WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Jeffrey Butler
Case No. D2002-1076
1. The Parties
Complainant is Six Continents Hotels, Inc. a corporation of the State of Delaware, United States of America (USA). Respondent is Jeffrey Butler of Warwick, Rhode Island, USA.
2. The Domain Name and Registrar
The domain name at issue is . The Registrar is Melbourne IT, Ltd. d/b/a Internet Names Worldwide, of Melbourne, Australia.
3. Procedural History
A Complaint was filed by e-mail on November 25, 2002, and was received in hard copy form on November 27, 2002. The Center acknowledged receipt of the Complaint by e-mail on November 26, 2002. That same date, the Center contacted the Registrar to inquire whether it had received a copy of the Complaint, whether the domain name was registered with the Registrar, whether the Respondent is the current registrant, and the other information required pursuant to Paragraph 2(a)4 of the Rules of the Uniform Domain Name Dispute Resolution Policy (the "Rules"). On November 27, 2002, the Registrar e-mailed the Center, confirming that it received a copy of the Complaint from the Complainant, that the domain name is registered with the Registrar, that Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") applies to the domain name, that the domain name will be locked during the administrative proceeding, that the language of the Registration Agreement is in English, and that the registrant submitted to the jurisdiction of the courts as provided in the UDRP Policy. The Registrar also provided contact details from its WHOIS data base for the Registrant�s technical, administrative and billing contacts for the domain name.
On November 28, 2002, the Center completed its formal requirements compliance check list. This panel has reviewed the check list and confirms that it is accurate.
That same day the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, setting the deadline for response as December 18, 2002. The Notification was forwarded to the parties by e-mail, and in addition was forwarded to Respondent by facsimile and air courier. E-mails addressed to its company and its representative�s addresses were returned.
On December 19, 2002, the Center issued a Notification of Respondent Default, which was forwarded to Complainant by e-mail and to Respondent by e-mail and air courier.
On January 10, 2003, the Center issued its Notification of Appointment of Administrative Panel and Projected Decision date, appointing the undersigned as panelist in this proceeding, and setting the deadline for issuance of the decision as January 24, 2003. This communication was forwarded to the parties by e-mail.
4. Factual Background
Complainant owns and operates hotels under the name CROWNE PLAZA. There are over 190 CROWNE PLAZA hotels and resorts worldwide, including a location in Warwick, Rhode Island. Complainant owns several U.S. trademark registrations which incorporate the words CROWNE PLAZA, including U.S. Registration No. 1,297,211 for the mark CROWNE PLAZA covering "hotel services � namely providing lodging and restaurant services in hotels." The registration issued on September 18, 1984, and is now incontestable. Respondent linked the domain name to comments critical of the business practices of Complainant�s CROWNE PLAZA hotel in Warwick, Rhode Island and its management. Respondent promotes audio visual services and conference site selection services on its web page.
5. Parties� Contentions
A. Complainant
Complainant asserts that it has been operating a hotel in Warwick, Rhode Island, under the name of CROWNE PLAZA since at least as early as October 2, 1987. Complainant apparently provides meeting and conference services. In the past, it had permitted third parties to provide audio-visual ("A/V") equipment and services to Complainant�s conference and meeting customers. Those third party AV providers included Respondent. However, in early 2002, the General Manager of the Crowne Plaza Warwick Hotel entered into a contract with a third party vendor to be the exclusive provider of A/V equipment and services for all guests of the hotel requiring such equipment. Complainant asserts that on or about April 21, 2002, a guest of the Crowne Plaza Warwick sought to use Respondent�s A/V equipment and services there. The hotel informed the guest that it required guests to utilize the services and equipment of the hotel�s exclusive A/V vendor. Learning of this, Respondent contacted the hotel�s sales and marketing director on April 26, 2002, and its General Manager on April 28, 2002, but apparently was unable to resolve the issue to Respondent�s satisfaction. Complainant asserts that Respondent registered the domain name on April 25, 2002, four days after the hotel required Respondent�s customer to use the hotel�s exclusive A/V equipment and service provider. Respondent initially hosted a web page linked to the domain name which promoted Respondent�s competitive video and conferencing equipment and services, and offered advice on selecting hotels and conference centers.
Complainant asserts that once it learned Respondent had registered the domain name, Complainant�s outside counsel wrote Respondent to demand transfer of Respondent�s domain name. The letter was not claimed by Respondent; however, Respondent revised its web page linked to the domain name to include vulgar remarks apparently directed at the Crowne Plaza Warwick hotel and its management.
On October 7, 2002, Complainant sent another demand letter, directed to an attorney representing Respondent in an ongoing business dispute between Respondent and the franchisee which operates the Crowne Plaza Warwick Hotel. Respondent�s attorney advised Complainant�s attorneys that they would not assign the domain name to Complainant but instead would release it.
Complainant�s counsel responded that simply releasing the domain name was inadequate as it would be available for anyone to register. Instead, Complainant�s counsel offered to compensate Respondent for its actual expenses in registering the domain name if Respondent would assign the domain name to Complainant. In response, Respondent�s counsel offered to sell the domain name to Complainant for $1,000. Complainant asserts that this amount is in excess of Registrar Melbourne IT�s $70 charge for a two-year domain name registration. Complainant�s counsel advised Respondent�s counsel of this, and that it would pay only Respondent�s actual expenses in registering the domain name. Neither Respondent nor its counsel responded to this communication. Complainant asserts that the domain name is currently linked to an inactive site.
