Fairmont Hotel Management LP; Fairmont Hotels & Resorts (US) Inc. v. 613181 BC Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd

Case No. D2001-1050

1. The Parties

The Complainants: Fairmont Hotel Management, L.P. and its parent company, Fairmont Hotels & Resorts (U.S.) Inc., both of 100 Wellington Street West, Suite 1600, T.D. Centre, P.O. Box 40, Toronto, Ontario M5K 1B7, Canada.

The Respondent: 613181 BC Ltd, 1853 Almhurst Place, Victoria, British Columbia V8N 1R1, Canada.

2. The Domain Name and Registrar

The domain name in issue is <fairmonthotelsandresorts.com> (hereafter "the domain name").

The domain name was registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide, 2020 Stuart St, Berkeley, CA 94703, United States of America.

The domain name was registered on April 2, 2000.

3. Procedural History

(1) The Complaint in Case D2001-1050 was filed on August 21, 2001, in email form, and a hardcopy was received by the Center on August 23, 2001.

(2) At the agreement of the parties the proceeding was suspended on September 13, 2001.

(3) At the request of the Complainant, the proceeding was re-instituted on October 10, 2001.

(4) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Respondent was properly notified of the Complaint in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was not filed;

- The Respondent was appropriately notified of default; and

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(5) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(6) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(7) The language of the proceedings is English.

4. Factual Background

A. The Complainant

The Complainants in this administrative proceeding are Fairmont Hotel Management, L.P. and its parent company, Fairmont Hotels & Resorts (U.S.) Inc. (collectively "Fairmont"). Fairmont began providing service in the hospitality industry in 1907, and is now the largest luxury hotel management company in North America. It has hotels and rooms throughout the United States, Canada, Bermuda, Barbados and Mexico operated under the name FAIRMONT HOTELS & RESORTS.

Fairmont Hotel Management, L.P is the proprietor of US federally registered, incontestable, valid and subsisting registrations for the FAIRMONT mark in the United States Patent and Trademark Office, and in Canada. Fairmont has also obtained several Community Trade Mark (CTM) registrations for its FAIRMONT marks. These registrations include:

MARK

REG. NO.

DATE OF REGISTRATION

GOODS/INT’L CLASS

FAIRMONT (Stylized)

982, 668 United States

April 23, 1974

Hotel Services, 100

(Int’l Class 42)

FAIRMONT (Stylized)

982, 669 United States

April 23, 1974

Hotel Services, 100

(Int’l Class 42).

FAIRMONT

983,000 United States

April 30, 1974

Hotel Services, in

Class 100 (Int’l Class 42).

FAIRMONT HOTELS PRESIDENT’S

CLUB

1,656,488 United

States

September 10, 1991

Specialized Hotel

Services for Frequent Customers, (Int’l in Class 42) (C.L. 100).

THE FAIRMONT

AMERICA’S GRAND HOTELS,

SINCE 1907 (Stylized)

2,048,566 United

States

April 1, 1997

Hotel and Associated

Restaurant Services (Int’l in Class 42)

FAIRMONT

1,005,123 Community

Trademark

May 24, 2000

Hotel Services, in

International (Int’l Classes 35 and 42).

FAIRMONT

(Stylized)

1,005,156 Community

Trademark

May 24, 2000

Hotel Services, in

International (Int’l Classes 35 and 42).

THE FAIRMONT HOTELS

(Stylized)

1,005,172 Community

Trademark

May 24, 2000

Hotel Services, in

International (Int’l Classes 35 and 42).

FAIRMONT

TMA529,347 Canada

June 16, 2000

Hotel Services associated

with a chain of luxury hotels (Int’l Class 42).

FAIRMONT DESIGN

TMA529,346 Canada

June 16, 2000

Hotel Services associated

with a chain of luxury hotels (Int’l Class 42).

FAIRMONT HOTELS &

DESIGN

TMA529345 Canada

June 16, 2000

Hotel Services associated

with a chain of luxury hotels (Int’l Class 42).

(Hereafter these marks will be termed the "FAIRMONT marks").

On July 3, 2001, Fairmont Hotel Management, L.P., the owner of the aforementioned

registrations, assigned all rights, titles and interests in and to the Fairmont

Marks to its direct parent company, Fairmont Hotels & Resorts (U.S.) Inc.

In addition to using FAIRMONT HOTELS & RESORTS as its trade name, Fairmont

has made extensive use of the FAIRMONT HOTELS & RESORTS name in almost all

of its promotional and advertising materials.

B. The Respondent

According to the Whois database of the concerned registrar, the Respondent

in this administrative proceeding is 613181 BC Ltd, of the address given above.

No Response was filed and so no further information is known about the Respondent.

C. The Domain Name

The <fairmonthotelsandresorts.com> domain name does not resolve to any

site.

