Best Western International, Inc. v. Chris Purcell
Claim Number: FA1507001629708
Complainant is Best Western International, Inc. (“Complainant”), represented by Kevin N. Tharp of RILEY BENNETT & EGLOFF, LLP, Indiana, USA. Respondent is Chris Purcell (“Respondent”), England.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vibbestwestern.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vibbestwestern.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2015 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@vibbestwestern.com. Also on July 23, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 4, 2015.
Complainant submitted a timely Additional Submission, which was in Compliance with the Forum's Supplemental Rule 7, and was received on August 11, 2015.
Respondent also submitted a timely Additional Submission, which was in Compliance with the Forum's Supplemental Rule 7, and was received on August 13, 2015.
On August 6, 2015, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <vibbestwestern.com> be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant uses the BEST WESTERN mark in connection with its hotel reservation and brand identity services for two hundred seventy-seven (277) hotels in the United Kingdom and approximately four thousand (4,000) hotels worldwide. Complainant registered the BEST WESTERN mark with the United States Patent and Trademark Office (“USPTO”) on March 10, 1987 (Registry No. 1,432,431). The addition of “vib” as a prefix to the fully incorporated mark while eliminating spacing between words and addition of the generic top-level domain (“gTLD”) suffix “.com” is insufficient to overcome a finding of confusing similarity with the BEST WESTERN mark per Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <vibbestwestern.com> domain name under Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name as per the WHOIS record. Further, Respondent has failed to make any use of the domain to resolve to an active website as evidenced by its resolution to a parked webpage, which demonstrates neither a bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Respondent registered and used the <vibbestwestern.com> domain name in bad faith as per the enumerated Policy ¶ 4(b) elements. First, while the <vibbestwestern.com> domain name resolves to a GoDaddy parked page, the Panel may ascribe intent for commercial gain per Policy ¶ 4(b)(iv). Policy ¶ 4(b) elements are non-exclusive, and the Panel may look outside them to determine bad faith. As such, Complainant has provided evidence of opportunistic bad faith which may be seen as dispositive. Further, Respondent registered the <vibbestwestern.com> domain with actual knowledge of the BEST WESTERN mark and Complainant’s rights therein.
B. Respondent’s Contentions
The domain indicates the brand “Vibbe St Western,” which does not infringe on Complainant’s rights in the BEST WESTERN mark. There exists no likelihood of confusion with Complainant’s mark. In addition, the terms comprising the domain name are generic and Complainant does not have a monopoly on the terms on the Internet. On June 5, 2015, Complainant was denied registration of the mark BEST WESTERN VIB by the USPTO due to the likelihood of confusion with another registered mark.
Respondent has legitimate interests in the <vibbestwestern.com> domain name. Respondent has made clear and demonstrable preparations to use the disputed domain in connection with a bona fide offering of goods and services. Pursuant to an attached exhibit, “‘Vibbe St Western’ logo and branding has been developed in January 2015 for the Respondent. No invoice was provided as the work was completed by a friend of the Respondent and did not raise a formal invoice.” Additionally, another exhibit enumerates, “Design of the ‘Vibbe St Western’ web site. Development is currently underway with expected launch in September 2015.” Another exhibit includes the language, “Invoice from the contractor used for website design.” Further, another exhibit expounds, “Use of the ‘Vibbe St Western’ Twitter user account to organically develop an audience for the launch of the brand as previously mentioned.” Further, Respondent is commonly known by the terms of the disputed domain name pursuant to its Twitter postings evidenced by Respondent’s Attached Exhibit B.
Respondent rebuts Complainant’s argument that Respondent registered the domain opportunistically and with knowledge. The evidence Complainant has submitted in this respect is purely circumstantial. Respondent has not registered and used the <vibbestwestern.com> domain name in bad faith according to Policy ¶ 4(a)(iii).
C. Additional Submissions
Complainant’s Additional Submission
Complainant dismisses Respondent’s argument that the pronunciation of his domain name distinguishes it from Complainant’s mark. Complainant’s argument
is based upon the TMEP manual which states that for the purposes of a “likelihood of confusion” analysis, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark and that similarity of sound is only one of many factors to be considered.
