’s rights in the BEST WESTERN mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
In addition to legally
established rights in the BEST WESTERN mark, Complainant alleges that it also has
common law rights in the BEST WESTERN CARLINVILLE INN mark. The Panel finds that a registration of the
trademark is not necessary to establish that Complainant has rights in the BEST
WESTERN CARLINVILLE INN mark under Policy ¶ 4(a)(i), provided that Complainant
demonstrates common law rights by showing sufficient secondary meaning that
attaches to the mark. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see
also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶
4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant claims
common law rights in the BEST WESTERN CARLINVILLE INN mark based on its
continuous and longstanding use of the mark in connection with the operation of
a hotel under the corresponding name.
Prior to Respondent’s registration of the disputed domain names between
July 10, 2009, and July 13, 2009, Complainant had advertised and operated its
hotel under the BEST WESTERN CARLINVILLE INN mark since 2005. Complainant advertised its hotel extensively
in print and newspapers. To show continuous use, Complainant submitted its
official BEST WESTERN CARLINVILLE INN letterhead. Additionally, Complainant submitted its 2006
state tax return and an invoice billed to the BEST WESTERN CARLINVILLE
INN. Complainant further points out that
the BEST WESTERN CARLINVILLE INN also has been advertised to the general public
through hotel databases and interstate billboards.
The Panel finds this
collection of evidence from Complainant sufficient to show secondary meaning in
the BEST WESTERN CARLINVILLE INN mark; and therefore, the Panel finds that
Complainant established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v.
RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that
the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among
local consumers sufficient to establish common law rights where the complainant
had been continuously and extensively promoting a real estate development under
the mark for several years).
Complainant further contends that Respondent’s disputed domain names <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> are confusingly similar to Complainant’s BEST WESTERN mark. The <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names each contain Complainant’s BEST WESTERN mark in its entirety with the addition of the geographic descriptor “carlinville” along with the generic term “inn” in various combinations and with the generic top-level domain “.com” affixed. The Panel finds that these alterations are inconsequential, and that Respondent’s <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names are confusingly similar to Complainant’s BEST WESTERN and BEST WESTERN CARLINVILLE INN marks under Policy ¶ 4(a)(i). See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); 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).
Complainant next contends that Respondent’s <carlinvilleinn.com> domain name is also confusingly similar to its BEST WESTERN CARLINVILLE INN mark. The <carlinvilleinn.com> domain name contains the distinctive portion of Complainant’s BEST WESTERN CARLINVILLE INN mark with the omission of the phrase “best western” and the affixation of the generic top-level domain “.com.” The Panel finds that Respondent’s <carlinvilleinn.com> domain name is confusingly similar to Complainant’s BEST WESTERN CARLINVILLE INN mark under Policy ¶ 4(a)(i). See Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”); see also See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent did not respond to the Complaint, and therefore does not make any contentions with respect to this element of the Policy.
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie showing that
Respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii). Once Complainant does so, then
the burden of proof shifts to Respondent to show that it does have rights or
legitimate interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant contends that each of Respondent’s confusingly similar disputed domain names resolves to a website displaying unauthorized negative content relating to Complainant’s hotel. The Panel finds that such use does not constitute a bona fide offering of goods or services and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent. . . is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The WHOIS information identifies the registrant of the disputed domain names as “Jo Ashing.” Complainant alleges and this evidence shows that Respondent is not commonly known by the BEST WESTERN or BEST WESTERN CARLINVILLE INN marks. No evidence in the record suggests otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Complainant contends that Respondent’s willingness to sell the disputed domain names to Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that Respondent’s offer to sell the disputed domain names is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Complainant contends that since Respondent is using the disputed domain names to disseminate negative information about Complainant and its hotel, that Respondent’s use is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel agrees and finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that the complainant’s are connected with it).
Respondent did not respond to the Complaint, and therefore
does not make any contentions with respect to this element of the Policy.
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The record before this Panel supports allegations that Respondent
offered the disputed domain names for sale for an amount in excess of customary
registration costs. Such primary intent
to sell disputed domain names supports findings that Respondent acted in bad
faith in registering and using domain names that are confusingly similar to
marks in which Complainant has protected rights under Policy ¶ 4(b)(i). See Little
Six, Inc. v. Domain For
Respondent also uses the disputed domain names to disseminate critical information about a mold infestation at Complainant’s hotel. Such disparaging use also supports findings of bad faith under Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Respondent did not respond to the Complaint, and therefore does not make any contentions with respect to this element of the Policy.
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestwesterncarlinville.com>, <bestwesterninncarlinville.com>, <carlinvillebestwestern.com>, <carlinvilleinn.com>, <bestwesterncarlinvilleinn.com>, and <carlinvillebestwesterninn.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, (Ret) Sir Ian Barker Hon. Carolyn Marks Johnson
Panelists
Dated: October 30, 2009.
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