Fairmont Hotel Management L.P. v. Puts

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Fairmont

Hotel Management L.P. v. Puts

Case

No. D2001-0431

1. The Parties

1.1. This Complaint

was filed by Fairmont Hotel Management L.P., a Delaware limited partnership

doing business at 100 Wellington Street West, Suite 1600, T.D. Centre,

P.O. Box 40, Toronto, Ontario M5K 1B7 Canada ("Complainant").

1.2. The Respondent

is Puts, apparently an individual purportedly contactable at POSTBUS 93118

Amsterdam, noordholland 109bc, the Netherlands ("Respondent").

2. The Domain Name

and Registrar

2.1. The domain

names the subject of this Complaint are <fairmonthotels.com> and

<fairmont-resorts.com> (collectively "domain names").

2.2. The registrar

of these domain names is Tucows.com Inc., of Toronto, Ontario, Canada

("Registrar").

3. Procedural History

Issuance of Complaint

3.1. On March

26, 2001, the Complainant by email and by courier submitted to the World

Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center")

a Complaint made pursuant to the Uniform Domain Name Dispute Resolution

Policy ("Uniform Policy"), and under the Rules for Uniform Domain

Name Dispute Resolution Policy ("Uniform Rules"), both of which

were implemented by the Internet Corporation for Assigned Names and Numbers

(ICANN) on October 24, 1999. The copy of the Complaint submitted by email

was received on March 26, 2001, and the copy of the Complaint submitted

by courier was received on March 29, 2001.

Confirmation of Registration

Details

3.2. A Request

for Registrar Verification was dispatched by the WIPO Center to the Registrar

by email on April 2, 2001. By email to the WIPO Center on April 4, 2001,

the Registrar confirmed that it had received a copy of the Complaint from

the Complainant; confirmed that it was the registrar of the domain names

the subject of this Complaint; confirmed that the current registrant of

those domain names is the Respondent, and provided a postal contact address

for the Respondent; informed that the Administrative, Technical and Billing

contacts of the Respondent ("Respondent’s Contacts") is one

Henry Puts, and provided postal, telephone and email details for him;

confirmed that the Uniform Policy applies to the domain names the subject

of this Complaint; and informed that the current status of the domain

names is "on hold".

Notification to Respondent

3.3. On April

5, 2001, having verified that the Complaint satisfied the formal requirements

of the Uniform Policy and the Uniform Rules, and that payment of the filing

fee had been properly made, the WIPO Center issued to the Respondent a

Notification of Complaint and Commencement of Administrative Proceeding,

by courier to the postal address of the Respondent and the Respondent’s

Contacts as provided by the Registrar (this address being the same), and

by email to the email address of the Respondent’s Contacts as provided

by the Registrar as well as to postmaster@fairmonthotels.com and to postmaster@fairmont-resorts.com.

Copies of this Notification of Complaint were sent by email to the Complainant,

the Registrar and ICANN on that date. Records of the WIPO Center show

that the emails to the Respondent’s Contacts and to postmaster@fairmonthotels.com

and postmaster@fairmont-resorts.com were not deliverable, each having

permanent fatal errors in the address. In addition, the hardcopy of the

Notification of Complaint and Commencement of Administrative Proceeding

sent by courier to the postal address of the Respondent and the Respondent’s

Contacts was returned to the WIPO Center as undeliverable.

3.4. Rule 2(a)

of the Uniform Rules requires the WIPO Center "to employ reasonably

available means calculated to achieve actual notice to Respondent";

the Rule does not require that the Respondent actually receive such notice.

Rule 2(a) specifies certain means, which, if adopted, shall discharge

the WIPO Center’s responsibility in this respect. The case file records

provided by the WIPO Center demonstrate that it has adopted those specified

means. Accordingly, this Administrative Panel finds that the WIPO Center

has discharged its responsibility under Rule 2(a) of the Uniform Rules.

Filing of Response

3.5. No Response

was filed by the Respondent by the time specified in the Notification

of Complaint. As at the date of this decision, no communication has been

received from the Respondent. On April 25, 2001, the WIPO Center dispatched

to the Respondent and the Respondent’s Contacts by courier and email a

Notification of Respondent Default.

Constitution of Administrative

Panel

3.6. In accordance

with the request in the Complaint, the WIPO Center proceeded to appoint

a single Panelist, and invited Andrew F. Christie to so act. On May 8, 2001,

the WIPO Center issued to both parties a Notification of Appointment of

Administrative Panel and Projected Decision Date, stating that Dr. Christie

had submitted a Statement of Acceptance and Declaration of Impartiality

and Independence and had been appointed the sole Panelist in this case,

and informing that absent exceptional circumstances a decision would be

provided by this Administrative Panel by May 22, 2001. The case before

this Administrative Panel was conducted in the English language, this

being the language of the registration agreement applicable to the domain

name in issue.

