WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forte (U.K.) Limited v. Posthouse Hotels IRE
Case No. D2001-0130
1. The Parties
1.1 The Complainant is Forte (U.K.) Limited, a British corporation with its registered office at 166 High Holborn, London WC1V 6TT, United Kingdom.
1.2 The Respondent is Posthouse Hotels IRE. The contact details for this entity are Jason Beatty, Posthouse Hotels IRE, 43 Moyne Road, Ranelagh, Dublin 6, Ireland.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <posthousehotels.com>. The registrar of the domain name as at the date of the Complaint is Network Solutions, Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on January 24, 2001, and in hard copy on January 29, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint is being sent to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint is being sent to the Registrar of the domain name in dispute, NSI.
3.3 On January 26, 2001, the Center sent the Complainantís representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to NSI on January 29, 2001, by email. NSI responded to the Centerís request by email on January 30, 2001, stating:
(a) that NSI had received a copy of the Complaint;
(b) that NSI was the registrar for the domain name in dispute;
(c) that the Respondent was the current registrant of the domain name in dispute;
(d) that the domain name <posthousehotels.com> was active;
(e) the Respondentís contact details; and
(f) that Network Solutionsí 5.0 Service Agreement was in effect.
3.5 On January 31, 2001, the Center sent the Complainantís representative a Complaint Deficiency Notification. This notified the Complainantís representative of the following formal deficiencies with the Complaint:
(a) the Complaint was not submitted in one original and four copies, as required by paragraph 3(b) of the Rules and paragraph 3(c) of the Supplemental Rules; and
(b) paragraph 15 of the Complaint, concerning the jurisdiction to which the Complainant submits, was deficiently drafted, and an amended clause 15 was proposed by the Center.
3.6 The Center received the Amended Complaint by email on February 1, 2001 and in hard copy on February 5, 2001. The additional copies of the Complaint requested by the Center were provided by the Complainant and the Amended Complaint incorporated the Centerís suggested amendment to paragraph 15.
3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on February 6, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainantís representative by email (without attachments).
3.8 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on February 27, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.9 The Center sent a Transmission of Case File to Administrative Panel by email on March 13, 2001. The documentation was received in hard copy by the Panel on March 19, 2001 in Sydney, Australia.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
Forte (U.K.) Limited has for many years operated a chain of high quality Posthouse Hotels in the U.K. and Ireland; there are currently 80 hotels operating under the Posthouse brand. The Claimantís website address is <http://www.posthouse-hotels.com> (Claimantís domain name (posthouse-hotels.com)).
4.2 The Complainantís trade marks
The Complainant is the owner of registrations for the trade mark "POSTHOUSE" in the U.K., Ireland and Japan, with a pending application in India. The trade mark registrations cover a wide range of goods and services, in particular hotel and hotel reservation services (in international trade mark class 42). "POSTHOUSE" is a well-known trade mark with very substantial goodwill in the U.K. and Ireland.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the disputed domain name, which the Respondent has registered, is confusingly similar to the Complainantís "POSTHOUSE" trade mark. The Complainant also asserts that the disputed domain name is confusingly similar to its domain name <posthouse-hotels.com>, and that the Respondent is using the disputed domain name to signify to internet users a business connection with the Complainant when in fact no such connection exists.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no legitimate interest in respect of the disputed domain name. The Complaint states that there is no evidence that the domain name <posthousehotels.com> corresponds with the business of Mr Beatty, or anyone else at 43 Moyne Road, Dublin. The Complaint asserts that a search of the Dun & Bradstreet Worldbase Business Locator did not reveal any businesses trading under the name "Posthouse Hotels IRE".
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the domain name in dispute in bad faith.
In support of this assertion, the Complaint states the following:
(a) "POSTHOUSE" is a well known trade mark in connection with hotels and there are 80 Posthouse Hotels in the U.K. and Ireland, including one in Dublin and one in Belfast.
(b) a search of the Network Solutions website reveals that Jason Beatty of 43 Moyne Road, Dublin owns at least 46 top level domain names, including well-known names such as <kingstoncomms.com>. The registration for this name claims that it is for a business called Kingston Communications, yet no such business trades at the address given. "Kingston Communications Group plc", a large English telecommunications company (actual domain name kingston-comms.com), was floated on the London Stock Exchange with a large amount of publicity in 1999. The search report from Network Solutions is attached at Annex 3. The two starred names (firstname.lastname@example.org and email@example.com) identify a Mr Jason Beatty at another Dublin address. It is possible that this is not the same Jason Beatty as the one at 43 Moyne Road, Dublin; however both sites are parked at the homepage of "domainsarefree.com", as with the other 46 web pages. Hertz and Europcar are well known car rental companies.
