Best Western International, Inc. v.
DomStar.com Domain Services c/o DomStar Domains
Claim Number: FA1001001302100
PARTIES
Complainant is Best Western International, Inc. (“Complainant”), represented by Jennifer A. Van Kirk, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestwester.com>,
registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 7, 2010. With its Complaint, Complainant also chose
to proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by
submitted an “opt-in” form available on the Forum’s website.
On February 1, 2010, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <bestwester.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 8, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 1,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@bestwester.com by
e-mail. Also on February 8, 2010, the
Written Notice of the Complaint, notifying Respondent of the email addresses
served and the deadline for a Response, was
transmitted to Respondent via post and fax, to all entities and persons listed
on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March
1, 2010. Respondent chose to opt-in to
the electronic process with its submission and submitted its Response in
electronic copy only.
Complainant’s Additional Submission was received on March 8, 2010 and
was deemed to be in compliance with Supplemental Rule 7.
On March 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, inter alia,
that:
Complainant owns and operates hotels in over eighty different countries.
Complainant began business operations in 1946 and has since operated under its BEST WESTERN mark.
Complainant holds numerous
trademark registrations throughout the world for its BEST WESTERN mark,
including with the United States Patent and Trademark Office
("USPTO") (Reg. No. 1,432,431, issued March 10, 1987) and the
Intellectual Property Office of the
Respondent is not commonly known by the <bestwester.com> domain name.
Respondent is not authorized or licensed to use the BEST WESTERN mark.
Respondent’s <bestwester.com> domain name is confusingly similar to
Complainant’s BEST WESTERN mark.
The website resolving from Respondent’s <bestwester.com> domain name is confusingly similar to
Complainant’s reservation websites.
Respondent lacks rights to and
legitimate interests in the disputed domain name.
Respondent is attempting to pass itself off as Complainant in order to
conduct a phishing scheme by which the website resolving from the disputed
domain name removes the Secure Sockets Layer that protects reservation
information, so that the information of Internet users that enter Respondent’s
website and attempt to make a hotel reservation, believing that the website is
owned by Complainant, is not protected.
The website resolving from Respondent’s <bestwester.com> domain name includes a pop-up advertisement
for spyware products, and the website resolving from this advertisement is
owned by Respondent.
Respondent’s use of the <bestwester.com> domain name constitutes typo-squatting.
Respondent’s use of the <bestwester.com> domain name as described in the Complaint constitutes bad faith registration and use of the domain.
B. Respondent
Respondent contends, among other things, that:
Respondent’s use of the <bestwester.com>
domain name to resolve to
Complainant’s reservation page is a legitimate use of the disputed domain
name.
Respondent is not attempting to phish for information from Internet
users attempting to make hotel reservations.
Respondent did not remove the Secure Socket Layer from its resolving
website, and any privacy issues encountered by Complainant are a result of a
problem with Complainant’s computer system.
Respondent is not interested in acquiring the personal information of
Internet users.
Respondent is providing a free service to Complainant by redirecting
back to Complainant’s webpage Internet users that have made a typing error in
employing a search engine.
The only cost to Internet users is their exposure to a pop-up
advertisement that does not prevent them from reaching Complainant’s
website.
C. Additional Submissions
Complainant, in an Additional Submission, further alleges that:
Respondent does not dispute that Complainant has established rights in its BEST WESTERN mark.
Respondent likely benefits commercially from the advertisement carried
on the website resolving from the disputed domain name.
Internet users may become confused as to Complainant’s possible
sponsorship of or affiliation with the disputed domain name and Respondent’s
pop-up advertisement.
Respondent admits to intentionally misspelling Complainant’s mark in forming the contested domain name in order to take advantage of Internet users’ common misspellings when entering the domain name into a search engine.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is being
used by Respondent in bad faith.
DISCUSSION
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:
i.
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate
interests in respect of the domain name; and
iii. the domain name has been registered and is being
used in bad faith.
Previous panels have determined that a trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, Complainant has established rights in its BEST WESTERN mark through its trademark registrations with the USPTO and IPOP.
Complainant alleges that Respondent’s <bestwester.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark. The disputed domain name contains a common misspelling of Complainant’s mark, created merely by removing the letter “n.” The disputed domain name also removes the space separating the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” Such a common misspelling, coupled with removing a space and adding a gTLD, does not adequately distinguish the disputed domain name from Complainant’s mark. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to a complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Thus, and having in mind that Respondent has made no contentions under
this head of the Complaint, the Panel finds that Respondent’s <bestwester.com> domain name is confusingly similar to
Complainant’s BEST WESTERN mark, and that Complainant has met its burden under
Policy ¶ 4(a)(i).
Complainant must first make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once this is done, the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or legitimate interests); 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’s allegations, described below,
satisfy its obligations of prima facie proof under this head of the
Policy. It therefore falls to Respondent to demonstrate its rights or interests
in the contested domain name.