Compliance with the

formalities of the Uniform Policy and the Uniform Rules

3.7. Having reviewed

the Case File in this matter, this Administrative Panel concurs with the

assessment by the WIPO Center that the Complaint complies with the formal

requirements of the Uniform Policy and Uniform Rules.

4. Factual Background

to this Complaint

Complainant’s Activities

and Trademarks

4.1. The Complainant

asserted, and generally provided evidence in support of, the following

facts. Unless otherwise specified, this Administrative Panel finds these

facts established. The Complainant 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 hotels and 18,150 rooms throughout

the United States, Canada, Bermuda, Barbados and Mexico operated under

the trade name FAIRMONT HOTELS & RESORTS. 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.

4.2. The Complainant

has used and owned the trademark FAIRMONT and variations thereof (the

"FAIRMONT marks") for over 90 years. The Complainant has numerous

registered, valid and subsisting registrations for the FAIRMONT marks

in the United States Patent and Trademark Office, and in Canada. The Complainant

has also obtained several Community Trademark (CTM) registrations for

its FAIRMONT marks, giving it rights throughout Europe. Copies of Complainant’s

registration certificates and/or printouts from the database providing

full particulars of the Complainant’s registrations are annexed as Exhibit

E to the Complaint. Most of these registrations are in international class

42, for hotel services.

4.3. There can

be little doubt that the FAIRMONT marks of the Complainant are widely

known and that their fame existed long before the registration of the

domain names by the Respondent. Furthermore, 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

Traveler’s Readers Choice Poll, with eighteen of its hotels and resorts

appearing in the magazine’s coveted 2001, Gold List. The Gold List, known

as the largest private poll of consumer attitudes in the United States,

are based on the opinions of over 25,000 readers of the Condé

Nast Traveler magazine. Fourteen Fairmont properties were named on

the 2000 Travel & Leisure’s "World’s Best" readers

poll, while Gourmet Magazine’s "Rooms At the Top" list

included fifteen. Copies of all articles cited are included as Exhibit

F to the Complaint. The 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 Fairmont’s Banff Springs’ Solace Spa second for facilities

and services in their Annual Readers’ Travel Awards, as shown by Exhibit

F to the Complaint.

4.4. The Complainant

has spent hundreds of millions of dollars in 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. In all advertisements, the FAIRMONT marks

are prominently shown.

4.5. The Complainant already

has a strong presence on the Internet. In June of 1999, Fairmont Hotels &

Resorts launched its website, <fairmont.com>. On the Complainant’s authorized

website, 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 details of each hotel's amenities, services and facilities,

as well as more than 200 photos of Fairmont properties including exterior shots,

guestrooms, dining facilities and meeting rooms, are also provided. There is

a section of the website called "Our Concierge Suggests," that is updated daily,

which provides a virtual concierge and offers web surfers local information

typically provided by Fairmont's real concierges, including upcoming events,

favorite local restaurants, area attractions and important travel tips. Other

sections that are continuously updated include Dining & Entertainment and

Packages & Promotions. Printouts from the Complainant’s website are annexed

as Exhibit G to the Complaint.

Respondent’s Activities

4.6. The Complainant

asserted, and generally provided evidence in support of, the following

facts. Unless otherwise specified, this Administrative Panel finds these

facts established. On December 1, 2000, the Respondent registered the

domain names <fairmonthotels.com> and <fairmont-resorts.com>.

On January 1, 2001, H. Puts sent to a representative of the Complainant

an email stating as follows:

"Att. Board

of Directors // Sales-department now on auction: <fairmonthotels.com>

<fairmonthotels.com> 30000 visitors per year, without website

promotion. One and only one possibility to rent, lease or buy this

domain. We can also make a redirection or url-forwarding to your "FAIRMONT"

ulr/website. If you are interested please contact within 7 days: H.

Puts h.j.a.puts@chello.nl"

4.7. On March

23, 2001, the Complainant visited the websites at <fairmonthotels.com>

and <fairmont-resorts.com>, and found at these sites essentially

identical webpages stating "This domain is for sale or rent - Please

contact: h.j.a.puts@chello.nl". A copy of a printout of these pages

are Exhibit B to the Complaint. The email address h.j.a.puts@chello.nl

is the email address of the Respondent’s Contacts, as provided to the

WIPO Center by the Registrar.

5. Parties’ Contentions

The Complaint

5.1. The Complainant

contends that each of the three elements specified in paragraph 4(a) of

the Uniform Policy are applicable to the domain name the subject of this

dispute, as follows.

5.2. In relation

to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant

contends that the domain names <fairmonthotels.com> and <fairmont-resorts.com>

incorporate in their entirety the Complainant’s FAIRMONT mark, making

the domain names confusingly similar to the Complainant’s FAIRMONT marks.

Consumers, almost all of whom have been exposed to the FAIRMONT marks,

are likely to believe (wrongly) that these domain names are related

to or associated with the Complainant.

5.3. In relation

to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint

contends that the Complainant has never given the Respondent any license,

permission or authorization by which the Respondent could own or use the

domain names which incorporate in whole the Complainant’s FAIRMONT mark.

