Best Western International, Inc. v. Patrick Ory
Claim Number: FA0210000128709
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.
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.
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 email@example.com, firstname.lastname@example.org, and 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
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.
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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