We turn, then, to an examination of the
proof of record.
Complainant contends that Respondent is not commonly known by the contested <bestwester.com> domain name. Respondent does not dispute this assertion. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “DomStar.com Domain Services c/o DomStar Domains,” which is not similar to the disputed domain name. Complainant also asserts that Respondent is not authorized or licensed to use the BEST WESTERN mark. Again, Respondent does not contest this allegation. Accordingly, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests in a disputed domain name where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in its mark precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no right to or legitimate interest in a contested domain name where a respondent was not commonly known by the mark in issue and never applied for a license or permission from a complainant to use a trademarked name).
Complainant alleges that the website
resolving from Respondent’s <bestwester.com> domain name is confusingly similar to
Complainant’s reservation websites.
Complainant also contends that Respondent is attempting to pass itself
off as Complainant in order to conduct a phishing scheme by which the website
resolving from the disputed domain name removes the Secure Sockets Layer that should
protect reservation information. Respondent
disputes these assertions, but we find Respondent’s contentions unworthy of
credit. Respondent’s use of the disputed
domain name, as alleged, is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain under Policy ¶ 4(c)(iii). See Am.
Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a
respondent attempted to pass itself off as a complainant online, which was a blatant
unauthorized use of that complainant’s mark and evidence that that respondent
had no right to or legitimate interest in a disputed domain name); see also
Juno Online Servs., Inc. v.
Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a
domain name in a fraudulent scheme to deceive Internet users into providing
their credit card and personal information is not a bona fide offering of goods or services or a legitimate non-commercial
or fair use of the domain).
Complainant further asserts
that the website resolving from Respondent’s domain name includes a pop-up advertisement for spyware products, and
that the website resolving from this advertisement is owned by Respondent. In its Additional Submission, Complainant
argues that Respondent likely benefits from this advertisement. Respondent does not contest the essence of
these allegations. Respondent’s use of the
disputed domain name in the manner alleged is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii).
See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (holding that a respondent’s use
of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services); see also Hewlett-Packard
Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that a
respondent’s use of the <hpcanada.com> domain name to post links to
commercial websites and subject Internet users to pop-up advertisements was not
a bona fide offering of goods or services or a legitimate noncommercial
or fair use of the domain).
Finally, under this head of the
Complaint, Complainant argues that Respondent’s use of the <bestwester.com> domain name constitutes typo-squatting,
which involves the deliberate misspelling of the mark of another in forming a
domain name in order to take advantage of the typographical errors of Internet
users who attempt to enter the mark into a search engine while searching for
information about the mark holder. We
agree. Respondent’s use of a domain name
that is a common misspelling of the BEST WESTERN mark to redirect Internet
users seeking Complainant’s website shows further evidence that Respondent
lacks rights to or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
“typosquatting, which provides additional evidence that [the]
respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii)).
See also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant's LTD COMMODITIES mark, and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel therefore finds that Complainant has met its burden under Policy ¶ 4(a)(ii).
Respondent uses its <bestwester.com>
domain name to display a
pop-up advertisement promoting the sale of spyware software offered by
Respondent. Complainant contends that
Respondent profits from this pop-up advertisement. Complainant also contends, in its Additional
Submission, that Internet users may become confused as to Complainant’s
sponsorship of or affiliation with the disputed domain name and Respondent’s
pop-up advertisement. We agree. Respondent’s use of the <bestwester.com> domain name thus constitutes bad faith
registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding
bad faith where a respondent used a domain name formed from a complainant’s mark
to attract Internet users to a series of online advertisements); see also
Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003)
(finding that a respondent’s registration of an infringing domain name to
redirect Internet users to banner advertisements constituted bad faith use of
the domain).
Respondent also uses the <bestwester.com>
domain name to resolve to Complainant’s reservation website. However, Respondent has evidently removed the
Secure Sockets Layer which protects personal information used in the
reservation-making process. Respondent has
done so as a part of a phishing scheme in order to gain access to the personal
information of Internet users who attempt to make hotel reservations with
Complainant. Respondent’s use of the <bestwester.com> domain name for
this purpose constitutes bad faith registration and use of the subject domain
name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co.
v.
Complainant also contends that Respondent has engaged in typo-squatting through its use of the <bestwester.com> domain name by taking advantage of a common misspelling of Complainant’s BEST WESTERN mark. Respondent’s use of Complainant’s mark to form the disputed domain name thus constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004): “By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).” See also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting
… is the intentional misspelling of words with [the] intent to intercept and
siphon off traffic from its intended destination, by preying on Internauts who
make common typing errors. Typosquatting
is inherently parasitic and of itself evidence of bad faith.
For all of these reasons, the Panel finds that Complainant has met its burden of proof of under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief
requested must be GRANTED.
Accordingly, it is Ordered that the <bestwester.com>
domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 26, 2010
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