WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fairmont Hotel Management L.P v. Solutions Express, Inc.,

Case No. D2001-0636

 

1. The Parties

The Complainant in this proceeding is Fairmont Hotel Management L.P., a Delaware limited partnership ("Fairmont") doing business at 100 Wellington Street West, Suite 1600, T.D. Centre, P.O. Box 40, Toronto, Ontario M5K 1B7 Canada.

The Respondent is Solutions Express Inc., located at 28415 Jerry Pl., Saugus, CA 91350, California, USA.

 

2. The Domain Name and Registrar

This dispute concerns the domain <fairmont-hotels.com> ("Domain Name").

The registrar with whom the Domain Name is registered is Internet Domain Registrars, located at 475 Sansome St. 1730 San Francisco, CA, USA.

The Domain Name was registered on February 10, 2001.

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on May 8, 2001, and in hardcopy on May 10, 2001. Payment in the required amount to the Center has been made by the Complainant.

An amendment to the complaint was received on May 28, 2001.

On May 10, 2001, a request for registrar verification was sent to Registrars.com requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name. On May 10, 2001, the center received the response to the request for verification. It stated that the domain name <fairmont-hotels.com> was not registered with them. The Center sent out a second request for Registrar Verification on May 16, 2001, to Internet Domain Registrars. The Center received a verification response the same day stating that the domain name <fairmont-hotels.com> was registered with them and that the domain name had been put under registry lock in the shared Registry Server pending Arbitration. The response to the Registrar verification stated that the Registrant is Solutions Express Inc, 28415 Jerry Pl. Saugus, CA 91350, USA. Further the response stated that the Administrative contact was Admin, System (SYAD4261), 28415 Jerry Pl.Saugus, CA 91350, USA.

On May 31, 2001, the administrative proceeding began.

On, June 28, 2001, notification of appointment of an administrative Panelist and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott and advised that the decision should be forwarded to WIPO by June 19, 2001.

By July 12, 2001, there was still no response received from the Respondent and a decision was made.

 

4. Factual Background

The Complainant has used and owned the trademark FAIRMONT, FAIRMONT HOTELS and variations thereof (the "FAIRMONT Marks") for over 90 years. The Complainant has numerous federally registered registrations for the FAIRMONT mark in the United States Patent and Trademark Office, and in Canada. It has also obtained several Community Trade Mark (CTM) registrations for its FAIRMONT Marks giving it rights in Europe. These registrations include:

MARK

REG. NO.

DATE OF REGISTRATION

GOODS/INTíL CLASS

FAIRMONT (Stylized)

982, 668

United States

April 23, 1974

Hotel Services, 100 (Intíl Class 42)

FAIRMONT (Stylized)

982, 669

United States

April 23, 1974

Hotel Services, 100 (Intíl Class 42).

FAIRMONT

983,000

United States

April 30, 1974

Hotel Services, in Class 100 (Intíl Class 42).

FAIRMONT HOTELS PRESIDENTíS CLUB

1,656,488

United States

September 10, 1991

Specialized Hotel Services for Frequent Customers, (Intíl in Class 42) (C.L. 100). First Use 10-0-1987; In Commerce 10-0-1987.

THE FAIRMONT AMERICAíS GRAND HOTELS, SINCE 1907 (Stylized)

2,048,566

United States

April 1, 1997

Hotel and Associated Restaurant Services, (Intíl in Class 42)

FAIRMONT

1,005,123 Community Trademark

May 24, 2000

Hotel Services, in International (Intíl Classes 35 and 42).

FAIRMONT

(Stylized)

1,005,156 Community Trademark

May 24, 2000

Hotel Services, in International (Intíl Classes 35 and 42).

THE FAIRMONT HOTELS

(Stylized)

1,005,172 Community Trademark

May 24, 2000

Hotel Services, in International (Intíl Classes 35 and 42).

FAIRMONT

TMA529,347 Canada

June 16, 2000

Hotel Services associated with a chain of luxury hotels, (Intíl Class 42).

FAIRMONT DESIGN

TMA529,346 Canada

June 16, 2000

Hotel Services associated with a chain of luxury hotels, (Intíl Class 42).

FAIRMONT HOTELS & DESIGN

TMA529345 Canada

June 16, 2000

Hotel Services associated with a chain of luxury hotels, (Intíl Class 42).

 

5. Partiesí Contentions

A. Complainant

The Complainant states that it began providing service in the hospitality industry in 1907 and is now the largest luxury hotel management company in North America, with a collection of 36 distinctive hotels and 18,150 rooms throughout the United States, Canada, Bermuda, Barbados and Mexico. It states that it operates under the trade name FAIRMONT HOTELS & RESORTS. It asserts that some of the most famous hotels in the world are part of the FAIRMONT HOTELS & RESORTS Group, including the world-renowned Fairmont San Francisco, the Plaza Hotel in New York, and The Copley Plaza in Boston.

The Complainant alleges that the FAIRMONT Marks are famous and that their fame existed long before the registration of the Domain Name by the Respondent. It says that the general public and media alike have recognized Fairmont as being a world leader in the hotel industry. Fairmont Hotels & Resorts dominated the 2001 Condé Nast Travelerís Readers Choice Poll, with eighteen of its hotels and resorts appearing in the magazineís coveted 2001 Gold List. The Gold List, known as the largest private poll of consumer attitudes in the United States, is based on the opinions of over 25,000 readers of the Condé Nast Traveler magazine. Fourteen Fairmont properties were named on the 2000 Travel & Leisureís "Worldís Best" readers poll, while Gourmet Magazineís "Rooms At the Top" list included fifteen. The Complainant also claims that fame and public recognition of the Fairmont name has not been limited to the United States, but has been noted in European publications as well. In May of 2000, readers of the Condé Nast Traveller UK ranked Fairmontís Banff Springsí Solace Spa second for facilities and services in their Annual Readersí Travel Awards.

