DECISION

Best Western International, Inc. v. Alex Palov a/k/a register-domain-name-free.com

Claim Number:  FA0406000289354

PARTIES

Complainant is Best Western International, Inc. (“Complainant”), represented by David H. Youssefi, of Best Western International, Inc., 6201 North 24th Parkway, Phoenix, AZ 85106-2023.  Respondent is Alex Palov a/k/a register-domain-name-free.com (“Respondent”), p.o. 3534, Helsink 12832 DE.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestwestern-pittsburgh.com>, registered with Direct Information Pvt. Ltd., d/b/a Directi.com.

PANEL

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 24, 2004; the Forum received a hard copy of the Complaint on June 29, 2004.

On June 26, 2004, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by e-mail to the Forum that the domain name <bestwestern-pittsburgh.com> is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that Respondent is the current registrant of the name. Direct Information Pvt. Ltd., d/b/a Directi.com has verified that Respondent is bound by the Direct Information Pvt. Ltd., d/b/a Directi.com 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 June 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 2004 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@bestwestern-pittsburgh.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bestwestern-pittsburgh.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark.

2. Respondent does not have any rights or legitimate interests in the <bestwestern-pittsburgh.com> domain name.

3. Respondent registered and used the <bestwestern-pittsburgh.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Best Western, International, Inc. is the world’s largest lodging chain, with over 4,100 Best Western properties in 81 countries throughout the world.  Complainant began using the BEST WESTERN mark in 1946, first registering the collective mark with the U.S. Patent and Trademark Office (“USPTO”) on June 8, 1971 (Reg. No. 914,813), and first registering the service mark with the USPTO on February 2, 1987 (Reg. No. 1,427,735).  Complainant has used its mark in considerable advertising; it spent $35,090,420 in 2002 and $37,766,953 in 2003.

Respondent, Alex Palov, registered the <bestwestern-pittsburgh.com> domain name on January 2, 2004.  Respondent is using the domain name to display and advertise pornography.

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has rights in the BEST WESTERN mark as evidenced by its registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <bestwestern-pittsburgh.com> domain name is confusingly similar to Complainant’s BEST WESTERN mark.  The only differernce is the addition of a hyphen and the name of a U.S. city—“pittsburgh.”   The Panel finds that neither adding a hypen nor a geographical term significantly distinguishes the <bestwestern-pittsburgh.com> domain name from the BEST WESTERN mark.   See Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In this proceeding, Respondent has not offered a Response.  In the absence of a Response, the Panel accepts all reasonable assertions by Complainant.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

The Panel finds that wholly appropriating Complainant’s mark to advertise and display pornography is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

There is nothing in the record, including Respondent’s WHOIS registration information, which indicates that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii).  The Panel finds that Respondent is not commonly known by <bestwestern-pittsburgh.com>.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is not just providing pornography and pornography advertising for altruistic reasons.  The Panel infers that this domain name generates revenues, whether through click through fees or by direct billing.  Therefore, the Panel finds evidence of bad faith, pursuant to Policy ¶ 4(b)(iv), because Respondent is creating a likelihood of confusion as to the source of the <bestwestern-pittsburgh.com> domain name for commercial gain.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The Panel also finds that by wholly appropriating Complainant’s mark to display and advertise pornography, Respondent has registered and used the <bestwestern-pittsburgh.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“[T]his association with a pornographic web site can itself constitute bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <bestwestern-pittsburgh.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  August 6, 2004

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