Best Western International, Inc. v.
Patrick Ory
Claim Number: FA0210000128709
PARTIES
Complainant
is Best Western International, Inc.,
Phoenix, AZ, USA (“Complainant”) represented by Meghan A. Wharton, of Brown
& Bain, P.A.. Respondent is Patrick Ory, Cancun, MEXICO
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> registered with Joker.com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 24, 2002; the Forum received a hard copy of the
Complaint on October 28, 2002.
On
October 28, 2002, Joker.com confirmed by e-mail to the Forum that the domain
names <bestwesternhotels.org>, <best-western-hotels.biz>, and <bestwesternworldwide.com> are registered with Joker.com and
that Respondent is the current registrant of the names. Joker.com has verified that Respondent is
bound by the Joker.com 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 29, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 18, 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@bestwesternhotels.org,
postmaster@best-western-hotels.biz, and postmaster@bestwesternworldwide.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
December 10, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions in the Complaint:
1.
Respondent’s
<bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> domain names are confusingly similar to Complainant’s BEST WESTERN
registered mark.
2. Respondent does not have any rights or
legitimate interests in the disputed domain names.
3. Respondent registered and used the
subject domain names in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant, Best Western International,
Inc., owns numerous trademarks reflecting its BEST WESTERN mark in the United
States and Mexico, Respondent’s place of domicile. More specifically, Complainant holds Reg. No. 1,074,300 for the
BEST WESTERN mark as listed on the Principal Register of the U.S. Patent and
Trademark Office (“USPTO”) recording first use as being January 1, 1975; and,
Mexican Reg. No. 516,440 reflecting the BEST WESTERN mark registered on April
6, 1994.
Complainant has continuously used the
BEST WESTERN family of marks since at least as early as 1946 in connection with
the offering of hotel/motel services. Several U.S. trademark registrations for
Complainant’s BEST WESTERN mark have become incontestable under the Lanham Act.
15 U.S.C. §1065 (2002).
Currently, Complainant operates over
4,000 affiliated properties in 80 countries making Complainant the world’s
largest lodging chain. Significantly, Complainant holds a substantial presence
in Mexico.
Complainant has expended a significant
amount of resources over the last fifty years.
By virtue of its extensive advertising and continuous, widespread use,
Complainant’s BEST WESTERN family of marks has become famous and
internationally renown. More
specifically, Complainant spent over $35 million dollars on advertising and
promotion of its marks in 2001.
Respondent registered <bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> on April 22, 2002; February 4, 2002; and, June 3, 2002,
respectively. Complainant’s
investigation of Respondent’s use of the subject domain names indicates that,
upon accessing Respondent’s domain names, Internet users are redirected to an
Internet travel reservation service labeled HotelWiz. Complainant also provides documentation that Respondent has
repeatedly engaged in activities similar to those alleged in this Complaint, as
evidenced by the following UDRP decisions, listed without limitation: Delta Corp. Identity v. Ory, FA
109375 (Nat. Arb. Forum May 22, 2002); Dollar Rent A Car Sys., Inc. v. Ory,
FA 112560 (Nat. Arb. Forum June 10, 2002); and, Alamo Rent-A-Car Mgmt., LP
v. Ory, FA D2001-1286 (WIPO Dec. 28, 2001). Respondent is not authorized or licensed to use Complainant’s
BEST WESTERN mark for any reason or purpose.
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.
Complainant has established rights in the
BEST WESTERN mark by registering BEST WESTERN with the relevant international
trademark authorities, and continuous use of the mark in commerce since 1946.
Respondent’s <bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> domain names are confusingly similar to Complainant’s BEST WESTERN
mark. Respondent’s domain names all
contain Complainant’s mark in its entirety, deviating only with the suggestive
addition of the words “hotels” and “worldwide.” Such additions fail to create distinct marks capable of
overcoming a claim of confusing similarity because both words are descriptive
of Complainant’s business, namely, providing hotel-related services
internationally. See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic
word describing the type of business in which Complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term).
Further,
Respondent’s registration of domain names that incorporate various generic
top-level domains, such as “.org,” “.biz,” and “.com,” is inconsequential when
conducting a Policy ¶ 4(a)(i) analysis since top-level domains are required of
domain name registrants. 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”).
