WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Interbase, Inc.
Case No. D2002-1045
1. The Parties
The Complainant is Six Continents Hotels, Inc., Atlanta, Georgia, United States of America. Complainant is represented by Needle & Rosenberg, P.C. of the United States of America.
The Respondent is Interbase, Inc., Clinton, Missisippi, United States of America.
2. The Domain Name and Registrar
The disputed domain name <royalpalmcrowneplazaresort.com> (hereinafter "Domain Name") is registered with Network Solutions, Inc., 487 E. Middlefield Road, Mountain View, California 94043.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by electronic mail on November 12, 2002, and by hardcopy on November 14, 2002. At that time Complainant named RIS Media Group, Inc., P.O. Box 2847, Cleveland, Ohio USA ("RIS") as the Respondent and identified as the Registrar Dotster, Inc., Vancouver, Washington, USA ("Dotster"). On November 14, 2002, the Center transmitted by electronic mail to Dotster a Request for Registrar Verification in connection with the Domain Name. On November 15, 2002, Dotster transmitted by electronic mail to the Center its verification response confirming that RIS was listed as the registrant and providing the contact details for the administrative, billing, and technical contact. That same day the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Also on November 15, 2002, the Center transmitted by electronic mail to RIS a Notification of Complaint and Commencement of Administrative Proceeding that, among other things, set a deadline of December 5, 2002, by which Respondent could file a Response to the Complaint. RIS never submitted a Response.
On December 3, 2002, the Complainant notified the Center that the Domain Name had been transferred to Respondent and that as of December 2, 2002, the Domain Name had been registered with Network Solutions, Inc. That same day the Center wrote to Dotster reminding it that in accordance with the Policy, Dotster was required to maintain the status quo for the Domain Name, including preventing its transfer while there were proceedings against it. The case file evidences multiple attempts by the Center throughout December 2002, to effect a transfer of the Domain Name back to Dotster so the proceedings could continue. Notwithstanding those efforts, the Domain Name was never transferred back, so on December 31, 2002, Complainant filed a Motion to Amend Complaint and an Amended Complaint seeking to identify the current Registrant and Registrar Ė Interbase, Inc. and Network Solutions, Inc., respectively. Complainant also requested the Center to instruct Network Solutions, Inc. to "lock" the Domain Name to prevent further transfers during the proceedings.
By correspondence dated January 7, 2003, the Center permitted Complainant to amend its Complaint. On that same date, the Center transmitted by electronic mail to Registrar, an Amended Request for Registrar verification in connection with the Domain Name. On January 9, 2002, Registrar transmitted its verification response by electronic mail to the Center and confirmed that the Domain Name was "locked." On January 10, 2003, Complainant forwarded by electronic mail (and followed up with hard copy) the Amended Complaint to Respondent and Registrar. On January 14, 2003, the Center verified that the Amended Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.
On January 15, 2003, the Center in accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, the commencement of the proceedings on January 15, 2003, and the requirements for filing an acceptable Response. In accordance with paragraph 5(a) of the Rules, the due date for a Response was February 4, 2003. On that same day, the Center received an electronic mail from Samantha Stapleton writing on Respondentís behalf and generally denying that Respondent is involved in the activities described in the Amended Complaint. The Center acknowledged receiving Ms. Stapletonís correspondence, however on February 7, 2003, it notified Respondent it was in default for failing to comply with the deadline for filing a response set forth in its January 15, 2003, letter.
The Center appointed Harrie Samaras as the sole panelist in this matter on March 25, 2003. 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.
Lastly, on December 27, 2002, Complainant submitted by electronic mail a Request for Leave to File Supplemental Evidence (including exhibits) in support of its Complaint. On December 30, 2002, the Center sent Complainant an Acknowledgement of Receipt of Supplemental Filing in which it explained that it was in the Panelís discretion whether to admit and consider the Supplemental Filing in rendering its decision. The Panel admits Complainantís supplemental evidence and has referred to it herein, but notes that the record previously provided by Complainant was sufficient to support the Panelís ultimate decision.
