Hershey Entertainment &
Resorts Company v. Darien Hospitality Group
Claim Number: FA0701000888090
PARTIES
Complainant is Hershey Entertainment & Resorts
Company (“Complainant”), represented
by Rebecca A. Finkenbinder, of McNees Wallace & Nurick LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hersheyhotels.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflicts in serving as
Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 12, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 15, 2007.
On January 12, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <hersheyhotels.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 17, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 6, 2007 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@hersheyhotels.com by e-mail.
On January 23, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of time to respond to the Complaint. On January 24, 2007, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of February 16, 2007 for a filing of a Response.
A timely Response was received and determined to be complete on February 16, 2007.
A timely Additional Submission from Complainant was received on
February 21, 2007 and deemed complete pursuant to Supplemental Rule 7.
A timely Additional Submission from Respondent was received on February
26, 2007 and deemed complete pursuant to Supplemental Rule 7.
On March 6, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed G. Gervaise Davis, III, the Honorable Nelson
A. Diaz, and Kendall C. Reed as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant licenses the federally registered trademark, HERSHEY,
Registration number 1,455,684, and the common-law trademarks, HERSHEY and THE
HOTEL HERSHEY, all in connection with hotel, lodging and resort facilities,
among other goods and services. The
federal registration issued on September 1, 1987. The common-law trademark HERSHEY began being
used in commerce in connection with hotel, lodging and resort facilities
services in 1911. The common–law
trademark HOTEL HERSHEY began being used in commerce in 1933 in connection with
hotel, lodging and resort facilities, and more specifically in connection with
a hotel located
The aforesaid Hotel is known by its guests and the general public by
the following trademarks: THE HOTEL HERSHEY, HERSHEY HOTEL and HOTEL HERSHEY. Complainant’s
long, continuous and pervasive use of the HERSHEY trademark in connection with
its famous hotel means that such trademarks are well known.
Complainant has registered and maintains the following domain names:
<hersheyhotel.com>, <hotelhershey.com>, both registered on January
25, 1999, and <thehotelhershey.com>, registered on July 26, 2002.
Respondent’s domain name is virtually identical and confusingly similar
to Complainant's trademarks. Less than
four months after Complainant registered its domain name <hersheyhotel.com>,
Respondent registered the domain name <hersheyhotels.com>
without the knowledge or consent of Complainant. It is clear from Respondent's home page that Respondent
operates a Howard Johnson hotel at
Respondent's domain name is confusingly similar to Complainant's
trademarks because Respondents domain name wholly incorporates complainant’s
famous HERSHEY trademark. Further Respondent
adds the letter "s," which is an inconsequential edition. Furthermore, the plural form of a word does
not create a distinct mark.
Moreover, the fact that the website Respondent operates at the domain
name offers identical and competing services making the likelihood of confusion
between the domain name and Complainant's trademarks even greater.
Respondent has no rights or legitimate interests in the domain
name. Respondent is not affiliated with Complainant,
and Respondent has never registered a business entity or fictitious name for
"Hershey Hotels” in
Respondent registered and uses its domain name in bad faith. In light of the notoriety of Complainant's
famous marks, Respondent had actual or constructive knowledge thereof at the
time Respondent registered its domain name.
Further, Respondent's registration of a domain name that contains a
geographically deceptively misdescriptive term, Hershey, is further evidence of
its bad faith because Respondent’s Hotel, in fact, is not located in the town
of
B. Respondent
Respondent is a hotel ownership and management company, founded in
1994. It has operated as many as six
hotels, and now owns and operates four hotels in
In 1997 Respondent embarked on an Internet strategy as a means for
promoting its own hotels. Through
umbrella sites (<businesstraveler.com> and <funtravel.com>)
prospective customers are offered links to Respondent's hotels home pages,
enabling customers to book online, enhancing Respondent's business. In the case of the individual hotels, the
strategy is based on attracting business through Internet search terms targeted
to each hotel specific geographic market area.
For example, in the case of Howard Johnson hotel in
The burden is on Complainant to prove each of the three requirements of
Policy paragraph 4(a), and the Complainant has not met its burden.
