Lodgeworks L.P. v. Sierra
Hospitality
Claim Number: FA0802001152964
PARTIES
Complainant is Lodgeworks L.P. (“Complainant”), represented by Stephen
G. Janoski, of Roylance Abrams Berdo & Goodman L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sierrahotelgroup.com> and <sierra-hotels.net>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Diane Cabell and Honorable
Karl V. Fink as Panelists and David S.
Safran, Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 21, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 25, 2008.
On February 21, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <sierrahotelgroup.com> and <sierra-hotels.net>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 4, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 24, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@sierrahotelgroup.com and postmaster@sierra-hotels.net
by e-mail.
A timely Response was received and determined to be complete on March 20, 2008.
A complete Additional Submission was received from Complainant on March
26, 2008.
A timely and complete Additional Submission was received from
Respondent on March 31, 2008.
On April 7, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Diane Cabell and Honorable Karl V.
Fink as Panelists and David S. Safran,
Chair.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is in the hotel lodging business and has continuously used
the SIERRA SUITES mark since 1995 to refer to its hotel lodging services. Complainant registered the
<sierrasuites.com> domain name on August 21, 1998 and uses it to provide
information on its hotel services.
Complainant also holds a trademark registration for the SIERRA SUITES
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,562,701 issued April 23, 2002). Respondent’s
domains <sierrahotelgroup.com>
and <sierra-hotels.net> are
confusingly similar to Complainant’s trademarks. Respondent does not have any rights or
legitimate interests in the <sierrahotelgroup.com>
and <sierra-hotels.net>
domains, is not known by the sierra hotel name and not being a licensee, agent
or otherwise affiliated with Complainant. Respondent registered and/or used the <sierrahotelgroup.com> and <sierra-hotels.net> domains in
bad faith for purposes of extorting payment from Complainant and/or selling the
domains from Complainant for an amount in significant excess of out-of-pocket
costs for the domains.
B. Respondent
Respondent is commonly know as Sierra Hospitality having by founded by
Pablo Sierra in 1997 and has actively conducting business as a consultant in
the hotel and hospitality field for over a decade, and has used the domain
<sierra-hospitality.com> since mid-2003.
That the amounts asked for to transferred the domains were based on the
costs of demands made by Complainant which went substantially beyond transfer
of the domains <sierrahotelgroup.com>
and <sierra-hotels.net> and
included a demand for termination of business under the sierra hospitality name
and Mr. Sierra’s own surname. The domains <sierrahotelgroup.com>
and <sierra-hotels.net> were
registered in November of 2007 prior to learning of Complainant’s intent to
re-brand its Sierra Suites chain as Hotel Sierra and with belief that it had a
legitimate right to do so given its prior usage and the numerous third party
usage in the hotel industry of names of which the word “sierra” forms a part.
C. Additional Submission of Complainant
Prior decisions of National Arbitration Forum Panels recognize the strength
and scope of Complainant’s SIERRA marks. The remainder of the points
raised either amplify the contentions raised in the Complaint,
constitute improper attempts to shift the burden of proof from Complainant to
Respondent, or are unsupported by evidence.
D. Additional Submission of Respondent
The UDRP cases cited by Complainant involve two default decisions and a
serial cybersquatter and not a party with a legitimate claim to usage of the
name “Sierra.” The remainder of the points raised merely
amplify the contentions raised in the Response.
FINDINGS
The cases cited by Complainant, one of which was decided by a member of
the present Panel are not binding on the present Panel and are clearly
distinguishable on their facts, and particularly, that the domains in question in
the cited cases contained the words “Sierra Suites” or a colorable imitation
thereof (misspelled “sierra suits”). Given
the multitude of uses by third parties of trademarks or trade names which
include the word “sierra” placed in evidence by Respondent and the lack of
rebuttal evidence provided by Complainant, the Panel finds that “Sierra Suites”
is entitled to limited scope in the hotel and hospitality field. Respondent
used the “sierra” element of its domains that is in common with Complainant’s
trademarks for approximately ten years without conflict with Complainant, has
used this common element in the domain <sierra-hospitality.com> for five
years without conflict or objection by Complainant (and Complainant has not
sought transference thereof by these proceedings), and that the amount of
compensation sought for transference of the <sierrahotelgroup.com> and <sierra-hotels.net> domains must be viewed in the uncontested
context of the demands made by Complainant that went well beyond the mere
transferred of these domain names. Further,
in the absence of evidence which would indicate how Respondent might have know
of Complainant’s intent to re-brand its Sierra Suites chain as Hotel Sierra,
the absence of factual evidence rebutting that presented by Respondent, given
Respondent’s prior usage and the extensive third party usage in the hotel
industry of names of which the word “sierra” forms a part, Respondent could
have believed that it had a legitimate right to register the domain names <sierrahotelgroup.com> and <sierra-hotels.net>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Since the Panel has concluded that the Complainant failed to meet its
burden under Policy ¶ 4(a)(iii), below, the Panel has declined
to analyze this element of the Policy. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because the complainant must prove all three
elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary).
Since the Panel has concluded that the Complainant failed to meet its
burden under Policy ¶ 4(a)(iii), below, the Panel has
declined to analyze this element of the Policy.
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat.
Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all
three elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary).
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(b). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent admits to offering to sell the disputed domain names to Complainant. However, Respondent asserts that the disputed domain names were not registered merely to sell them to Complainant. The Panel agrees, given that Complainant has not refuted Respondent’s contentions that its demands of Respondent significantly exceeded the value of the two domain names at issue here. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).
Given the findings above concerning
lengthy contemporaneous use of a “sierra” mark by Respondent without complaint
by Complainant, the lack of evidence as to how Respondent could have known of
Complainant’s intent to re-brand its hotel chain and of evidence of numerous third party usage of trademarks or tradenames
which include the word “sierra,” the panel finds that Respondent had a
reasonable basis to believe that it had a legitimate right to register the
domain names <sierrahotelgroup.com>
and <sierra-hotels.net>.
It is clear from the legislative history that under the Policy and
Rules the Complainant must establish not only bad faith registration, but also
bad faith use. See World Wrestling Found. Entm’t, Inc.
v. Bosman,
D1999-0001 (WIPO Jan. 14, 2000). However,
Complainant’s own repeated statements that Respondent registered “and/or” is using the domain names in
bad faith (Part V of the Complaint, emphasis added) demonstrates that even in
Complainant’s mind it is unclear that the domains were registered and
used in bad faith. This is taken by the
Panel as an admission that the domains may not have been registered and used in bad faith, and as such it
is concluded that the burden of proof has not been met. See Desktop Media, Inc. v Desktop Media, Inc.,
FA 96815, (Nat. Arb. Forum Apr.
12, 2001) (“The Complainant
statement that "Respondent may have used the domain name desktopmedia.com
in connection with a bona fide offering of goods and/or services" is
essentially an admission that at the time of registration Respondent acted in
good faith.… So it was concluded that Complainant failed to show either bad
faith registration or bad faith use.”).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sierrahotelgroup.com> and <sierra-hotels.net>
domain names be RETAINED by Respondent.
David S. Safran, Chair
Diane Cabell and
Honorable Karl V. Fink Panelists
Dated: April 21, 2008
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