The Complainant is Best Western International, Inc. of Phoenix, Arizona, United States of America (“United States”), represented by Lewis Roca Rothgerber Christie LLP, United States.
The Respondent is Alaa Ghunim, Red Horizon of Lisbon, Portugal, internally-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with IP Mirror Pte Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019. The Center received two informal email communications from the Respondent on the same date.
The Center appointed Jane Seager as the sole panelist in this matter on March 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Founded in 1946, the Complainant is an international corporation incorporated under the laws of the State of Arizona, United States. According to the Complainant, the Complainant owns and operates a network of over 4,200 independently owned and operated hotels in almost 100 countries and territories around the world. For use in connection with its hotel, motel and resort services, and related goods and services, the Complainant is the registrant of, inter alia, the following trademarks:
- United States Trademark Registration No. 1427735, BEST WESTERN, registered on February 3, 1987;
- United States Trademark Registration No. 2105546, BEST WESTERN (and design), registered on October 14, 1997;
- European Union Trademark Registration No. 001318237, BEST WESTERN, registered on February 13, 2001; and
- Qatari Trademark Registration No. 53532, BEST WESTERN, registered on May 14, 2009.
The disputed domain name was registered on March 16, 2015. The disputed domain name previously resolved to a page that prominently displayed the Complainant’s above-referenced BEST WESTERN (and design) trademark together with the notice “Best Western Qatar – Under Construction”.
On September 20, 2018, representatives of the Complainant sent a cease-and-desist letter to the Respondent including notice of the Complainant’s trademark rights, and requesting transfer of the disputed domain name. On September 25, 2018, the Respondent replied to the Complainant stating that it was willing to transfer the disputed domain name “for a certain amount” and soliciting an offer for the transfer of the disputed domain name. Representatives of the Complainant contacted the Respondent again on October 1, 2018, reiterating their request that the disputed domain name be transferred to the Complainant. The Respondent replied the same day, repeating its request for compensation for transfer of the disputed domain name. In a subsequent communication from the Respondent, the Respondent appears to have requested a total of EUR 5,415 for the transfer of the disputed domain name (alleging EUR 1,200 per year for four years’ registration fees, plus EUR 500 in transfer fees with 23 percent value added tax, being the rate applicable in Portugal, where the Respondent is apparently located).
At the time of filing of the Complaint, the disputed domain name resolved to a landing page displaying the message “IBTEKAR Qatar – Under Construction”. 5. Parties’ Contentions A. Complainant
The Complainant, in relevant part, makes the following submissions:
The Complainant states that the disputed domain name incorporates the entirety of the BEST WESTERN trademark and does not incorporate any other distinctive mark or element, which establishes that the disputed domain name is confusingly similar to its BEST WESTERN trademark. The Complainant asserts that the country code Top-Level Domain (“ccTLD”) “.qa” is irrelevant for the purposes of determining whether a domain name and a mark are identical or confusingly similar.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not an authorized licensee of the Complainant, nor does the Respondent have any authorization to use or register any domain name containing the Complainant’s BEST WESTERN trademark. The Complainant submits that the disputed domain name has never been used in connection with a bona fide offering of goods or services, but rather that the disputed domain name has only been operated to deceive the public and/or misdirect the Complainant’s customers and/or to profit from the Complainant. The Complainant alleges that the disputed domain name is being used in a fraudulent manner in an effort to drive Internet traffic to the Respondent’s website. The Complainant argues that the only conceivable purpose for the Respondent’s registration of the disputed domain name was for “purely fraudulent activities and to capitalize on the Complainant’s goodwill.” The Complainant further asserts that the Respondent is not using the disputed domain name in order to identify or comment on the Complainant, therefore the Respondent has no “free-speech” interests in the disputed domain name.
The Complainant submits that the initial interest confusion caused by the similarity between the disputed domain name and the Complainant’s BEST WESTERN trademark is sufficient for a finding of bad faith. The Complainant further submits that the display of the Complainant’s BEST WESTERN (and design) trademark on the website previously appearing at the disputed domain name is evidence of bad faith registration. The Complainant states that in pre-Complaint correspondence with the Respondent, the Respondent was given explicit notice of the Complainant’s trademark rights, and instead of complying with the Complainant’s demands to transfer the disputed domain name, the Respondent offered to sell the disputed domain name to the Complainant. The Complainant submits that the Respondent’s use of the disputed domain name creates the false impression that there is an affiliation, connection or association between the Complainant and the Respondent, or between the Complainant and the disputed domain name. The Complainant further asserts that the Respondent’s registration and use of the disputed domain name creates a risk of identity theft, phishing, fraudulent activity or other malfeasance conducted through the disputed domain name.
