Best Western International, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin / Private Registrations Aktien Gesellschaft / Above.com Domain Privacy
Claim Number: FA1609001695500
Complainant is Best Western International, Inc. (“Complainant”), represented by Emily A. Bayton of Lewis Roca Rothgerber Christie LLP, Colorado, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin / Private Registrations Aktien Gesellschaft / Above.com Domain Privacy (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestwesterm.com>, <mybestwester.com>, <bestwesternhotelsumadija.com>, registered with Fabulous.com Pty Ltd; PDR Ltd. d/b/a PublicDomainRegistry.com; Above.com Pty Ltd., respectively.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2016; the Forum received payment on September 26, 2016.
On September 27, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <bestwesterm.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 September 28, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mybestwester.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 28, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <bestwesternhotelsumadija.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2016 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@bestwesterm.com, postmaster@mybestwester.com, postmaster@bestwesternhotelsumadija.com. Also on October 3, 2016, 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 October 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 registered its BEST WESTERN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,432,431, registered Mar. 10, 1987), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <bestwesterm.com> domain name is confusingly similar to the BEST WESTERN mark because it merely changes the “n” in WESTERN to an “m” and incorporates the entire mark (less the space and addition of a generic top-level domain (“gTLD”)). Respondent’s <mybestwester.com> domain name merely adds the generic term “my” to the full BEST WESTERN mark, minus the last “n” in WESTERN. Respondent’s <bestwesternhotelsumadija.com> domain name is confusingly similar because it merely adds the descriptive term “hotel” and the geographic term “Sumadija” to the entire BEST WESTERN mark.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized Respondent to use its BEST WESTERN mark in any fashion, and Respondent is not commonly known by any of the disputed domain names. Respondent is using the disputed domain names to redirect Internet users who misspell Complainant’s mark to one of Complainant’s competitors. Respondent also has used the disputed domain names to trick Internet users into downloading malicious computer software. Neither of these uses can be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain names in bad faith. Respondent has offered to sell the domain names to the general public. Respondent is diverting Complainant’s customers to a website of Complainant’s competitors, and to websites that feature malicious phishing software. Respondent is clearly typosquatting on Internet users who are looking for Complainant’s website. Respondent thus had full knowledge of Complainant’s BEST WESTERN mark when it registered the disputed domain names. All this behavior by Respondent is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Best Western International, Inc. of Phoenix, AZ, USA. Complainant is the owner of domestic and international registrations for the mark BEST WESTERN, which it has continuously used since at least as early as 1947, in connection with its provision of goods and services related to its hotel, motel, and resort business.
Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin / Private Registrations Aktien Gesellschaft / Above.com Domain Privacy of the Isle of Man, Kingston, St. Vincent and the Grenadines, and Beaumaris, Australia respectively. The registrars for the disputed domains are located in Australia, India, and Australia respectively. The Panel notes that Respondent registered the <bestwesterm.com> domain name on or about August 23, 2000; it registered the <mybestwester.com> domain name on or about October 16, 2006; and it registered the <bestwesternhotelsumadija.com> domain name on or about February 20, 2016.
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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that while each domain name was registered through a different WHOIS privacy service, the content displayed at the resolving website of each domain name was so similar that Respondent must be the same person/entity. The Panel notes the screen shots of the disputed domain names submitted by Complainant and finds enough distinction between those relating to the first two disputed domains and the third to conclude that there is insufficient evidence that the Respondent must be the same person/entity. The Panel further notes that all three domain names were registered with different registrars, at different times over a period of nearly sixteen years, with no identical WHOIS information.
The Panel finds that the Complainant has not sufficiently presented evidence demonstrating that all three listed entities are jointly controlled. Pursuant to the Forum’s Supplemental Rule 4(c), the Panel finds that the <bestwesterm.com>, <mybestwester.com> domain names are commonly owned by Respondents listed as the first two entities and dismisses the Complaint in relation to the domain name <bestwesternhotelsumadija.com> and the third Respondent.
Complainant has registered its BEST WESTERN mark with the USPTO (e.g., Reg. No. 1,432,431, registered Mar. 10, 1987), and therefore claims it has rights in the mark under Policy ¶ 4(a)(i). Prior panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country that a respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). The Panel here finds that Complainant has rights in its BEST WESTERN mark.