5. Parties’ Contentions

A. The Complainant’s Assertions

The Complainant submits that the Respondent's domain name is identical or confusingly

similar to the Complainant’s mark for the following reasons:

Respondent's domain name <fairmonthotelsandresorts.com> incorporates

in its entirety Fairmont's FAIRMONT, FAIRMONT HOTELS, and FAIRMONT HOTELS &

RESORTS marks, making the Domain Name confusingly similar to the FAIRMONT marks.

See Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO

Case No. D2000-0074. Consumers, almost all of whom have been exposed to

the FAIRMONT marks, are likely to believe that the domain name <fairmonthotelsandresorts.com>

is related to or associated with Fairmont. Indeed, it is because of the

fame of the FAIRMONT marks that Respondent likely registered the Domain Name.

The Complainant submits that the Respondent has no legitimate interest or rights

in the domain names for the following reasons:

As of the date of registration, Fairmont had been using its FAIRMONT mark for

over 90 years, had been operating under the trade name FAIRMONT HOTELS &

RESORTS, and had obtained federal trademark registrations all over the world

for its FAIRMONT marks. Based on the foregoing, there can be no conceivable,

bona fide, or legitimate use of <fairmonthotelsandresorts.com> by Respondent.

Guerlain S.A. v. Peikang, WIPO Case No.

D2000-0055; Chanel, Inc. v. BuyBeauty.com, WIPO

Case No. D2000-1126.

Fairmont has never given Respondent any license, permission, or authorization

by which Respondent could own or use <fairmonthotelsandresorts.com>, which

incorporates in whole the FAIRMONT, FAIRMONT HOTELS, and the FAIRMONT HOTELS

& RESORTS marks. See e.g., Serta, Inc. v. Maximum Investment Corporation,

WIPO Case No. D2000-0123; Guerlain

S.A. v. H I Investments, WIPO Case No.

D2000-0494; Chanel, Inc. v. BuyBeauty.com, WIPO

Case No. D2000-1126.

Respondent is not using the Domain Name in connection with a bona fide offering

of goods or services, nor is Respondent making legitimate commercial, noncommercial

or fair use of the Domain Name. See Deutsche Bank A.G. v. Diego-Arturo Bruckner,

WIPO Case No. D2000-0277.

Where, as here, the FAIRMONT mark is venerable and distinctive, any claim that

Respondent has any legitimate interest in the Domain Name is pretextual, given

the fame of the FAIRMONT mark, particularly when coupled with the words "hotels"

and "resorts". See Ingersoll-Rand Co. v. Frank Gully, WIPO

Case No. D2000-0021. See generally Paccar, Inc. v. Telescan Technologies,

L.L.C., 115 F. Supp. 2d 772 (use of a party’s trademark in a domain name

is unlawful since it sends a message to Internet users that the website is associated

with or sponsored by the company owning the trademark).

Although the Domain Name has been registered since April 2, 2000, Respondent

has no functioning web site attached the name. This failure to use the Domain

Name further supports a finding of no legitimate interest. See World Wrestling

Federation v. Bosman, WIPO Case No. D99-0001;

Chanel, Inc. v. BuyBeauty.com, WIPO

Case No. D2000-1126.

The Complainant submits that the Respondent registered the domain name and

is using it in bad faith for the following reasons:

The fact that Respondent has taken the FAIRMONT trademark as its domain name,

<fairmonthotelsandresorts.com>, and coupled it with words describing Fairmont’s

hotels and resorts is compelling evidence of bad faith. See Fairmont Hotel

Management L.P. v. Puts, WIPO

Case No. D2001-0431. Further, Fairmont itself uses the composite phrase

FAIRMONT HOTELS & RESORTS as a trademark and tradename.

Respondent has failed to use the Domain Name to sell or provide any goods or

services. This too is evidence of bad faith. See Chanel, Inc. v. BuyBeauty.com,

WIPO Case No. D2000-1126.

The fact that the <fairmonthotelsandresorts.com> domain name incorporates

the registered FAIRMONT mark, and is confusingly similar to the FAIRMONT, FAIRMONT

HOTELS, and FAIRMONT HOTELS & RESORTS marks, is also evidence of bad faith.

Because the ultimate effect of any use of <fairmonthotelsandresorts.com>

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

Name must be considered to be in bad faith. See Embratel v. McCarthy,

WIPO Case No. D2000-0164; Forte (UK)

Ltd. v. Ceschel, WIPO Case No. D2000-0283.

Respondent clearly knew of the fame of the FAIRMONT mark when it registered

<fairmonthotelsandresorts.com>. John Christopher Middleton, the director

of 613181 BC Ltd., is also listed as the corporate general manager of Traveller’s

Inn Hotels and Resorts, which operates eight hotels in the Victoria area, and

whose center is located at 1961 Douglas Street, Victoria, BC V8T 4K7, Canada.