The Respondent is not using the domain names in connection with a bona

fide offering of goods or services, nor is the Respondent making legitimate

commercial, non-commercial or fair use of the domain names; rather, the

Respondent has offered to sell the domain names. The fact that the Respondent

is willing to sell the domain names shows that it had no intent to use

the names for any legitimate purpose, and can therefore demonstrate no

legitimate interest or rights in the domain names. Where, as here, the

FAIRMONT mark is venerable and distinctive, it is not reasonably possible

for the Respondent to demonstrate any legitimate interest in domain names

consisting in whole or in part of the FAIRMONT mark, particularly when

coupled with the words "hotels" and "resorts". Although

the domain names have been registered since December 1, 2000,

the Respondent has no functioning web site attached to either of the domain

names other than a listing that "This Domain Name is for Sale or

Rent." This failure to use the domain names further supports a finding

of no legitimate interest.

5.4. In relation

to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant

contends as follows. First, the fact that the Respondent has taken the

Complainant’s very trademark FAIRMONT as the dominant part of the domain

names <fairmonthotels.com> and <fairmont-resorts.com> and

coupled it with words describing the Complainant’s hotels and resorts

is compelling evidence of bad faith. Second, the Respondent has failed

to use the domain names to sell or provide any goods or services. Third,

offering to sell a domain name is also evidence of bad faith, and the

Respondent has unquestionably offered both <fairmonthotels.com>

and <fairmont-resorts.com> for sale. Fourth, the domain names incorporate

the Complainant's registered FAIRMONT mark and are confusingly similar

to the Complainant's FAIRMONT and FAIRMONT HOTELS trademarks. Because

the ultimate effect of any use of <fairmonthotels.com> and <fairmont-resorts.com>

will be to cause confusion with Fairmont, the use and registration of

the domain names must be considered to be in bad faith.

The Response

5.5. The Respondent

did not file a Response.

6. Discussion and

Findings

Domain Names Identical

or Confusingly Similar to Complainant’s Mark

6.1. In relation

to the domain name <fairmonthotels.com>, the relevant part of this

domain name is "fairmonthotels". In relation to the domain name

<fairmont-resorts.com>, the relevant part of this domain name is

"fairmont-resorts". Both domain names fully incorporate the

Complainant’s trademark FAIRMONT. The added words "hotel" and

"-resorts", respectively, do not serve to make the inclusion

of the Complainant’s trademark in the domain names non-confusing. Rather,

given that the added words describe the business services for which the

Complainant’s trademark is registered and used by the Complaint, the additions

merely compound the confusion created by the incorporation of the Complainant’s

trademark. Accordingly, this Administrative Panel finds that both the

domain names the subject of this Complaint are confusingly similar to

a trademark in which the Complainant has rights.

Respondent’s Rights

or Legitimate Interests in the Domain Names

6.2. The Complainant

has never given the Respondent any license, permission or authorization

to use the Complainant’s FAIRMONT mark. When this fact is combined with

the facts (i) the Respondent is not using the domain names in connection

with a bona fide offering of goods or services, (ii) the Respondent is

not making a legitimate commercial, non-commercial or fair use of the

domain names, and (iii) the Respondent has not provided evidence of or

even asserted the existence of any other circumstance that would give

rise to a right to or legitimate interest in the domain names, there are

sufficient grounds to persuade this Administrative Panel that the Respondent

has no rights or legitimate interests in either of the domain names the

subject of this Complaint.

Domain Names Registered

and Used in Bad Faith

6.3. The Complainant’s

registered trademark is long-established and widely known and so, in the

absence of evidence or even an assertion by the Respondent to the contrary,

knowledge of the Complainant’s rights in the trademark can be imputed

to the Respondent at the time of registration of the domain names. When

this imputed knowledge is combined with the facts (i) the Respondent has

registered domain names that incorporate this trademark together with

words that are descriptive of the Complainant’s activities, (ii) the Respondent

has no right or legitimate interest in the domain names, (iii) the Respondent

provided no evidence or even an assertion of a good faith use which it

could make of the domain names, and (iv) the Respondent’s only use of

the domain names has been to offer to sell them (including, in respect

of <fairmonthotels.com>, an offer to sell it to the Complainant),

there are sufficient grounds to persuade this Administrative Panel that

the domain names were registered and are being used by the Respondent

in bad faith.

7. Decision

7.1. This Administrative

Panel decides that the Complainant has proven each of the three elements

in paragraph 4(a) of the Uniform Policy in relation to the domain names

the subject of this Complaint.

7.2. Pursuant

to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform

Rules, and in accordance with the request of the Complainant contained

in paragraph 36 of the Complaint, this Administrative Panel requires that

the Registrar, Tucows.com Inc., transfer to the Complainant, Fairmont

Hotel Management L.P., the domain names <fairmonthotels.com> and

<fairmont-resorts.com>.

Andrew F.

Christie

Sole Panelist

Dated: May

17, 2001

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