Lastly,
Respondent’s use of hyphens in the <best-western-hotels.biz> domain name fails
to distinguish the domain name from Complainant’s BEST WESTERN mark. Precedent has determined that such slight
grammatical deviations fail to prevent the confusion generated on acount of the
confusingly similar domain name. See
Columbia
Sportswear Co. v. Keeler,
D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Complainant’s submission
constitutes a prima facie case, Respondent is obligated to refute
Complainant’s evidence and proffer evidence that would indicate rights or
legitimate interests in the domain names.
As stated, Respondent failed to submit a Response in this proceeding,
thereby leaving Complainant’s assertions unopposed and Respondent’s rights in
the domain names suspect. Precedent
supports accepting all of Complainant’s reasonable inferences as true, unless
clearly contradicted by the evidence. 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); 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).
Further, it is reasonable for the Panel
to draw adverse inferences from Respondent’s failure to submit materials
indicating rights or legitimate interests in the domain names. 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).
Uncontested circumstances indicate that
Respondent’s domain names resolve to HotelWiz, a website offering lodging for
travelers. Therefore, Respondent’s
contested domain names divert confused Internet users to a competing
website. Such use is not a bona fide
offering of goods and services under Policy ¶ 4(c)(i). Finding otherwise would permit Respondent to
opportunistically benefit from its infringing domain names. See Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”).
There is no evidence indicating a
legitimate connection exists between Respondent and the subject domain
names. Respondent does not operate an
affiliated Best Western hotel and is not licensed or otherwise authorized by
Complainant to make use of any of the BEST WESTERN marks. Because of the fame associated with
Complainant’s BEST WESTERN mark, it is presumed that Respondent is not commonly
known by any confusingly similar domain name; thus, Respondent fails to
establish rights in the domain names under Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or fair
use).
Lastly, Respondent’s opportunistic use of
Complainant’s mark in its domain names is not in connection with a legitimate
noncommercial or fair use. By
registering the infringing domain names Respondent is suggesting to the
consuming public that a relationship exists between its offered services and
Complainant. Such is not the case, and
Respondent’s diversion of Internet users searching for Complainant and its
hotel/motel services does not constitute legitimate noncommercial or fair use
of the domain names under Policy ¶ 4(c)(iii).
See Caterpillar Inc. v.
Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not
have a legitimate interest in using the domain names
<caterpillarparts.com> and <caterpillarspares.com> to suggest a
connection or relationship, which does not exist, with Complainant's mark
CATERPILLAR); 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
As described, Respondent utilizes the
infringing domain names to resolve to HotelWiz, an entity in competition with
Complainant. Because precedent has adopted an expansive reading of Policy ¶
4(b)(iii), specifically, the definition of “competitor” incorporated therein,
Respondent’s actions constitute bad faith registration and use. Respondent’s domain names seek to disrupt
Complainant’s business through redirecting Internet users to a website offering
similar services, thereby diverting potential customers of Complainant to a
competitor. Respondent conducts these
infringing activities while using Complainant’s mark to generate the initial
interest. Therefore, Respondent
registered and used <bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> in bad
faith. See Mission
Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Additionally, Complainant’s submission contains evidence
indicating that Respondent has habitually infringed on Complainant and others’
marks. Because Respondent’s disputed domain names include Complainant’s BEST
WESTERN mark in its entirety, it is conceivable that Complainant would desire
to register its mark in the contested domain names. Therefore, Respondent acted in bad faith under Policy ¶ 4(b)(ii)
because it is preventing Complainant from reflecting its mark in corresponding
domain names and has exhibited a pattern of such conduct. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names which infringe upon others’ famous and
registered trademarks); see also Australian
Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000)
(finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple
infringing domain names containing the trademarks or service marks of other
widely known Australian businesses).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements
required under ICANN Policy, the Panel concludes that relief should be hereby GRANTED.
Accordingly, it is Ordered that the <bestwesternhotels.org>, <best-western-hotels.biz> and <bestwesternworldwide.com> domain names be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 16, 2002
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