Complainant asserts that the fame of its mark is objectively clear, as Best Western is the world’s largest hotel chain.
As demonstrated by his registration of <vibhotels.com> on the same day as <vibbestwestern.com> Respondent intended to use the words “best western” for their trademark value, instead of for their common meaning. Further, Best Western has licensed many Best Western-branded hotels to use a version of Best Western in their web addresses. Respondent holds no such license.
Respondent lacks rights or legitimate interests in the <vibbestwestern.com> domain name because he failed to make active use of the domain name for the nearly ten (10) months between his registration of that domain name and the filing of this Complaint, asserting that development of his site was underway. Rather, Respondent‘s commercial use was initiated after the filing of the Complaint.
As the owner and operator of a business that arranges accommodations for skiers, Respondent does not disavow actual knowledge of the Best Western mark, prior to his domain name registration.
Respondent registered <vibhotels.com> on the same day that he registered <vibbestwestern.com> with the intention of using these two marks together, as part of a plan to redirect customers looking for hotel accommodations to Respondent’s website.
Respondent’s bad faith in the initial registration of the disputed domain name and his intent to use the disputed name in connection with his “Mountago” business in the travel industry, is apparent from his use of his business email address in his initial registration of the disputed domain name.
Respondent registered the disputed domain name <vibbestwestern.com> shortly after Best Western publicly announced its intent to create the VIB (pronounced “vibe”) hotel concept.
Respondent’s Additional Submission
Respondent has offered, as Exhibit M, a signed declaration that he will never trade off of the Complainant’s mark, nor will he ever launch a website in the hotel services industry under the disputed domain.
Respondent asserts that the Complainant’s case is fatally undercut by the USPTO’s refusal to grant the “Best Western Vib” trademark to the Complainant, as evidenced by Respondent’s Exhibit “D.”
The disputed domain name is not confusingly similar to Complainant’s mark, when analyzed against the “du Pont factors.”
Complainant does not provide any evidence of the fame of the “Best Western” marks, including the four factors set out in the Lanham Act, as: the reach of advertising and publicity; the extent of sales under the mark; the extent of actual recognition of the mark; and whether the mark was federally registered.
The Respondent has shown, through his Exhibits, “B,” “E,” and “F,” that he has made demonstrable preparations to use the mark, and therefore has rights and legitimate interests in the mark.
Complainant has provided no explicit evidence that Respondent had actual knowledge of the mark, and thus purchased the disputed name in bad faith.
Respondent asserts that his lack of bona fide use on its own is insufficient to establish bad faith, as Respondent has neither attempted to sell the name, nor to deprive another of the use of the name, nor is a competitor seeking to disrupt Complainant’s business and is not using the name to divert internet users for commercial gain.
Respondent asserts that his initial use of his Mountago business email for registration purposes reflected not his intent to use the disputed name in connection with the travel business, but simply was used for convenience, due to the frequency with which it was checked.
Respondent concludes that he has undertaken clear and demonstrable preparations to use the site for “Vibbe St Western” brand for sauces.
(1) the domain name <vibbestwestern.com> 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.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
3. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
4. Respondent has no rights or legitimate interests in respect of the domain name; and
5. the domain name has been registered and is being used in bad faith.
Complainant uses the BEST WESTERN mark in connection with its hotel reservation and brand identity services for two hundred seventy-seven (277)
hotels in the United Kingdom and approximately four thousand (4,000) hotels worldwide. Complainant registered the BEST WESTERN mark with the USPTO on March 10, 1987 (Registry No. 1,432,431), and argues its rights in light of this registration. The Panel notes that Complainant and Respondent reside or operate in the USA and England, respectively. Panel finds such differences, in location in light of a valid USPTO registration, as irrelevant. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). As such, the Panel agrees that Complainant has established rights in the BEST WESTERN mark under Policy ¶ 4(a)(i).
Next, Complainant posits that the addition of “vib” as a prefix to the fully incorporated mark, while eliminating spacing between words, and adding the gTLD suffix “.com,” fails to overcome the presumption that the <vibbestwestern.com> domain name is confusingly similar to the BEST WESTERN mark. Panels have agreed that similar augmentations do not overcome Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007)
(“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, this Panel agrees that Respondent’s <vibbestwestern.com> domain name is confusingly similar to the BEST WESTERN mark under Policy ¶ 4(a)(i).