The Complainant requests transfer of the disputed domain name. B. Respondent
On March 12, 2019, the Respondent sent two informal email communications to the Center. The first stated:
- “I need the maintaince fees from the Hotel and they refuse to pay it [sic]”
The second stated:
- “This is my replay to the Hotel, I assigned as adminsitartor to this domain by Mr. […] the general manager and Mr. […] then Mr. […] and till now they did not pay the maintinaes fees so please make in your consideration this email [sic]” 6. Discussion and Findings 6.1. Procedural Matter: Admissibility of the Respondent’s Late Response
The Panel notes that the above-mentioned Respondent communications were submitted after the due date for submission of a Response. Notwithstanding the Respondent’s failure to submit its reply within the deadline specified in paragraph 5(a) of the Rules, in the interests of fairness between the Parties, the Panel has determined to allow the Respondent’s late Response, noting in any event that its inclusion on the record has not significantly impacted the Panel’s conclusions. 6.2. Substantive Matters
To prevail, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 5(a) of the Policy, namely that:
(i) the disputed domain name 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 the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the BEST WESTERN trademark by virtue of its registration and use, details of which are set out in the factual background section above.
The disputed domain name incorporates the Complainant’s trademark in its entirety without alteration, save for the omission of the space between the two words comprising the Complainant’s trademark.
The ccTLD “.qa” may be disregarded for the purposes of assessment under the first element, being a technical requirement of registration.
For the above reasons, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the requirements of paragraph 5(a)(i) of the Policy are met. B. Rights or Legitimate Interests
There is no evidence to suggest that the Respondent is affiliated with the Complainant, or that the Respondent has been authorized to use or register a domain name containing the Complainant’s trademark. Rather, the Complainant asserts that the Respondent is not an authorized licensee of the Complainant, nor does the Respondent have any authorization to use its BEST WESTERN trademark.
There is no evidence that the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The evidence on record shows that the disputed domain name has only ever resolved to an “under construction” landing page, either displaying the Complainant’s trademark, or that of another company. Such use does not, in the Panel’s view, amount to a bona fide use of the disputed domain name within the meaning of paragraph 5(c)(i) of the Policy.
There is no evidence to suggest that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name pursuant to paragraph 5(c)(ii) of the Policy.
In addition, the website at the disputed domain name appears to have essentially lacked content since the registration of the disputed domain name. There is no evidence to indicate that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name under paragraph 5(c)(iii) of the Policy. On the contrary, as set out in more detail below, it appears that the Respondent’s motivation for registering the disputed domain name was to sell it to the Complainant for profit.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Notwithstanding the Respondent’s informal communications, the Panel finds that the Respondent has failed to produce any evidence to displace the Complainant’s prima facie case. Accordingly, the Panel finds that the requirements of paragraph 5(a)(ii) of the Policy are met. C. Registered or Used in Bad Faith
The Complainant has provided evidence of a comprehensive trademark portfolio encompassing registrations for the BEST WESTERN trademark, registered in jurisdictions throughout the world, including those that are valid in the Respondent’s WhoIs-listed location. The Panel further notes that the Complainant owns and operates a substantial number of hotels, motels and resorts in many countries around the world. In light of the evidence presented, the Panel considers that the Respondent could not reasonably claim to be unaware of the Complainant or its BEST WESTERN trademark at the time it registered the disputed domain name. Indeed, the registration of a domain name corresponding precisely to a third-party trademark may indicate, as in the present case, the Respondent’s awareness of the Complainant’s trademark. Furthermore, the display of the Complainant’s BEST WESTERN (and design) trademark on the Respondent’s website indicates actual knowledge of the Complainant’s trademark on the part of the Respondent. In the circumstances, by registering the disputed domain name, which is identical to the Complainant’s trademark, having no authorization from the Complainant to do so, the Panel finds that the Respondent registered the disputed domain name in bad faith.
Furthermore, pre-Complaint correspondence between the Parties indicates that when approached by the Complainant, the Respondent offered to sell the disputed domain name to the Complainant, at first soliciting an offer for the disputed domain name, and later quoting a total price of EUR 5,415. While the Respondent argues that this price is justified on the basis of his expenses related to registration of the disputed domain name, the Respondent has not provided any evidence of actually having incurred such expenses. Rather, the Respondent appears to be attempting to profit from the sale of the disputed domain name, which is an exact match with the Complainant’s BEST WESTERN trademark, back to the trademark owner, i.e., the Complainant. Accordingly, the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, pursuant to paragraph 5(b)(i) of the Policy.
While the Complainant is only required to demonstrate registration or use in bad faith, in light of the above, the Panel finds that the Respondent’s conduct amounts to registration and use of the disputed domain name in bad faith, and that the requirements of paragraph 5(a)(iii) have been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 5(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: April 4, 2019
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