4. Factual Background
The following facts are uncontested.
Complainant is the owner and franchisor of numerous global hotel brands, including CROWNE PLAZA, INTERCONTINENTAL, and HOLIDAY INN. It owns United States Trademark Registration No. 1,297,211 (now incontestable under 15 U.S.C. ß 1165) for the mark CROWNE PLAZA, for "hotel services-namely, providing lodging and restaurant services in hotels." Complainant first used the CROWNE PLAZA mark as early as June 1983, and it registered the mark on September 18, 1984.
Complainant currently operates, either directly or through franchisees, over 190 CROWNE PLAZA ® brand hotels and resorts around the world, with a total of nearly fifty-six thousand (56,000) rooms. On or about May 14, 2002, Complainant, through a franchisee, opened a resort in Miami Beach, Florida under the name "Royal Palm Crowne Plaza Resort."
5. Partiesí Contentions
The Domain Name is identical to Complainantís ROYAL PALM CROWNE PLAZA RESORT hotel name and service mark.
Complainant contends Respondent has no rights or legitimate interests in the Domain Name, nor can it establish any, because Respondent: (1) has not used and cannot demonstrate preparations to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services; (2) has not been and is not commonly known by the Domain Name; and (3) is not making any use, let alone, a legitimate noncommercial or fair use of the Domain Name.
Complainant also contends that the Domain Name was registered and is being used in bad faith because at the time Respondent registered the Domain Name, Respondent knew: (1) Complainant was the owner of the famous CROWNE PLAZA® service marks; (2) Complainant owned and operated a resort hotel under the name ROYAL PALM CROWNE PLAZA RESORT; (3) it had no legitimate rights in the Domain Name; and (4) it was registering or acquiring the Domain Name with the intent of selling it to Complainant for a sum far exceeding its costs in registering the domain name, and that such bad faith registration and offer to sell the Domain Name would infringe Complainantís legal rights.
What follows is the tortured ownership history of the Domain Name and evidence of Respondentís bad faith, including its attempts to engage in "cyberflight" in an effort to derail these proceedings.
On May 18, 2002, Complainant received an unsolicited offer to sell the Domain Name from Thomas Ray III. At that time, the applicable WHOIS records indicated that the Domain Name was registered on May 16, 2002, (two days after Complainant opened its resort) by an entity purportedly named Host Master. Thomas Rayís offer acknowledged that Complainant had recently opened a major resort in Miami Beach under the name "Royal Palm Crowne Plaza Resort," and stated that tourists looking for Complainantís resort online to book reservations "will not be able to find it where they assume it will be, RoyalPalmCrownPlazaResort.com." He also remarked that if Complainant owned the domain name, "[t]his would give everyone added assurance that they are indeed contacting the correct hotel when needing to contact Royal Palm Crown Plaza Resort in Miami Beach." Complainant responded by, among other things, demanding that the Domain Name be assigned to Complainant.
When Thomas Ray failed to respond to Complainantís letter, its outside counsel followed up with another demand letter. Verio, the register of the Domain Name released the Domain Name, but that occurred before Complainant could effectuate the transfer. After being released, the Domain Name was registered by LIC in Abilene, Texas, U.S. According to the WHOIS database, LIC registered the Domain Name on July 21, 2002. On October 2, 2002, Jamie Weathersby (LICís Domain Administrator) sent an e-mail to Complainant offering it the Domain Name; the price turned out to be $3 million. In an e-mail the next day, Jamie Weathersby remarked: "Without RoyalPalmCrownePlazaResort.com, your Miami Beach property cannot be found conveniently online, and will not be able to offer convenient online bookings to consumers. Without RoyalPalmCrownePlazaResort.com, the property will also not be able to offer convenient contact email addresses ending in RoyalPalmCrownePlazaResort.com to its consumers. As a result, this property is unable to capitalize on Internet revenue, and does not adequately accommodate the general public."