Complainant argues that Respondent’s <bestwesterm.com> domain name is confusingly similar to its BEST WESTERN mark. Complainant alleges that Respondent has incorporated its entire mark and merely changed the “N” in WESTERN to a “m” (less the space and addition of a gTLD). Complainant argues that this domain name is typoquatting on its mark, and that this is a common misspelling because “n” and “m” are adjacent to each other on a QWERTY keyboard. Past panels have found that a domain name and a mark are confusingly similar when they only differ by a single letter. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). The Panel here finds that <bestwesterm.com> is confusingly similar to Complainant’s BEST WESTERN mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mybestwester.com> domain name is confusingly similar to its BEST WESTERN mark. Complainant alleges that Respondent has merely added the descriptive term “my” and omitted the “N” and space from its BEST WESTERN mark. Complainant also contends that it operates a commercial website at the <mybestwestern.com> domain name. Previous panels have held that omitting a letter and adding a generic term and gTLD are insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). The Panel here finds that <mybestwester.com> is confusingly similar to Complainant’s BEST WESTERN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <bestwesterm.com>, and <mybestwester.com>, domain names. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its BEST WESTERN mark in any fashion, and that Respondent is not commonly known by any of the disputed domain names. The Panel may note that the WHOIS information for <bestwesterm.com> lists “Domain Admin” as the registrant with “Privacy Ltd. Disclosed Agent for YOLAPT” organization; and the WHOIS information for <mybestwester.com> lists “Domain Admin” as the registration with “Private Registrations Aktien Gesellschaft” organization. Previous panels have concluded that a respondent is not commonly known by a domain name based on the WHOIS information and lack of contradicting evidence in the record. The latter is also present here as Respondent has not filed an answer to the complaint. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (FORUM Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel here finds that Respondent is not commonly known by the <bestwesterm.com>, or <mybestwester.com> domain names.
Complainant argues that Respondent is not using any of the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant asserts that Respondent’s domain names either redirect Internet users to Complainant’s competitors, or they contain malicious computer software. Past panels have held that using a confusingly similar domain name to compete with the complainant does not confer any rights or legitimate interests. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Panels have also found that distributing malicious computer software does not confer any rights or legitimate interests. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel here finds that Respondent is not using the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain names.
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent has generally advertised that the disputed domain names are for sale. Complainant’s evidence of this comes from the WHOIS information it provided for the disputed domain names. Prior panels have held that a respondent offering the disputed domain to the public for sale shows bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). The Panel here finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(i).
Complainant also argues that Respondent’s primary purpose for registering the disputed domain names was to disrupt Complainant’s business. Complainant argues that Respondent’s bad faith has been shown by diverting Internet users to Complainant’s competitors at the confusingly similar domain names. The Panel notes the screen shots of Respondent’s domain names provided as evidence by Complainant, and determines that they are competing with Complainant’s hotel business. Previous panels have typically defined competitor broadly and have held a respondent appropriating a complainant’s mark to divert Internet users is in bad faith. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent has violated Policy ¶ 4(b)(iii).
Complainant further argues that Respondent is using the resolving website at the disputed domain names to distribute malicious phishing software. The Panel notes the messages Complainant received when accessing the disputed domains. Panels have held that both phishing and distributing malicious software is bad faith conduct under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Forum Dec. 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). The Panel here finds that Respondent’s use of the disputed domain names as described above is in bad faith under Policy ¶ 4(a)(iii).
Complainant finally argues that Respondent registered the disputed domain names to typosquat on its BEST WESTERN mark. Complainant argues that <bestwesterm.com> merely changes the “n” to an “m” in the WESTERN portion of its mark. Complainant also argues that <mybestwester.com> is identical to its <mybestwestern.com> domain name, but for the omission of the “n” in WESTERN. Panels have held that typosquatting can serve as independent evidence to hold a respondent in bad faith. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent registered the disputed domain names to typosquat on Complainant’s BEST WESTERN mark in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED for the domain names so noted.
Accordingly, it is Ordered that the <bestwesterm.com>, and <mybestwester.com>, domain names be TRANSFERRED from Respondent to Complainant.
As noted above, the case is dismissed as to the third entity as a Respondent in this matter and to the <bestwesternhotelsumadija.com> domain name.
Darryl C. Wilson, Panelist
Dated: Nov. 14, 2016
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