Best Western International, Inc. v. CITI Services, Inc.
Best Western v. CITI Services]
[Indexed as: BESTWESTERN-HOTELS.COM et al.]
Domain Name Dispute Decision
Commenced: March 9, 2000
Judgment: April 12, 2000
Presiding Panelist: Judge Ralph Yachnin, (Ret.)
Domain name - Domain name dispute resolution policy - U.S. Trademark - U.S. Service mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Domain name brokerage.
Complainant was registrant of United States trademark and service mark, BEST WESTERN. Registrant registered the domain names, bestwesterngr.com and bestwestern-hotel.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain names at issue in bad faith.
Held, Names Transferred to Complainant
Complainant must establish both bad faith registration and bad faith use.
Although Respondent was not present at the hearing it was held that it did not suffer any prejudice based on procedural fairness. It is clear that the domain names, BESTWESTERNGR.COM and BESTWESTERN-HOTEL.COM are identical or confusingly similar to the trademark and service mark registered and used by Complainant, BEST WESTERN. It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.
Complainant is a registrant of the mark, BEST WESTERN as early as March 10, 1987. Respondent registered the domain names, bestwesterngr.com and bestwestern-hotel.com on October 15, 1998 and October 26, 1998 respectively. Respondent made no use of the domain names in questions and is not affiliated to or licensed by Complainant to make use of Complainant's marks.
Complainant contacted the registered domain name, bestwesterngr.com, it led to a billboard listing various domain names, including the domains in dispute, and offering them for sale. The domain names were parked with a domain name brokerage service. Respondent was in the business of registering domain names and selling them for valuable consideration in excess of any out of pocket costs directly related to the domain name. This was bad faith use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Yachnin, Panelist: -
The above entitled
matter came on for an administrative hearing on April 12, 2000,
before the undersigned, on the complaint of Best Western International, Inc.
(hereinafter referred to as "Complainant") against CITI Services, Inc.(hereinafter
referred to as "Respondent"). The Complainant was represented by Bryan R.
Jacobson, Esq., of Counsel to Nelson & Roediger, Esqs., 2623 North 7th Street,
Phoenix, Arizona 85006. The Respondent has not filed a response to the complaint
and there has been no representation on behalf of the Respondent interposed.
Upon the written submitted record, the following decision is made:
Domain Name: bestwestern-hotel.com, bestwesterngr.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: CITI Solutions
Date of Domain Registration: bestwesterngr.com - October 15, 1998
bestwestern-hotel.com - October 26, 1998
Date Complaint Filed: March 9, 2000
Due Date for Response: April 5, 2000
did not submit a response to the complaint.
Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)1 and Rule 4(c) : March 13, 2000
the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (hereinafter referred to as "The
Forum") forwarded the complaint to the Respondent on March 13, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(d). The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the complainant, that the administrative proceedings had been commenced.
Respondent did not submit a response to The Forum within twenty (20) days
pursuant to Rule 5(a) .
On October 15, 1998, Respondent registered the domain name "bestwesterngr.com", and on October 26, 1998, Respondent registered the domain name "bestwestern-hotel.com", each with Network Solutions, Inc., the entity that is the Registrar of the domain name. By registering the domain names "bestwesterngr.com" and "bestwestern-hotel.com" with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.
1. Complainant is in the hotel business.
2. On September 27, 1985 Complainant filed with the United States Patent and Trademark Office, an application for registration for trademark BEST WESTERN.
3. On March
10, 1987 the United States Patent and Trademark Office issued the
registration for BEST WESTERN under registration number 1,432,431 for hotel, motel and resort hotel services.
4. On October 19, 1993 Complainant filed with the United States Patent and Trademark Office, an application for registration for the Service Mark BEST WESTERN (and Design).
5. On November
7, 1995, the United States Patent and Trademark Office issued the Service
Mark for BEST WESTERN (and Design) under registration number
1,933,830 for hotel, motel and resort hotel services.
6. On October
15, 1998, Registrant registered the domain name in controversy
"bestwesterngr.com" with the Registrar Network Solutions, Inc., and on October 26, 1998, Registrant registered the other name in controversy "bestwestern-hotel.com" with the Registrar Network Solutions, Inc.
7. Heretofore and prior to June 14, 1999, Complainant learned of the registration of the domain names in question when it investigated registration of the domain name "bestwesterngr" by CITI Services. When the site was contacted, it resolved to a billboard listing various domain names registered in the name of CITI Services and offering them for sale. Included in this listing were the two domain names in question.
8. The registered names "bestwesterngr.com", and "bestwestern-hotel.com", is identical, or confusingly similar, to the trademark or service mark in which Complainant has rights and the Respondent does not have any right or legitimate interests in respect to either of the domain names "bestwesterngr.com, or "bestwestern-hotel.com" The fact that one of the domain names had the addition of "hotels" fails to alter, and in fact does strengthen, the impression that the site is an authorized Best Western website.
9. Complainant has been damaged by the acts of the Registrant and will continue to be damaged unless the domain names "bestwesterngr.com" and "bestwestern-hotel.com" is transferred to Complainant.
10. Respondent does not operate a Best Western affiliate hotel and is not associated in any way with a Best Western affiliated hotel nor is it licensed by Complainant to make use of the Best Western Mark. Further, Respondent has not made any use of the "bestwesterngr.com," or "bestwestern-hotel.com" in connection with a bona fide offering of goods or services, but they have been "parked" with Firstnet Online, a domain name brokering service to be sold at a price in excess of the costs of obtaining the registrations.
11. Respondent seeks to profit from its registration of the name by trading on the good will of the Complainant's marks.
12. Complainants prayer for relief requests that the domain names be transferred from the Respondent to the Complainant.
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. The domain
names "bestwesterngr.com" and "bestwestern-hotel.com"
is identical or confusingly similar to Complainant's trademark "Best Western and/or Service mark Best Western (and Design), to which Respondent has no right or legitimate interests.
registered and acquired the domain names "bestwesterngr.com" and
"bestwestern-hotel-com" primarily for the purpose of selling them to the Complainant, who is the owner of the trademark or service mark, or to a competitor of the Claimant for a valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain. Respondent registered and used the domain name in bad faith.
Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "bestwesterngr.com" and "bestwestern-hotel.com" REGISTERED BY RESPONDENT CITI SERVICES, INC. BE TRANSFERRED TO COMPLAINANT BEST WESTERN INTERNATIONAL, INC.
Domain Name Transferred