The Complainant states that it has spent hundreds of millions of dollars advertising and marketing the Fairmont Hotels & Resorts under the FAIRMONT Marks. The Complainant constantly runs ads in such widely circulated magazines as Forbes, Vanity Fair, The New Yorker, Vogue and almost every travel magazine available in North America. It is said that in all advertisements, the FAIRMONT Marks are prominently shown.

The Complainant says that it already has a strong presence on the Internet. In June of 1999 Fairmont Hotels & Resorts launched its web site, <www.fairmont.com>. On the Complainantís authorized web site, guests can link directly to information about each of the Fairmont Hotels & Resorts, as well as to information about the city in which the hotel is located.

The Complainant claims that on February 10, 2001, the Respondent registered the Domain Name. As of that date, the Complainant asserts it had been using its FAIRMONT mark for over 90 years, had been operating under the trade name FAIRMONT HOTELS & RESORTS and had obtained trademark registrations for its FAIRMONT Marks in the United States and Canada, as well as in Europe. In addition, it is submitted that as of the date the Domain Name was registered, the FAIRMONT Marks had already become among the most famous marks in the hospitality business.

In the WHOIS information provided by the Respondent, the owner of <fairmont-hotels.com> is listed as "Solutions Express Inc" located in Saugus, CA. Based on that information, on March 12, 2001, Fairmontís attorneys sent a demand letter to this address. The letter sent by Express Mail to the address given on the WHOIS information was never claimed and was returned. In a subsequent search for a legitimate mailing address, no listing was found for Solutions Express Inc. in the state of California, or in the entire United States, nor was there a published listing for 3924 Bentley Avenue in Culver City, CA, the address listed for the technical and billing contacts. The Complainant also claims that although <fairmont-hotels.com> was registered on February 10, 2001, there appears to be no active web site attached to the Domain Name, and it does not appear that there ever was any functioning web site.

The Complainant points out that it has never given the Respondent any license, permission or authorization by which the Respondent could own or use the Domain Name which incorporates in whole the Complainant's FAIRMONT trademark.

B. Respondent

No response was received from the Respondent.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Name Identical to or Confusingly Similar

It appears from the complaint and evidence, that, in its various manifestations, the Complainant's FAIRMONT and FAIRMONT HOTELS & RESORTS marks have been used for many years. It is also apparent that the Complainant has obtained trademark registrations for its FAIRMONT Marks in the United States and Canada, as well as in Europe. In addition, as of the date the Domain Name was registered, it seems the FAIRMONT Marks had become famous in the hospitality business.

In the Panel's view, such recognition applies whether the Complainantís trademarks are used in a particular way and with or without embellishment or insignificant addition.

Accordingly it is found that the Domain Name is identical or confusingly similar to the FAIRMONT Marks.

No Right or Legitimate Interest

Given the substantial exposure, registration and use of the FAIRMONT Marks and in the absence of any explanation from the Respondent as to why it might have a right or legitimate interest in using the FAIRMONT Marks, it is difficult to imagine how the Respondent might have a right or legitimate interest to use FAIRMONT as part of its domain name. There may be an explanation but given the obvious repute of the FAIRMONT Marks some explanation is required if the Panel is expected to give the Respondent the benefit of the doubt. A failure to respond gives the Panelist little to work with and he is left to draw the only inference he can reasonably under the circumstances.

Prima facie, the Complainant makes out its case on this ground and it is found that the Respondent lacks a right or legitimate interest in the Domain Name.

Domain Name Registered and Being Used in Bad Faith

On the evidence it appears that the international reputation, goodwill and registration rights in the FAIRMONT Marks existed prior to the date on which the Domain Name was registered. On this basis and for the other reasons identified above it is found that the Domain Name was registered in bad faith.

The next question is whether it can be found that the Domain Name is being used in bad faith. There is no evidence that the Respondent has activated a web site under the Domain Name. Nor is there evidence that the Respondent has sought to sell the Domain Name to the Complainant. The question thus becomes whether, under these circumstances, the continued holding of the Domain Name, without commercial use, can reasonably amount to use in bad faith. In Telstra Corporation Limited v Nuclear Marshmallows, Case number D2000-0003 it was held that "The relevant issue is not whether the Respondent is undertaking a positive act in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith".

On the basis of this authority it is open to a Panelist to find that inaction is sufficient to be within the concept of use in bad faith and that this finding can be made if in all the circumstances of the case it is regarded as appropriate. In this regard the Panelist has to weigh up the evidence which has been filed in support of the complaint which is probative in nature. Matched against this the Panelist has to take into account the lack of a response and the fact that the Complainant has made out its case on all other grounds.

On balance, it is felt that Complainant has done sufficient to meet its onus. Accordingly, it is found that this ground is made out.

In view of the above it is found that the Domain Name was registered and is being used in bad faith.

 

7. Decision

The Domain Name should be transferred to the Complainant.

 


 

Clive L Elliott
Sole Panelist

Dated: July 17, 2001