Best Western International, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1512001652851
Complainant is Best Western International, Inc. (“Complainant”), represented by Kevin N. Tharp of RILEY BENNETT & EGLOFF, LLP, Indiana, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vibhotels.com>, registered with TLD Registrar Solutions Ltd.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2015; the Forum received payment on December 17, 2015.
On December 18, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <vibhotels.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 December 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@vibhotels.com. Also on December 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the VIB mark in connection with its business as an international hotelier. Complainant has rights in the VIB mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,792,006, filed on October 6, 2014, registered August 11, 2015). Respondent’s <vibhotels.com> domain name is confusingly similar to the VIB mark as it incorporates the mark in its entirety, while adding the descriptive word hotels and appending the generic top-level domain (“gTLD”) “.com” to the mark. Further, Respondent’s <vibhotels.com> domain name is nearly identical to Complainants <vibhotel.com> domain name, which Complainant registered on October 3, 2014.
ii) Respondent has no rights or legitimate interests in the <vibhotels.com> domain name. Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information for the disputed domain name. Additionally, Respondent has not made any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s domain name does not currently resolve to an active website.
iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent has been involved in at least one prior UDRP proceeding with Complainant, in which Complainant received the transfer of that disputed domain name. Thus, Respondent has engaged in a pattern of bad faith. Respondent registered the disputed domain name just days after Complainant’s announcement of its use of the mark “VIB,” demonstrated Respondent’s opportunistic bad faith. Finally, Respondent has failed to make an active use of the disputed domain name.
B. Respondent
Respondent did not submit a response. The Panel notes that the <vibhotels.com> domain name was registered on October 10, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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:
(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.
In view of 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(f), 14(a) and 15(a) of the Rules and draw such inferences it 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.”).
Complainant contends it has rights in the VIB mark pursuant to its registration with the USPTO (e.g., Reg. No. 4,792,006, filed on October 6, 2014, registered August 11, 2015). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i) even if Respondent does not live or operate within the United States. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Further, panels have found rights which date back to a mark’s filing date. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). As such, the Panel finds that Complainant has rights in the VIB mark under Policy ¶ 4(a)(i) that date back to the mark’s filing date.
While Complainant does not specifically argue its common law rights, the Panel notes that Complainant has provided evidence demonstrating that the disputed domain name was registered the day after Complainant’s official announcement regarding the new VIB hotel concept. Panels have found consumer and media recognition in demonstrating a secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). As the Panel agrees that Complainant has devoted sufficient equity to the VIB mark, it sees that Complainant’s rights date back to October 3, 2014 under common law.
Complainant alleges that Respondent’s <vibhotels.com> domain name is confusingly similar to Complainant’s VIB mark because it incorporates the entire mark while adding the descriptive word hotels and the gTLD “.com.” See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Accordingly, the Panel finds that Respondent’s <vibhotels.com> domain name is confusingly similar to Complainant’s VIB mark under Policy ¶ 4(a)(i).
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 alleges that Respondent is not commonly known by the <vibhotels.com> domain name because there is no evidence to indicate such and because Complainant has not authorized Respondent to use the VIB mark. The Panel notes that Respondent is using a privacy services and only “Domain Admin” is listed as registrant of the disputed domain name. Further, the Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Thus, because there is no affirmative evidence to indicate otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent fails to use the <vibhotels.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain resolves to an inactive webpage. As the Panel agrees with Complainant’s argument and evidence provided, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant posits that Respondent has engaged in opportunistic bad faith under Policy ¶ 4(a)(iii), because Respondent registered the disputed domain name just days after Complainant’s announcement of its use of the mark “VIB.” Generally, Panels have held such behavior to be indicative of Policy ¶ 4(a)(iii) bad faith. 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”). Thus, the Panel agrees and holds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Complainant maintains that Respondent has failed to make any active use of the disputed domain name, which shows that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). As the Panel agrees with Complainant’s argument and evidence provided, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vibhotels.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 28, 2016
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