Complainant's rights in the trademark HERSHEY and THE HOTEL HERSHEY are
not threatened by Respondent’s usage; the domain name is not confusingly
similar. Complaint goes to some length
to establish the goodwill associated with its mark for its flagship hotel, THE
HOTEL HERSHEY. However, Complainant
fails to come to grips with the fact that Hershey is a geographic place name, a
municipality in the state of
The use of the plural in Respondent’s domain name, as well as the reversal
of the words "hershey" and “hotel" do in fact operate to
distinguish <hersheyhotels.com>
from THE HOTEL HERSHEY because the domain name is merely descriptive of Respondent's
business and is thus not confusingly similar and is unlikely to cause confusion
with Complainant’s business. Further, Respondent
owns a hotel in the Hershey market, and the expression "hershey hotels"
merely describes a category, and does not impinge on the specific property
rights of the Complainant in THE HOTEL HERSHEY.
Further, the two hotels operate in completely different economic
markets, and as such there is no likelihood of confusion.
Given the status of “hershey” as a geographic place, Complainant cannot
establish that it has, based on the registration of HERSHEY or use of THE HOTEL
HERSHEY, the right to exclude all usage of the general term "hershey
hotels." At the very minimum, there
is a legitimate dispute on this question of trademark law; and the existence of
a legitimate dispute concerning the likelihood of confusion can make a case
inappropriate for resolution under the Policy.
This alone would be sufficient to deny a transfer.
Respondent has rights and legitimate interests in the domain name. As a hotel company, Respondent's business is
to sell hotel rooms to business and leisure travelers. Beginning in early 1997, Respondent perceived
the need to promote the hotels it owned and managed via the Internet. To that end, it conducted brainstorming
sessions and hired a Web developer. In
July 1997, Respondent registered the domain name <businesstraveler.com>
to further that interest. There followed
a period of demonstrable preparations, including work with web developers,
before Respondent began actively using in 1999 and its family domain names,
including <hersheyhotels.com> "in connection with a bona fide offering of goods and
services." Thus by 1999, the two of
umbrella sites, <businesstraveler.com> and <funtraveler.com>, and
the family of individual hotels sites, were fully operative and available to Respondent's
target customers. Respondent did not
receive notice of the dispute until nearly 5 years later, in 2004.
The linchpin of Complainant's argument is that Respondent has no
legitimate interests is that "it does not own or operate a hotel in
In this case is distinguishable from those cases where a Respondent has
used as its domain name the exact name of a competitor's establishment. Here the domain name <hersheyhotels.com.> is not <thehotelhershey.com>. Rather, the domain name <hersheyhotels.com> is capable of a referring to any number
of hotels in the area.
There can be no question but that Respondent has established a valid
"motivation" or "connection" to
In addition, there can be no doubt that Respondent's use of the site
has at all times been "in connection with a bona fide offering of goods and services." This is a case of a fully functioning
business, with brick and mortar hotel buildings and 150 employees, which
properly registered a geographically-based domain name to promote that very
business on the Internet.
Complainant has not proven bad faith on the part of Respondent. Complainant does not allege that Respondent
registered its domain name for the purpose of selling it. Complainant does not allege that Respondent
registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name. Respondent did not register its mark
"primarily for the purpose of disrupting the business of a
competitor. Complainant appears to rely
on this aspect of the rule. But the
claim is plainly off the mark. First,
and critically, from 1999, and even to this day, the parties are not actually
in direct competition for hotel guests.
The two properties appeal to completely different target audiences. No one can mistake the Howard Johnson for THE
HOTEL HERSHEY, which offers a spa, golf courses, restaurants and extensive
conference facilities. The Complainant
itself acknowledges as much by excluding the entire class of hotels to which
Howard Johnson belongs (AAA "two diamonds") from if its referral
service. In addition, Complainant has
not shown that Respondent intended to "misleadingly direct consumers or
tarnish the trademark or service mark at issue." Responded specifically constructed its
Internet search terms in such a way as to avoid misleading anyone. Further, Respondent's actual purpose was to
register a geographically-based name, consistent with its overall Internet
marketing strategy, in furtherance of its own legitimate business
interests. This is not bad faith, even
where a trademark is registered.
Respondent did not seek to create likelihood of confusion to attract
users. The nature of the term "hershey
hotels" eliminates any likelihood of confusion. Complainant claims that constructive notice
of its trademark rights gives rise to the finding of bad faith. This is simply not so. The presence of constructive notice does not
mean that the domain name was registered in bad faith. Such notice is not enumerated in section 4(b)
of the Policy as an independent ground for such a finding. Moreover, even those panels which have cited
it as a "factor" have not relied on that point exclusively, but have
relied on other factors not present here.