While Respondent contends that the <vibbestwestern.com> domain name is comprised of common and generic/descriptive terms, and as such cannot be found to be identical/confusingly similar to Complainant’s mark, this Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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 asserts that Respondent has no rights or legitimate interests in the <vibbestwestern.com> domain name under Policy ¶ 4(a)(ii). Complainant’s credible assertions are based upon the facts that Respondent is not commonly known by the disputed domain name as per the WHOIS record attached at Exhibit D, has not made a bona fide use of the mark, and has not received a license to use the mark. Accordingly, this Panel finds that Respondent has failed to represent its interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). As the Panel has determined that Respondent is not doing business as the <vibbestwestern.com> domain name, it rules that Respondent is not commonly known by the name under Policy ¶ 4(c)(ii).
Furthermore, Respondent has failed to make any use of the domain to resolve to an active website, as evidenced by its resolution to a parked webpage, which demonstrates neither a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, that is, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy. This Panel also accordingly finds that, Respondent has not used the mark in such a manner so as to constitute a bona fide offering of goods or services, and therefore awards no rights under Policy ¶ 4(a)(ii).
Therefore, Complainant has satisfactorily made a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names. This Panel subsequently rules that Respondent has not met its corresponding burden to produce any credible evidence to show that it does have rights or legitimate interests in the subject domain name.
Complainant convincingly argues that Respondent registered and used the <vibbestwestern.com> domain name in bad faith as per the Policy ¶ 4(b) elements. While the <vibbestwestern.com> domain name resolves to a GoDaddy parked page, the Panel ascertains intent for commercial gain per Policy ¶ 4(b)(iv). The Panel notes that this “parked”
page contains not only an offer to sell the domain name, but also contains sponsored hotel advertising and a search box, usable for click through advertising and fees and to divert internet users to unrelated third-party websites. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
As Policy ¶ 4(b) elements are non-exclusive, the Panel has also looked outside them to determine bad faith.
Evidence of opportunistic bad faith viewed as dispositive by the Panel are Compl., at Attached Exs. G-I (Complainant’s intention to use the VIB BEST WESTERN mark in commerce by launching a new hotel concept named “VIB”), in conjunction with Compl., at Attached Ex. D (subsequent registration of the <vibbestwestern.com> domain by Respondent). That is, Respondent registered the disputed domain name <vibbestwestern.com> shortly after Best Western publicly announced its intent to create the VIB (pronounced “vibe”) hotel concept.
The Panel holds that this evidence is not purely coincidental / circumstantial, and
therefore, concludes that Respondent registered the disputed domain name opportunistically in light of Complainant’s demonstrated intent to use the terms comprising the name, thereby infringing on rights in an existing mark per Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Panel was also persuaded of Respondent’s bad faith by Complainant’s Additional Submission statement that, as Respondent registered <vibhotels.com> on the same day as <vibbestwestern.com,> that Respondent intended not only to use the words “best western” for their trademark value, instead of for their common meaning, but also to use the marks together as part of a plan to redirect customers looking for hotel accommodations to Respondent’s website.
Panel has accorded no credibility to Respondents Exhibit “M” in its Additional Submission, which states that Respondent has never and will never trade off the Complainant’s mark and has never and will never launch a website in the hotel services industry under the disputed domain. This self-serving declaration does nothing to dismantle the naturally flowing disruptive consequences of the operation of a domain name which is confusingly similar to a famous mark.
Finally, Complainant contends that in light of the fame and notoriety of Complainant's BEST WESTERN mark, it is inconceivable that Respondent could have registered the <vibbestwestern.com> domain name without actual knowledge of Complainant's rights in the mark. While the Panel would have liked to see more specifics regarding the actual fame of Complainant’s mark, such as the reach of advertising and publicity of the mark and actual dollar sales under the mark, Panel is not persuaded that Respondent lacked knowledge of their mark at the time of registration of the disputed domain name. Further inference of this knowledge, is Respondent’s operation in the travel business of skiers. Thus, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name
and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vibbestwestern.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: August 20, 2015
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