When you go to the Traveller’s Inn website at www.travellersinn.com,

the text on the President’s Message page reads: "The company’s objective

is to become one of the largest hotel chains in Canada and the U.S… In fact,

Traveller’s Inn Hotels and Resorts in the fastest growing chain of quality,

affordable hotels in British Columbia." Upon information and belief, Respondent

is the manager of a Canadian hotel operation, and is presumably knowledgeable

about the hotel industry. The registration of the FAIRMONT marks in Canada,

along with Fairmont’s strong presence in the Canadian hotel industry, is further

support of Respondent’s knowledge of the fame of the FAIRMONT marks. Given this

evidence, the fact that Respondent proceeded with the registration of a domain

name that incorporates the FAIRMONT marks in their entirety supports a finding

of registration and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas,

WIPO Case No. D2000-0140; Fairmont

Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.

613181 BC Ltd. owns at least five other domain names that trade on famous hotel

names, including the domain names <econolodgehotels.com>, <holidayinnhotelsandresorts.com>,

<holidayinnresorts.com>, <sheratonhotelsandresorts.com>, and <travelodgehotels.com>.

As shown by printouts from the U.S. Patent and Trademark Office’s website, Respondent

does not own the marks ECONO LODGE, HOLIDAY INN, SHERATON or TRAVEL LODGE. Respondent’s

ownership of domain names that are identical to famous hotels owned and commercially

used by third parties prevents those trademark owners from reflecting their

marks in domain names. This pattern of warehousing many domain names based upon

marks of others is further evidence of bad faith. See e.g., Nabisco Brands

Co. v. The Patron Group, Inc., WIPO Case

No. D2000-0032.

The FAIRMONT, FAIRMONT HOTELS, and FAIRMONT HOTELS & RESORTS marks—and

by extension <fairmonthotelsandresorts.com>— are so obviously connected

with Fairmont that the use of this Domain Name by someone who has no connection

to Fairmont or its goods or services suggests "opportunistic bad faith".

Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO

Case No. D2000-0163.

Accordingly, the Complainant requests that the Panel order that the domain

name be transferred to the Complainant.

B. The Respondent’s Assertions

The Respondent has not filed a Response.

6. Discussion and Findings

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

a) The Complainant has rights in a trade or service mark, with which Respondent’s

domain name is identical or confusingly similar (paragraph 4.a.(i)); and

b) The Respondent has no rights or legitimate interests in respect of the domain

name (paragraph 4.a.(ii)); and

c) The Respondent registered and is using the domain name in bad faith (paragraph

4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondent’s

domain name is identical or confusingly similar

There are two requirements that a Complainant must establish under this paragraph;

that it has rights in a trade or service mark, and that the domain name is identical

or confusingly similar to the marks.

The Complainant has provided the registration documents for its FAIRMONT marks,

within the USA, Canada and the EU. I conclude therefore that the Complainant

has satisfied the first requirement of paragraph 4.a.(i).

As to the second requirement, the domain name is clearly confusingly similar

to the FAIRMONT marks. Given that the name of the hotel chain and the FAIRMONT

marks are combined with the services that the Complainant provides, there can

be little doubt that consumers would be confused upon finding any website of

the Respondent at the domain name. I conclude that the second element of paragraph 4.a.(i)

is made out.

I conclude therefore that the Complainant has satisfied the requirements of

paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain

name

The Complainant asserts that the Respondent has no rights or legitimate interest

in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes

a number of specific arguments on this point, as provided above in section 5.

Although no Response was filed, I consider it necessary to analyze whether

any of the defenses provided in paragraph 4.c. might apply. Paragraph 4.c. of

the UDRP provides the following examples to the Respondent:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue.

There is no evidence of any of these circumstances in this case. And given

the distinctive concatenation of the Complainant’s marks and tradename, this

is unsurprising. As a result I conclude that the Respondent has no rights or

legitimate interest in the domain name. I conclude that the Complainant has

satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith

The final issue is that of bad faith registration and use by the Respondent.

For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive

requirements that the Respondent registered the domain name in bad faith and

continues to use it in bad faith.

This is one of those cases where the Respondent has done nothing other than

register the name. The issue then is whether passive use constitutes bad faith

registration and use. I conclude, following Telstra, Ltd. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003, that it is.

The same sorts of factors that lead the Telstra Panel to conclude bad

faith in that case exist in this case also. Notably, there is the extensive

international brand recognition of the Complainant’s marks. Then there is the

fact that the domain name includes not only the marks, but the entire tradename

of the Complainant which specifies the services which the Complainant offers.

Further, there is the evidence that an agent of the Respondent is in the hotel

business, and so is aware of the tradename of the Complainant. Finally there

is evidence that the Respondent has engaged in a pattern of registering domain

names of well-known hotel chains that it is extremely unlikely to have any legitimate

claim to.

In the circumstances it is clear that the Respondent has acted in bad faith

pursuant to the requirements of paragraph 4.a.(iii).

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform

Domain Name Dispute Resolution Policy.

Pursuant to paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy

and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy,

the requested remedy is granted.

I hereby order that the domain name <fairmonthotelsandresorts.com> be

transferred to the Complainant.

Dan Hunter

Sole Panelist

Dated: November 19, 2001