C. Complainant’s Additional Submission
That the trademark HERSHEY is famous is indisputable; there are 732
trademark registrations in a 113 countries consisting solely of or containing the
word "hershey" or "hershey’s." Based on such expansive use, the HERSHEY mark
has become famous and is recognized worldwide.
Respondent's domain name is confusingly similar to Hershey's famous
trademark. The domain name contains the
famous HERSHEY trademark and, with the exception of the word “the," the famous
trademark, THE HOTEL HERSHEY. Respondent's
mere inclusion of the letter "s" does not obviate confusion. In addition to Respondent's use of identical
terms, the domain name is confusingly similar to Complainant's trademarks. Respondent asserts that the reversal of the
words "hershey" and “hotel" is sufficient to distinguish <hersheyhotels.com> from THE
HOTEL HERSHEY. However, such reversal is
not a mere "creative rework of the syntax," considering Complainant’s
hotel is referred to and has become known as, HERSHEY HOTEL. Complainant specifically registered the
domain name <hersheyhotel.com> and <hotelhershey.com> in January
1999 because such names are used interchangeably to identify and refer to its
famous hotel.
Respondent has no rights or legitimate interests in the domain
name. Respondent premises its entire
argument upon the fallacious and disingenuous notion that "hershey"
is geographically descriptive and that "geographic place names enjoy less
protection than other marks." After
misleading the reader by stating that Hershey is a municipality, Respondent
grudgingly concedes, as it must, that "Hershey" is not
"technically" a geographic place name, as a geographically defined
municipality in which Complainant’s hotel is located is
Even assuming, arguendo, that
"hershey" is used by some to connote a geographic location that
amounts to the boundaries of
Respondent adopted the domain name intending to trade off Complainant's
fame and goodwill. Respondent contends
that it embarked on an Internet marketing strategy in 1997, and thereafter made
"demonstrable preparations" before it registered and used the domain
name in 1999. However, Respondent did
not select the domain name until 1999; therefore, any "demonstrable
preparations" were not for the domain name itself, but rather for the
"generic" domain names <businesstraveler.com> and <funtravel.com>.
Most telling of all is the chronology of Respondent's actions, and the
manner in which it treats its other domain names. Respondent registered its domain name on May
3, 1999, 66 years after use began of the now famous THE HOTEL HERSHEY mark, 12
years after Respondent had constructive notice of the famous and registered
HERSHEY mark, four months after Complainant registered <hersheyhotel.com>
domain name, and long after the public started referring to Complainant’s hotel
as HERSHEY HOTEL. It was not until much
later, in 2000 that Respondent maintained other domain names supposedly
considered part of Respondent’s geographic marketing strategy, well after it
began maintaining <hersheyhotels.com>.
If Respondent were not seeking to exploit
the famous HERSHEY marks, hits on <hersheyhotels.com>
and <lancasterhotels.com> would be redirected to
<harrisburghotel.com>, which is geographically descriptive of the area in
which Respondent’s Howard Johnson hotel is actually located. Indeed, this is the manner in which Internet
browsers linking to Respondent’s <stamfordhotels.com> domain name are
automatically redirect to <darienhotels.com>, i.e., the domain name that
accurately contains the name of the city in which
The multitude of metatags and keywords that Respondent selected for the
domain name and which focus, almost exclusively, on “hershey,” exemplify Respondents
intend to attract Internet users to its website for commercial gain. Such use increases the likelihood that
Internet browsers searching for a hotel in Hershey will be lured to Respondent's
website. In short, if Respondent had a
legitimate business strategy based on attracting customers through Internet
search terms targeted to "each hotels specific geographic market
area," it would utilize its <harrisburghotels.com> domain name. Instead, it has built its strategy around the
use of its domain name which includes the famous HERSHEY mark and which is
virtually identical to the domain name which Complainant registered four months
earlier.
Respondent had actual and constructive notice that its use of the domain
name would violate Complainant’s rights.
