Domain name - Domain name dispute resolution policy - U.S. Service mark - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Sexually explicit websites.

Complainant was the registrant of United States service mark, "Bass Hotels & Resorts",  and of domain name <www.basshotels.com>.  Respondent registered domain name <www.basshotel.com>.  Respondent used the domain name at issue to resolve to a web site that offered links to pornographic sites.  Upon Complainant's request, Respondent's web hosting company shut down Respondent's web site prior to the action.

Held, Name Transferred to Complainant.

The domain name at issue is confusingly similar to Complainant's service mark "Bass Hotels & Resorts" and Complainant's domain name <www.basshotels.com>.  Respondent had no rights or legitimate interest in the domain name.

Respondent attracted Internet consumers to its web site for commercial gain by creating likelihood of confusion as to sponsorship by or affiliation with Complainant.  Further, Respondent used a domain name that is confusingly similar or identical to Complainant's service mark to resolve or link to sexually explicit web sites.  The culmination of these actions constitutes bad faith registration and use.

The fact that the use of the domain name www.basshotel.com ceased prior to the action is inconsequential to the determination of "bad faith use and registration".  "Use" of a domain name refers to any period following the registration of the domain name, but does not refer to a particular point in time.

Policies referred to 

Uniform Domain name Dispute Resolution Policy, adopted August 26, 1999
Rules for Uniform Domain name Dispute Resolution Policy
Supplemental Rules for Uniform Domain name Dispute Resolution Policy
 

Panel Decisions referred to 

Alcoholics Anonymous World Services, Inc. v. Raymond, ICANN Case No. D2000?007  (WIPO)
Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000?0011 (WIPO)
Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No.D2000?0270 (WIPO)
National Football League Properties Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a Chargergirls.net, ICANN Case No. D2000?0118 (WIPO)
Nokia Corporation v. Nokiagirls.com a/k/a IBCC, ICANN Case No. D2000?0102 (WIPO)
CCA Industries, Inc. v. Bobby R. Dailey, ICANN Case No. D2000?0148 (WIPO)
MatchNet plc v. MAC Trading, ICANN Case No. D2000?0205 (WIPO)
WWF v. Bessette, ICANN Case No. D2000?0256 (WIPO) 
Oxygen Media, LLC v. Primary Source, ICANN Case No. D2000?0362 (WIPO)
Rita Rudner v. Internetco Corp., ICANN Case No. D2000?0581 (WIPO)
Ingersoll?Rand Co. v. Frank Gully, d/b/a Advcomren, ICANN Case No. D2000?002 (WIPO)
Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000?0119 (WIPO)
America Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000?0131 (WIPO)
 

THE PARTIES 

The Complainant is Bass Hotels & Resorts, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business in Atlanta, Georgia, United States of America. 

The Respondent is Mike Rodgerall, an individual giving an address at 8493 Bath Street, Suite 294, Santa Barbara, California, United States of America. 

THE DOMAIN NAME(S) AND REGISTRAR(S)

The domain name at issue is <basshotel.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

PROCEDURAL HISTORY 

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 7, 2000, and the signed original together with four copies was received on June 13, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 9, 2000. 

On June 8, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e?mail address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name. 

On June 15, 2000, NSI confirmed by reply e?mail that the domain name <basshotel.com> is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect. 

The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three?person Panel were paid on time and in the required amount by the Complainant. 

No formal deficiencies having been recorded, on June 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 4, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e?mail to the e?mail addresses indicated in the Complaint and specified in NSI's confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." 

On July 6, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.

On July 24, 2000, in view of the Complainant's designation of a three person Panel, the WIPO Center appointed David H. Bernstein, Frederick M. Abbott, and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.

FACTUAL BACKGROUND 

Complainant registered the service mark "Bass Hotels & Resorts" in connection with hotel and restaurant services with the United States Patent Office ("USPTO") on June 17, 1998, and the registration issued on October 12, 1999. Annex A attached to the Complaint shows date of first use of the mark as May 4, 1998.

Complainant also maintains a web site at www.basshotels.com. The domain name <basshotels.com> was first registered on March 27, 1998 1.

Complainant owns and operates a variety of hotel chains, including Holiday Inn Hotels, Inter?Continental Hotels, and Crowne Plaza Hotels.

On April 30, 2000, Respondent registered the domain name <basshotel.com> 2.

Respondent is not a licensee of Complainant and is not otherwise authorized to use any of
Complainant's trademarks.

Respondent has used the domain name at issue to resolve to a web site that offers various links to pornographic web sites.

Counsel for Complainant sent letters to Respondent at the address given in Whois, demanding that Respondent cease its use of the domain name.

All efforts at contacting Respondent, whether by mail, at the email address or fax number given have been unavailing.

Counsel for Complainant contacted the web hosting company and successfully persuaded them to shut down the existing site.

PARTIES' CONTENTIONS 

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

Respondent has not contested the allegations of the Complaint.

DISCUSSION AND FINDINGS 

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." 

Since both the Complainant and Respondent are domiciled in the United States, and since United States' courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. 

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and, 
3) the domain name has been registered and is being used in bad faith.

It is clear that the domain name at issue <basshotel.com> is confusingly similar to the service mark in which the Complainant has rights. It is also confusingly similar to the domain name which hosts Complainant's web site, <basshotels.com>.

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, ICANN Case No. D2000?007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000?0011; Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No.D2000?0270.

Paragraph 4(b)(iv) of the Policy provides in pertinent part: "[T]he following circumstances…shall be evidence of the registration and use of a domain name in bad faith…by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site . . .by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product  or service on your web site or location." It is this provision on which Complainant relies.

Complainant has cited the Panel to several Panel decisions in which the use of a domain name which is confusingly similar or identical to a trademark or service mark, where the domain name resolves or links to sexually explicit web sites has been held to constitute bad faith registration and use, by attracting for commercial gain users to a web site by creating a likelihood of confusion as to sponsorship or affiliation. National Football League Properties Inc. and Chargers  Football Company v. One Sex Entertainment Co., a/k/a Chargergirls.net,  ICANN Case No. D2000?0118; Nokia Corporation v. Nokiagirls.com a/k/a IBCC, ICANN Case No. D2000?0102; CCA Industries, Inc. v. Bobby R. Dailey, ICANN Case No. D2000?0148.

As the Panel in One Sex, supra, emphasized, while a user who arrives at the pornographic site may promptly conclude that it is not what he or she was originally looking for, the registrant has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain.

Other Panel decisions have reached similar results. MatchNet plc v. MAC Trading, ICANN Case No. D2000?0205; WWF v. Bessette, ICANN Case No. D2000?0256; Oxygen Media, LLC v. Primary Source, ICANN Case No. D2000?0362; Rita Rudner v. Internetco Corp., ICANN Case No. D2000?0581.

Moreover, the fact that the offending use of the web site ceased sometime prior to the issuance of the Panel's decision, does not change the fact that the domain name at issue "has been registered and is being used in bad faith," since the phrase "is being used" has been interpreted to refer not to a particular point in time, but to any time during the period of time following registration of the domain name at issue. Ingersoll?Rand Co. v. Frank Gully, d/b/a Advcomren, ICANN Case No. D2000?0021.
 

DECISION 

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <basshotel.com> be transferred to the Complainant.
 

M. Scott Donahey,
David H. Bernstein, 
Frederick M. Abbott,
Panelists
                     

Footnotes:

1. A Whois search conducted by the Panel yielded this date of registration. Such references to publicly available information have been sanctioned by prior Panel decisions. Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000?0119; America Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000?0131. 

2. See n. 1.