Domain name - Domain name dispute resolution policy - Trademark rights - Well known and famous - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Registration of other domain names - Valuable consideration in excess of out of pocket costs - Domain name not used in connection with bona fide offerings of goods or services.

Complainant owns and has used the well-known trademark “Best Western” since 1947.  Complainant also owns the domain name“bestwestern.com”. Respondent, who is employed by a Best Western hotel franchise holder, is familiar with Complainant’s trademark.  Respondent registered the domain name “BestWesterns.com”.

HELD, Name Transferred to Complainant.

Domain name is identical or confusingly similar to the trademark in which Complainant has rights.  Further, Respondent has no rights or legitimate interests in respect of the domain name.

Respondent offered to sell domain name to Complainant in exchange for costs and a significant consulting fee.  Moreover, Respondent has registered a number of other domain names that incorporate or copy well known marks of other persons.  Thus, Respondent has demonstrated bad faith registration and use of the mark.

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements Referred to

Network Solutions Service Agreement Version 4.0

Cases Referred to
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Panel Decisions Referred to
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Ayers, as Panelist:
 

PARTIES

The Complainant is Best Western International, Inc., Phoenix, AZ, USA ("Complainant"). The Respondent is Tourism Online Marketing, Pt. Lookout, MO, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "BestWesterns.com", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

R. Glen Ayers, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/09/2000; The Forum received a hard copy of the Complaint on 06/12/2000. 

On 06/13/2000, NSI confirmed by e-mail to The Forum that the domain name "BestWesterns.com" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/10/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 

On July 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed R. Glen Ayers, Jr. as Panelist.

A Response was timely filed and Complainant timely filed a supplemental pleading (See Forum Supplemental Rule #7).

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Since 1947, Complainant has used the trademark "Best Western" (the "Mark") and the Mark is currently registered with the United States Patent and Trademark Office, as well as in other countries. The Mark is obviously widely used and easily recognized and is perhaps even a "famous" Mark. While Complainant has registered as a domain name "bestwestern.com", Respondent has registered "BestWesterns.com", which is almost identical to the Mark and domain name held by Complainant.

 Complainant also asserts that the Complainant does not operate a Best Western affiliated hotel and is not licensed by the Complainant to make any use of the Best Western Mark.

The evidence submitted by the Complainant shows that the Registrant has not made any use of the "BestWesterns.com" domain name in connection with bonafide offerings of any goods or services. The Respondent is not commonly known as "Best Westerns", and the Respondent’s conduct indicates that he had every intent to register the domain name in bad faith, as that term is used in ICANN"s Rules and Policies.

Complainant, as evidence of the bad faith of Respondent, has submitted clear evidence that Respondent had registered a number of domain names including domain names that incorporate or copy well known marks of other persons. Complainant’s evidence shows that Respondent has registered the following domain names among many others: "hyatthotels.com"; "courtyardby marriott.com"; "modernmaturity.com"; and, "nebraskacornhuskers.com".

Complainant and Respondent have submitted correspondence clearly showing that the Respondent originally refused requests by Complainant for a transfer of the domain name in exchange for registration costs. Respondent ultimately proposed to transfer the domain name in exchange for costs and a significant consulting fee on a "report on how [Complainant] can protect itself from persons like Respondent.

        B. Respondent

Respondent, of course, denies everything and states that he had no intent to sell to domain name. Respondent does admit that he has never used the domain name.

Respondent is certainly familiar with Complainant’s Mark, for he is employed by a franchise holder, (his father). Respondent also asserts that he thought he might use the name to market his father/employer’s property or to establish an old movie site.

Respondent’s defense is not credible.

FINDINGS

The evidence clearly supports a finding that Complainant has met its burden of proof.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

Identical and/or Confusingly Similar

There is no doubt that the domain name is confusingly similar and all but identical to the Mark.

        Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the name and has stated that he has never used the name. The domain name is not Respondent’s name or nickname; Respondent has no personal business relationship to Best Western. Respondent does no "western" business.

        Registration and Use in Bad Faith

Respondent clearly registered the domain name with the intent to resell it. His protestations to the contrary, there is no reason for Respondent to have registered this and the other names he holds except with the intent to resell. His offer to sell the name to Complainant is, of course, admitted.

DECISION

Based upon the foregoing, and pursuant to ICANN Rule 4(i), it is decided as follows: The undersigned directs that the domain name "BestWesterns.com" registered by Respondent be transferred to Complainant.
 
  R. GLEN AYERS, JR, 
PANELIST
Dated: July 24, 2000