Respondent is misleading when it contends that it first learned of Complainant's
concerns five years after Respondent registered its domain name. In point of fact, Respondent had actual and
constructive notice of this dispute well before 2004. Respondent was asked by Complainant in 2002
to cease use of the famous HERSHEY mark, as well as other trademarks owned by Complainant's
affiliates, and specifically to cease use of "hershey" as part of its
Web page address. Six months later,
Respondent was sent another cease and desist letter to which was attached
printouts of Respondent's website reflecting its unauthorized use of a plethora
of word and design marks owned by Complainant.
Respondent's primary focus in 2002, as it is today, is to create
confusion in the minds of consumers by appearing to have a close association
with Complainant in and to trade-off Complainants goodwill. This certainly is not a bona fide offering of goods and services.
Respondent’s domain name was registered and is used in bad faith. Respondent and Complainant both sell hotel
rooms to business and leisure travelers.
Respondent acknowledges that the market for hotel rooms for the millions
of guests that visit Hershey attractions extend through central
Respondent’s "reasonable explanation" for its registration
and use of its domain name, that it operates a hotel routinely frequented
travelers to Hershey. However, Respondent
cannot evade a bad faith claim by relying on its so-called Internet marketing
strategy, which is in fact a transparent attempt to use the famous HERSHEY mark
without authorization.
D.
Respondent’s
Additional Submission
Complainants argument that it's "Hershey" marked is famous,
is irrelevant.
Complainant has ignored entirely Respondent's discussion of the
significant differences between its luxury hotel properties and a budget Howard
Johnson hotel. While maintaining that
there is but a single economic market for all hotel guests (such that its
deluxe property supposedly competes with Respondent's economy brand), Complainant
simultaneously contends that there are multiple geographic micro-markets such
that Respondent’s hotel, located minutes away from Hershey in eastern
Harrisburg, can have no legitimate interest in attracting hotel guests visiting
Hershey attractions.
Complainant has not shown why it is relevant that the HESHEY trademark
is famous. Respondent has not contested
this point. The question here is whether
the domain name is confusingly similar to HERSHEY or THE HOTEL HERSHEY, and Complainant
is not entitled to any special consideration on this score because its mark is
an especially famous one. Like any complainant,
it must still prove that all three of the elements of improper registration are
present in order to prevail. Likewise, Respondent
is entitled to the full protection of the policy and to a level Internet
playing field, regardless of the commercial influence of the other party.
Complainant has failed to show that Respondent's domain name is
confusingly similar to Complainant’s famous trademarks. Complainant’s entire argument on this point is
that because the domain name in question contains the word "hershey"
and "hotel" it must be confusingly similar to Complainant’s
marks. However, the mere inclusion of
trademarked words does not constitute confusing similarity. Further, Complainant has not put forward any
evidence that anyone has actually been confused by this particular domain name,
whereas Respondent has put forward evidence that many people have visited this
particular domain name and found exactly what they were looking for. Indeed, consumers searching for "hershey
hotels" (i.e. , hotels in the Hershey area) using a search engine will
obtain a list that features Complainant’s own site as the first unpaid entry,
with Respondent’s property very conspicuously identified in the title line as a
Howard Johnson's property. Taken
together with the different target markets for these properties, there is
simply no likelihood of confusing Respondent’s Howard Johnson's property with
any of Complainant’s properties.
Complainant has failed to show that Respondent has no rights or
legitimate interest in the domain name.
The Complainant fails to come to grips with the numerous examples
attached to the response of businesses unaffiliated with Complainant, including
even the local chamber of commerce, guidebooks, and the like, which identify
themselves with the geographic location of “Hershey.” The term has official as well as popular
currency. The U.S. Postal Service operate
a “Hershey Post Office,” and the U.S. Geological Survey publishes a map of “the
Hershey quadrangle.” Moreover,
Complainant has not produced evidence that Respondent adopted the
domain name to trade on Complainant’s goodwill, rather than to indicate its
location in the Hershey area. The
entirety of the Complainant’s discussion of this point is built on the
assumption that any reference to the Hershey area is a nefarious attempt to
trade on the goodwill of Complainant.
Rather Respondent is using the domain name as a legitimate resource for budget
travelers to the greater Hershey area.