On October 7 and 11, 2002, Complainantís counsel sent demand letters to Jamie Weathersby requesting transfer of the Domain Name to Complainant and, in the latter one, including documents to transfer the Domain Name. In a communication received by Complainant on October 17, 2002, Jamie Weathersby, wrote: "This is LICís final attempt to supply your Miami Beach, Florida resort with the online web address and email extension RoyalPalmCrownePlazaResort.Com. Would your company like to make a deal?"
On further investigation, Complainant learned from the WHOIS listing that RIS was identified as the registrant of the Domain Name, not LIC. In response to Jamie Weathersbyís October 17, 2002 correspondence, Complainant notified Mr. Weathersby that it appeared he no longer owned the Domain Name. Only days later, Complainant received an unsolicited e-mail from Chuck Sandifer (the technical and administrative contact for RIS) (e-mail address firstname.lastname@example.org), indicating that the Domain Name was available, and inquiring whether Complainant would like to "discuss a transfer opportunity." His asking price for the Domain Name was $3.5 million. On November 11, 2002, Complainant received another communication from Chuck Sandifer, providing it with a 24-hour deadline to accept his offer or else after 48 hours the Domain Name would not be available to Complainant.
Complainant filed its Complaint against RIS on November 12, 2002. On or about December 2, 2002, the Domain Name was transferred to the current Respondent and Registrar. After the transfer, on December 23 and 30, 2002, Complainant continued to receive communications from Chuck Sandifer apprising Complainant that it had made "a huge mistake passing up" the opportunity to purchase the Domain Name because not having it would "continue to inconvenience thousands upon thousands of people daily." He also remarked that Complainants efforts with this proceeding "will continue to be unsuccessful" because "WIPO does not have the power to take RoyalPalmCrownePlazaResort.Com and re-issue it to Six Continents in this matter."
Complainant contends that Respondent is affiliated with RIS because since the Domain Name was transferred to Respondent, Complainant has continued to receive communications from Chuck Sandifer. Accordingly, Complainant contends that while the official name of the Domain Name registrant has changed, Chuck Sandifer remains the real party in interest for this dispute, and he continues to control the Domain Name.
Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainantís contentions. The Panel, in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom, as it considers appropriate.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to: "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules and any rules and principles of law that it deems applicable." Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving each of the three following elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
It is uncontested that Complainant has prior rights in the marks CROWNE PLAZA® and ROYAL PALM CROWNE PLAZA RESORT, and that the Domain Name <royalpalmcrowneplazaresort.com> is identical to Complainantís ROYAL PALM CROWNE PLAZA RESORT hotel name and service mark. The only discrepancy between the two, i.e., the addition of the generic top-level domain (gTLD) ".com" to the contested Domain Name is without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). See also Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000) (citing Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2000); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000). Accordingly, the Panel finds that the disputed Domain Name is identical to Complainantís ROYAL PALM CROWNE PLAZA RESORT hotel name and service mark.
Indeed Complainantís supplemental evidence of actual consumer confusion further proves that the Domain Name is identical to Complainantís mark. Consumers attempting to access what it thought was Complainantís Royal Palm Crowne Plaza Resortís web page by typing in <royalpalmcrowneplazaresort.com> encountered an inactive site that led them out of frustration to contact Complainant because they mistakenly believed that Complainant owns the Domain Name.
The Panel therefore holds that the Complainant has established element (i) above.
B. Rights or Legitimate Interests
According to Paragraph 4 (a) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Complainantís uncontested facts establish just that. Respondent: (1) has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services; (2) has not been and is not commonly known by the Domain Name; and (3) is not making a legitimate noncommercial or fair use of the Domain name and the Domain Name is inactive. In fact it appears from the evidence of record that Respondentís prime goal in obtaining the Domain Name was simply to sell it to Complainant for a large sum of money.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to rebut Complainantís evidence. Because Respondent has failed to reply to the Complaint or at least explain any legitimate rights or interests it might have had in the Domain Name, the Panel finds that the Complainantís facts must be taken as proven.
Accordingly, the Panel holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that "[f]or 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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Complainant has provided evidence that proves Respondentís activities satisfy paragraph (i) above.