Complainant asserts the domain name is comprised of Complainant�s registered trademark CROWNE PLAZA plus the geographically descriptive term Warwick. Complainant asserts that the domain name is confusingly similar to Complainant�s registered trademark because the addition of the geographic term WARWICK is not only insufficient to avoid consumer confusion, but actually increases the likelihood of consumer confusion.
Complainant asserts that Respondent has never used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; that Respondent is not and has never been commonly known by the domain name, and that Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
Finally, Complainant asserts that by registering and using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent�s web site by creating a likelihood of confusion with Complainant�s mark as to the source, sponsorship, affiliation or endorsement of Respondent�s web site or of a product or service on that site. Complainant also submits that Respondent registered the domain name for the purpose of disrupting the business of the Complainant. Complainant asserts that although the Respondent�s web site is currently inactive, even its maintenance of the domain name in an inactive state constitutes bad faith in light of Respondent�s initial bad faith registration of the domain name and subsequent bad faith intent to divert Internet traffic to its web site.
B. Respondent
Respondent has failed to respond to the Complaint, and therefore is in default. In light of the default this panel may draw such inferences from the default as it considers appropriate, Rule 14(b). Nevertheless the panel shall proceed to a decision on the Complaint, Rule 14(a), based on the statements and documents submitted and in accordance with the UDRP Policy and Rules. Rule 15(a).
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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.
Policy, Section 4(a)
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Fed�n Entm�t, Inc. v. Bossman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
ii) [the Registrant has] 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 [the Registrant has] engaged in a pattern of such conduct; or
iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.
Policy, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
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, as an individual, business, or other organization 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, Section 4(c).
B. Opinion of the Panel
1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?
The domain name is not identical to any of Complainant�s registered trademarks. It is, however, confusingly similar. Complainant points out correctly that the addition of a geographical term to the name of Complainant�s hotels makes the likelihood of confusion greater, not less, since it appears to indicate one of the 193 locations at which Complainant renders its services � not coincidentally, the very location from which Respondent seeks to render its own audio-visual services. Educational Testing Service v. TOEFL USA, WIPO Case No. D2002-0380; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097.
2. Does Respondent have no rights or legitimate interest in the domain name?
Coupled with proper inferences arising from Respondent�s default, Complainant�s assertions provide adequate evidence that Respondent has no rights or legitimate interest in the domain name . Respondent is not known by the name nor does it provide equipment or render services under that name. Respondent has not used the domain name in any effort to render its own services.
In an apparent effort to legitimize its registration and use of the domain name, Respondent�s initial web site bore the following legend:
new england audio
visual services
incorporated
Conference
Resources Of
Warwick, New
England audio visual,
inc. warwick, ri
located at the new
england audio visual
plaza at 2121
elmwood ave.
warwick, rhode
island
It appears to this panel that Respondent was seeking to create the appearance of some legitimate use of the words CROWNE PLAZA WARWICK by using this legend on its web page. That this use was never a legitimate use is also clear from the fact that this page was dated May 14, 2002, a month after Respondent had its apparently unsatisfactory discussions with the Crowne Plaza Hotel. Further evidence that Respondent�s legend did not constitute a legitimate use of the domain name is the following language appearing on the web site:
"This site is being registered with all major search engines and will be updated by the minute. "Its so nice having a computer background" I guess the more you go after my clients, the more time I have on my hands to develop web sites".
This panel infers that the above was intended to constitute a threat to the Crowne Plaza Warwick Hotel: let me continue to do business at your hotel or I will continue to malign you on my web site.
Respondent certainly has a right to post legitimate complaints about the Complainant on its web site. However, it is not necessary for this panel to determine whether the Respondent�s complaints are legitimate. Respondent has no right to cause confusion using another�s registered trademark in order to voice his concerns or opinions regarding the Complainant. The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823, Westminster Savings Credit Union v. Hart Industries Inc., WIPO Case No. D2002-637.
In sum, Complainant has amply demonstrated that Respondent has no rights or legitimate interests in the domain name.
3. Was the domain name registered and used in bad faith?
Complainant proved that Respondent registered and used the domain name in bad faith under three separate portions of the UDRP Policy. First, by using his web site to dissuade customers from doing business with Complainant and its exclusive audio-visual provider, Respondent has registered his domain name primarily with the intent of disrupting the business of Complainant. Second, by offering on his web site to provide advice regarding conference and meeting sites, Respondent has also registered and used his domain name in an effort to divert traffic and business from Complainant to Respondent. Third, Respondent has also acted in bad faith by offering to sell the domain name to Complainant for an amount in excess of Respondent�s out-of-pocket costs directly related to the domain name.
But in addition to the proof Complainant offered under Sections 4(b)(i), (iii), and (iv) of the Policy, this panel also finds the Respondent acted in bad faith by the threats it made to Complainant against going after Respondent�s clients. This panel uses the presumption justified by Respondent�s default to infer that by these statements, Respondent intended to coerce Complainant to breach its contract with its exclusive audio-visual provider, by continuing to add to Respondent�s web site vulgar epithets about Complainant�s hotel and its personnel.
7. Decision
Complainant has proved amply each of the three elements set forth in Rule 4 of the Policy.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel grants the relief requested by Complainant and orders that the domain name be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Dated: January 24, 2003
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