Respondent uses <hersheyhotels.com>
in addition to <harrisburgehotels.com> because it in fact serves
travelers to both Hershey and
Complainant has not shown that the domain name violates Complainant’s
right, so Complainant cannot show that Respondent has notice of a
violation. The Complainant attempts to show
that Respondent had actual and constructive notice of this dispute. In other words, Complainant is claiming that
merely because it contested Respondent’s use of the domain name, Respondent has
notice that the name in fact violates Complainant’s rights. Circular insistence cannot substitute for
evidence or disguise the fact that the Complainant has not actually shown
confusing similarity – a logical and equitable prerequisite for attempting to
show notice of that similarity. Moreover,
Complainant’s submission of correspondence from 2002 is unavailing since the parties’
actual focus at the time was on the pictorial trademark representation of the Respondent’s
site, which matter was then resolved.
Complainant has failed to show the domain name was registered and is
used in bad faith. Nothing in the
Complainant’s second filing even attempts to controvert Respondent’s evidence
that its 2-star Howard Johnson is not in competition with Complainant’s luxury
hotel properties, and indeed could not compete with them even if it wised
to.
FINDINGS
The Complainant licenses the federally
registered trademark, HERSHEY, Registration number 1,455,684, and the
common-law trademarks, HERSHEY and THE HOTEL HERSHEY, all in connection with
hotel, lodging and resort facilities, among other goods and services. The federal registration issued on September
1, 1987. The common-law trademark
HERSHEY began being used in commerce in connection with hotel, lodging and
resort facilities services in 1911. The
common–law trademark THE HOTEL HERSHEY began being used in commerce in 1933 in
connection with hotel, lodging and resort facilities.
Complainant has registered the <hersheyhotel.com>
domain name.
Respondent is not affiliated with
Complainant, and Respondent has never registered a business entity or
fictitious name for "Hershey Hotels” in
Complainant did not give permission or
license to Respondent to use any of Complainant’s trademarks.
Respondent is a hotel ownership and management company, founded in
1994. It has operated as many as six
hotels, and now owns and operates four hotels in
In 1997 Respondent embarked on an Internet
strategy as a means for promoting its own hotels. Through umbrella sites (<businesstraveler.com>
and <funtravel.com>) prospective customers are offered links to
Respondent's hotels home pages, enabling customers to book online, enhancing
Respondent's business. In the case of
the individual hotels, the strategy is based on attracting business through
Internet search terms targeted to each hotel specific geographic market
area. For example, in the case of Howard
Johnson hotel in
Respondent and Complainant both sell hotel
rooms to business and leisure travelers.
Respondent operates a AAA 2-star hotel and its target market is budget
travelers. Complainant operates a luxury
hotel.
The area of
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:
(i) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii) the
domain name has been registered and is being used in bad faith.
This is a threshold issue. Additionally, this threshold issue itself has two preliminary considerations. Firstly, the Complainant must in fact possess trademark rights in some mark. See Brinks Servs. Inc. v. Holt, FA 324699 (Nat. Arb. Forum Nov. 4, 2004) (“To establish standing under the Policy, a Complainant must prove its acquisition of valid rights in a trademark or service mark.”). For purposes of the Policy, no distinction is made between registered and unregistered marks. See The British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO March 27, 2000) (the Policy “…does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the policy to unregistered trademarks and service marks.).
Secondly, a Complainant must have acquired its trademark rights before the Respondent obtained its domain name. See Razorbox, Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“…Respondent’s registration of the <razorbox.com> domain name predates Complainant’s alleged rights. Complainant admits in its Complaint that it has been in business for two years and Complainant’s trademark application indicates a first use in commerce of January 15, 2002. However, Respondent registered the disputed domain name on December 10, 1999, more than two years prior to Complainant’s stated first use in commerce. Under these facts, the Panel must find in favor of Respondent because it would be impossible for Complainant to prove Respondent’s bad faith registration subsequent to Complainant establishing any rights in the RAZORBOX mark.”).