Only two days after Complainant opened its Royal Palm Crowne Plaza Resort in Miami, Florida, Complainant received a series of unsolicited offers to sell the Domain Name. Relevant here are the offers from Chuck Sandifer who had been listed as both the Administrative and Technical contacts for RIS when the Domain Name was held by Dotster. It appears that he was the front for RIS and now he is fronting for Respondent. Indeed, Complainant has raised in its Amended Complaint the likelihood of a relationship between RIS (the previous registrant) and Respondent, and Respondent has not challenged this assertion.
When Complainant first heard from Chuck Sandifer it was to "discuss a transfer opportunity." At that time, he was selling the Domain Name for $3.5 million. The next communication from Chuck Sandifer provided Complainant with a 24-hour deadline to accept his offer or else after 48 hours the Domain Name would not be available to Complainant. After the Domain Name was transferred to Respondent, Chuck Sandifer continued to write Complainant as follows:
Would Six Continents Hotels be interested in owning the web address/email extension RoyalPalmCrownePlazaResort.Com for its Property? Our offer is still on the table unless you would like to continue your efforts through WIPO.
About a week later, Chuck Sandifer wrote Complainant once again stating:
RIS Media Group regrets that Six Continents has decided it does not want to do business with our company. We have decided to no longer contact Six Continents in regard to transferring ownership of RoyalPalmCrownePlazaResort.Com to you. According to the online traffic statistics for RoyalPalmCrownePlazaResort.Com, your company has made a huge mistake passing up this opportunity and will continue to inconvenience thousands upon thousands of people daily, as the record shows.
PLEASE NOTE: Your efforts with the WIPO have been unsuccessful and will continue to be unsuccessful. The WIPO does not have the power to take RoyalPalmCrownePlazaResort.Com and re-issue it to Six Continents in this matter. Six Continents will not be able to assume ownership of RoyalPalmCrownePlazaResort.Com through the WIPO.
In the future, if Six Continents does decide it would like to own RoyalPalmCrownePlazaResort.Com, Six Continents will have to notify us. Our previous terms forwarded to your company indicating $3.5 million to transfer the domain to you are no longer valid. Our new terms for a transfer in the future are $5.5 million. Thank you.
This uncontroverted evidence clearly demonstrates that Respondent acquired the Domain Name for the primary, indeed sole, purpose of attempting to transfer it to Complainant for use with its newly opened Royal Palm Crowne Plaza Resort. Chuck Sandiferís offers of $3.5 million and $5.5 million were hardly related to the consideration that would recompense Respondent for its documented out-of-pocket costs.
The consumer complaints documented in Complainantís supplemental submission are further evidence of Respondentís bad faith. That is, those complaints are the intended result of Respondentís threat to Complainant: "[Y]our company has made a huge mistake passing up this opportunity and will continue to inconvenience thousands upon thousands of people daily, as the record shows." Indeed, the record does show.
As mentioned above, this Panel finds it likely that Chuck Sandifer has been acting as a front for both RIS and now for the Respondent. To some extent, Respondent has deceivingly sought to conceal these links as well as its proper identity. Even if the Respondent had no connection to the former registrant, which is highly unlikely, there is sufficient evidence supporting the fact that Respondentís acquisition and use of the Domain Name has been in bad faith. In the absence of contrary evidence the Panel finds Respondent knew of or should have known of Complainantís trademark and services at the time it registered the Domain Name <royalpalmcrowneplazaresort.com>, given Complainantís trademark registrations and its worldwide reputation. See e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (The Panel found that: "<veuvecliquot.org> is so obviously connected with such a well-known product [Veuve Clicquot champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith."); see also, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000). In addition, because Respondent has no rights or legitimate interests in the Domain Name (as established in paragraph 6(b) above), Respondent could not possibly make any legitimate actual or contemplated active use of the Domain Name other than one that is in bad faith.
The Panelist holds that the Complainant has established element (iii) above.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <royalpalmcrowneplazaresort.com> be transferred to the Complainant.
Dated: April 9, 2003