Best Western International, Inc. v. Shanti Gupta
Claim Number: FA1812001822145
Complainant is Best Western International, Inc. (“Complainant”), represented by Emily A. Bayton of Lewis Roca Rothgerber Christie LLP, Colorado, USA. Respondent is Shanti Gupta (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bwmckenzietn.com>, <bwmulberryflorida.com>, <bworlandoairport.com>, <bwrichmondhillgeorgia.com>, and <bwsebastianhotelsuites.com> (“Domain Names”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2018; the Forum received payment on December 20, 2018.
On December 21, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bwmckenzietn.com>, <bwmulberryflorida.com>, <bworlandoairport.com>, <bwrichmondhillgeorgia.com>, and <bwsebastianhotelsuites.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2019 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@bwmckenzietn.com, postmaster@bwmulberryflorida.com, postmaster@bworlandoairport.com, postmaster@bwrichmondhillgeorgia.com, and postmaster@bwsebastianhotelsuites.com. Also on December 21, 2018, 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 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 1946 by a group of independently owned motels in the western United States. Complainant quickly became, and has remained, one of the most well-known brands in the lodging industry. Complainant has rights in a mark consisting of the letters “BW” (the “BW mark”) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,020,526, registered Nov. 29, 2005, with a date of first use January 1, 1998). Respondent’s <bwmckenzietn.com>, <bwmulberryflorida.com>, <bworlandoairport.com>, <bwrichmondhillgeorgia.com>, and <bwsebastianhotelsuites.com> domain names are confusingly similar to Complainant’s BW mark as they each add a city name and/or a state name along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Names to deceive the public and/or misdirect Complainant’s customers to sites advertising competitive hotel services. Respondent also likely engages in an egregiously fraudulent scheme to obtain credit card and other personally identifiable information.
Respondent registered and uses the Domain Names in bad faith. Respondent has a history of bad faith registration of domain names, as evidenced by Respondent’s registration of numerous domain names incorporating third-party trademarks owned by other hotel operators. Additionally, Respondent registered the Domain Names with intent to capitalize off Complainant’s goodwill to direct users to websites mimicking Complainant’s official websites, which disrupts Complainant’s business. Further, such use of the Domain Names to mimic Complainant’s own websites clearly establishes that Respondent had knowledge of Complainant’s rights in the BW mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BW mark. Each of the Domain Names is confusingly similar to Complainant’s BW mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 (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).
Complainant has rights in the BW mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,020,526, registered Nov. 29, 2005). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the BW mark as they each add a city and/or a state name, the “.com” gTLD and, in the case of the <bworlandoairport.com> and <bwsebastianhotelsuites.com> domain names, additional words that are descriptive or relevant to Complainant’s operations (“airport” or “hotel suites”). The addition of geographic designations, additional terms, and a gTLD to a registered mark fail to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BW mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Shanti Gupta” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are either inactive, resolve or have resolved to websites that compete with Complainant, either being a travel website that accepts competing hotel bookings, or, in the case of the <bwmckenzietn.com> and <bworlandoairport.com> domain names, sites that mirror the official branded hotel websites operated by Complainant, and in so reproduce Complainant’s copyrighted images, reproduce Complainant’s BW Mark, and pass themselves off as official websites of Complainant. Such uses are not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between April-May 2017, Respondent had actual knowledge of Complainant’s BW mark. The websites at the <bwmckenzietn.com> and <bworlandoairport.com> domain names mimic the Complainant’s branded hotel websites by reproducing the design of the websites, Complainant’s copyrighted images and the BW mark, clearly showing an awareness of Complainant and its BW mark. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the BW mark from reflecting is mark in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without explanation, registered 5 domain names that reproduce the BW mark, adding various geographical terms that may identify particular hotels operated by Complainant in those localities. This constitutes bad faith registration and use under Policy ¶ 4(b)(ii).
Furthermore, the Respondent’s use of the <bwmckenzietn.com> and <bworlandoairport.com> domain names for sites that mimic Complainant’s branded hotel sites is bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bwmckenzietn.com>, <bwmulberryflorida.com>, <bworlandoairport.com>, <bwrichmondhillgeorgia.com>, and <bwsebastianhotelsuites.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 14, 2019
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