For purposes of determining whether the threshold of Paragraph 4(a)(i) is met, the comparison is one appropriate to the Internet environment in which users deal with domain names consisting of combinations of alpha-numeric symbols. The comparison is at this surface level and in a simple side by side examination. In order to allow for this side by side comparison, extraneous and generic content is first removed from the subject domain name. See Nev. State Bank v. Modern Lmited – Cayman Web Development, FA 204063 (Nat. Arb. Forum Dec. 29, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.” See also America Online, Inc. v. Chun, FA 104974 (Nat. Arb. Forum March 22, 2002) (“The mere addition of a generic term to a famous mark as in the instant case does not create a distinct mark capable of overcoming Complainant’s claim of identical or confusing similarity.”) See Victoria’s Secret et al v. Zuccarini, FA 95762 (Nat. Arb. Forum November 18, 2000) (finding VICTORIA SECRETS is not a distinct mark and is confusingly similar to VICTORIA SECRETS). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (" The addition of an "s" to the end of the Complainant’s [sic] mark does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The two domain names are similar in sound, appearance, and connotation.").
In this matter, Complainant has trademark
rights in the trademark HERSHEY by way of
For purposes of comparing Respondent’s Domain
Name to Complainant’s Marks, one must remove the “.com” and the “s” thus
leaving the words “hershey hotel.” When
viewed in this way, this Panel has no difficulty finding that Respondent’s
Domain Name is either identical or confusingly similar to Complainant’s Marks
for purposes of the Policy. These words
are a mere reversal of the substantive words of the Complainant’s common-law
trademark THE HERSHEY HOTEL, and given the sound and cadence of these words,
this Panel finds no significant distinction between “hershey hotel” and “hotel
hershey.” Further, the word “hotel”
could also rightly be removed from Respondent’s Domain Name as a generic element,
in which event the remaining word “hershey” is identical to Complainant’s
trademark HERSHEY.
As such, Complainant has established this
threshold requirement under the Policy.
Under the Policy, a Complainant has the initial burden to demonstrate a
Respondent’s lack of rights or legitimate interests in its domain name. Once this initial burden is carried, and the
burden is a light one, it is then incumbent on a Respondent to establish that
it does have rights or legitimate interests in its domain names. See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum, Oct. 1, 2002) (holding that where the Complainant has asserted
that the Respondent does not have rights or legitimate interests with respect
to the domain name, it is incumbent on the Respondent to come forward with
concrete evidence rebutting the assertion because this information is “uniquely
within the knowledge and control of the Respondent.”). See
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
interest in the subject domain names.").
Paragraph 4(c) of the policy provides
guidance about what constitutes rights or legitimate interest for purposes of
Paragraph 4(a)(ii). Three non-exclusive
examples are given, to wit:
(i) before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or
services; or
(ii) you…have
been commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii)
you are
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or tarnish the
trademark or service mark at issue.
This Panel finds that Complainant has
established that Respondent has not been commonly known by Respondent’s Domain
Name and that Respondent’s use of Respondent’s Domain Name is for commercial
purposes, and Respondent has not shown otherwise. As such, the safe harbors of Paragraphs
4(c)(ii) and 4(c)(iii) are not available to Respondent.
This Panel further finds that Complainant has
met its burden and Respondent has not met its burden with respect to Paragraph
4(c)(i), and as such this safe harbor is also unavailable to Respondent. Complainant has shown that Respondent’s
Domain Name is identical or confusingly similar to Complainant’s marks. Complainant has shown that Respondent
registered Respondent’s Domain Name well after Complaint acquired its trademark
rights, and given the geographic proximity of Respondent’s hotel to Complainant’s
hotel, Respondent would necessarily have been aware of Complainant’s trademark
rights at the time Respondent registered Respondent’s Domain Name. Complainant has shown that it and Respondent
are both in the business of selling hotel rooms to business and leisure
travelers, and Respondent has shown that these hotels operate in the same geographic
market area, and as such that the parties are competitors.
Respondent argues that the parties are not
competitors because they cater to different market segments; Respondent
operates a 2-star hotel and Complainant operates a luxury hotel. However, this Panel is not persuaded that
this difference in target customers is sufficient to require a finding that the
parties are not competitors for purpose of the Policy. As useful as the concept of target customers can
be to a business, this concept does not in fact imposes upon reality a neat
division. As a matter of practical
experience it is more correct to define a continuum of prospective customers
along an economic scale, and in this sense Internet users who are looking for
lodging in any given geographic area, such as here, are one group, not two or
more.