5.5 The Complainant also states that the Complaint is being made on the basis that the disputed domain name (and the business name Posthouse Hotels IRE) is similar to, and infringes the rights of the Complainant in, the trade mark POSTHOUSE (in relation to hotels).
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Name identical or confusingly similar to Complainantís trade mark
The domain name in dispute is <posthousehotels.com>. The Complainant has trade mark registrations in the U.K., Ireland, Japan and a pending application in India of the word "POSTHOUSE".
The domain name in dispute and the Complainantís trade mark are not identical, and the issue is therefore whether the domain name and the mark are confusingly similar.
As far as a comparison between the disputed domain name and the Complainantís trade mark of the word "POSTHOUSE" is concerned, the addition of the word "hotels" to the word "posthouse" in the disputed domain name has, in the Panelís view, minimal impact on what the viewer focuses on, namely, the word "posthouse". In the Panelís opinion, the Respondent has deliberately added the word "hotels" to the word "posthouse" in the disputed domain name because, as the Complaint asserts, the Complainantís "POSTHOUSE" trade mark is well-known in the U.K. and Ireland in connection with the hotel business.
This Panelís view, consistently expressed in prior decisions, is that common nouns are rarely distinguishing elements. Where, as here, the common noun selected coincides with the services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable. The gTLD suffix forming part of the domain name has no relevant distinguishing function.
The Panel also infers that the word "posthousehotels" was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with the Respondentís web site. The Panel in any event finds that the disputed domain name is confusingly similar to the Complainantís trade mark and that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent has provided no information to the Panel asserting any right or legitimate interest it has in the disputed domain name. As there is clearly no connection between the Respondent and the Complainant or its business, the Complainant has made efforts to discover whether a business trading as Posthouse Hotels IRE is located at 43 Moyne Road, Dublin. It appears from the Complaint that a Dun & Bradstreet Worldbase Business Locator was undertaken by or on behalf of the Complainant. According to the Complaint, the search did not reveal any businesses trading under the name "Posthouse Hotels IRE".
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
In this case, although NSI has confirmed that the domain name <posthousehotels.com> is currently active, the Complaint asserts that the web site corresponding to the disputed domain is directed to <www.domainsarefree.com>. The Panel has confirmed that this is the case. In some cases it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. In this case the direction/redirection to the generic site is sufficient to satisfy the "use" element and is not regarded by the Panel as "inaction".
6.5 In order to show bad faith registration by the Respondent, the Complainant makes two assertions, at paragraph 10.3 of the Complaint: first, it contends that the domain name in dispute has been registered in bad faith by the Respondent because "POSTHOUSE" is a well known trade mark in connection with hotels, and secondly, because a search of the NSI website reveals that Jason Beatty of 43 Moyne Road, Dublin, owns numerous top level domain names.
6.6 Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
6.7 As discussed, the word "posthouse" is obviously a well-known mark used by the Complainant in its day-to-day business. Its use by someone with no connection with the Complainant suggests opportunistic bad faith. In the Panelís opinion, the disputed domain name was registered by the Respondent for either of the reasons outlined in sub-paragraphs 4 (b) (i) and (ii) of the Policy.
The Panel is not aware of any express offer made by the Respondent to sell, rent or otherwise transfer the disputed domain name to the Complainant. However, as the Complainant has asserted and shown, Mr Jason Beatty, the individual who is listed as the primary contact for the Respondent, is the owner of numerous top level domain names. The Respondent has not put forward any evidence that it, or Mr Beatty, does have legitimate rights or interests in the disputed domain name, or the numerous other top level domain names that have been registered, and that the Complaint has cited.
In light of the above, the Panel concludes that it is likely that Mr Beatty is in the business of speculatively registering domain names in which he has no legitimate right or interest for the purpose of seeking to sell them to corresponding trade mark owners for consideration in excess of the out-of-pocket expenses he has incurred in registering the domain names. Indeed, the fact that an email has been forwarded to the Complainant (or entities related to the Complainant) by Mr Beatty (or another party connected to the Respondent) suggests to the Panel that the Respondent wished to alert the Complainant that potential customers were attempting to contact the Complainantís hotels via the domain name <www.posthousehotels.com>. On one view, the conduct could be seen as a constructive offer to sell the domain name.
6.8 The Panel is of the view that the domain name in dispute was registered and is being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <www.posthousehotels.com> be transferred by NSI to the Complainant, Forte (U.K.) Limited.
Philip N. Argy
Dated: April 3, 2001