As such, this Panel finds that Respondent’s
conduct is inconsistent with a finding that it has engaged in a bona fide offering of services. See America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 12, 2000) ("it would be unconscionable to find a bona fide offering of services in a Respondent's
operation of a website using a domain name which is confusingly similar to Complainant's
mark and for the same business."). See also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20,
2002)(finding that because the VIAGRA mark was clearly well-known at the time
of the Respondent's registration of the domain name it can be inferred that the
Respondent is attempting to capitalize on the confusion created by the domain name's
similarity to the mark); see also MBS Computers Ltd. v. Workman, FA 96632
(Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when
the Respondent is using a domain name identical to the Complainant's mark and
is offering similar services).
The Complainant has established that Respondent
has no rights or legitimate interests in respect of the domain name.
Paragraph 4(b) of the Policy provides
guidance about what sort of conduct constitutes bad faith conduct for purposes
of Paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) provides four non-exclusive examples of bad faith
conduct, to wit:
(i)
circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to a competitor of that Complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related
to the domain name; or
(ii)
you have
registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided
that your have engage in a pattern of such conduct;
(iii)
you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv)
by using
the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to you web site or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on you website or location.
This Panel finds that Complainant has not
established that Respondent acquired Respondent’s Domain Name primarily for the
purpose of selling, renting, or otherwise transferring the domain name to Complainant.
Further, Complainant has not established
that Respondent registered the domain name in order to prevent Complainant from
reflecting Complainant’s Mark in a corresponding domain name; Complainant has
registered the <hersheyhotel.com> domain name. Further still, Complainant
has not established that Respondent registered the domain name primarily for
the purpose of disrupting the business of a competitor. As such, this Panel finds that Complainant
has not established bad faith under Paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii).
However, this Panel does find that Complainant
has established that by using Respondent’s Domain Name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s Mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent’s Domain Name directs to a website
for Respondent’s hotel. The clear
purpose and intent of Respondent’s Domain Name is to attract Internet users to
the website in order to promote Respondent’s hotel. And, nothing in the facts of this matter
suggests that Respondent’s hotel is anything other than a commercial
enterprise.
This Panel finds that Respondent’s Domain
Name does create the likelihood of confusion with Complaint’s Mark as to
source, sponsorship, affiliation or endorsement. Respondent’s Domain Name is <hersheyhotels.com>. This Panel believes that this domain name is
ambiguous in the impression it creates.
The first impression is, as Respondent asserts, a reference to hotels in
the Hershey,
Respondent argues that its conduct does not
fall within the scope of Paragraph 4(b)(iv) because its actual, demonstrable
intent was and has always been to apply a neutral, company-wide policy with
respect to the creation of domain names.
This neutral, company-wide policy was to concatenate the word “hotels”
with the name of the geographic area in which each of its hotels was located. As such, Respondent’s intent in using the
word “hershey” was in the geographic sense and not as reference to Complainant’s
Marks. However, this argument misses the
mark. The relevant intent for purposes
of Paragraph 4(b)(iv) is as to “…attract[ing] Internet users to the website…”,
and not as to “…creating a likelihood of confusion…” As such, Respondent may not have
intentionally created a likelihood of confusion, but may still be found to have
acted in bad faith if the actual effect of its attempt to attract Internet
users is to create a likelihood of confusion, and this Panel so finds.
This Panels finds that Respondent’s conduct would
not fall within the scope of Paragraph 4(b)(iv) if Complainant’s Marks had lost
their trademark status and the word “hershey” had become a generic place name. The parties spend considerable time in their
papers discussing whether
Even if the requisite intent under Paragraph
4(b)(iv) related to the creation of a likelihood of confusion, this Panel would
find the requisite intent. This is
because in this unusual situation where the word “hershey” is both a place name
and a trademark, Respondent is not free to ignore the trademark status of the
word. In this Panel’s view, Respondent
could have selected any number of other domain names that would have invoked
the generic geographic meaning of the word and at the same time would have
avoided a likelihood of confusion as to Complainant’s Marks. Because this would have been easy, because
Respondent could not have been unaware of Complainant’s trademark rights (being
located in the same, close geographic area), and because Respondent did not do
so, this Panel would infer the intent to create a likelihood of confusion.
Complainant has established that Respondent’s
Domain Name was registered and used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hersheyhotels.com> domain name be transferred from Respondent to Complainant.
G. Gervaise Davis, III, the Honorable Nelson
A. Diaz, and Kendall C. Reed, Panelists
Dated: March 20, 2007
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