WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ojai Valley Inn & Spa, LLC v. Domain Admin, Whois Privacy Corp / Maddisyn Fernandes, Fernandes Privacy Holdings
Case No. D2017-2272
1. The Parties
The Complainant is Ojai Valley Inn & Spa, LLC of Ojai, California, United States of America ("United States"), represented by Stradling Yocca Carlson & Rauth, United States.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Plurinational State of Bolivia.
2. The Domain Name and Registrar
The disputed domain name <ojaivalleyinn.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2017. On November 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 30, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 26, 2017.
The Center appointed Alistair Payne, Gregory N. Albright and Miguel B. O'Farrell as panelists in this matter on January 22, 2018. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant owns the Ojai Valley Inn in Southern California. The Ojai Valley Inn started as a private golf club in 1923 and has operated under the OJAI VALLEY INN name since 1947. The Complainant owns various United States trade mark applications and registrations including trade mark registration 5260280 for OJAI registered on August 8, 2017 and trade mark registration 363438 for OJAI VALLEY INN & SPA, registered on June 16, 2009 with both registrations having a first use date of December 1, 1997. The Complainant formerly owned a United States trade mark registration for OJAI VALLEY INN registered on October 27, 1998 with a first use in commerce date of November 7, 1947, however this was cancelled on May 30, 2009 and on October 6, 2017 the Complainant made a further United States trade mark application for OJAI VALLEY INN.
The disputed domain name was registered on June 11, 2001 and prior to filing of the Complaint resolved to a web page featuring various sponsored links.
5. Parties' Contentions
A. Complainant
The Complainant submits that it is the owner of the OJAI VALLEY INN mark having used it since at least 1947 in relation to its Southern Californian hotel and says that the mark is arbitrary and has no other meaning. The Complainant has submitted various articles and advertisements by way of evidence of its use of the mark which dates back to 1947. It further says that it is the owner of the registered trade marks and trade mark application as set out above and that the disputed domain name wholly incorporates and is identical to its OJAI VALLEY INN trade mark.
The Complainant submits that it has not licensed its OJAI VALLEY INN mark or trade marks to the Respondent and says that the Respondent has not acquired any rights to the mark and is not making a legitimate noncommercial or fair use of the disputed domain name. It notes that since registration the disputed domain name has resolved to an internet resource site, to a place keeper page and since October 2017 has re-directed to "www.hotels.com" at which competing hotel properties are advertised. The Complainant suggests that the disputed domain name has been licensed to Hotels.com for this purpose but, in any event, says that this is not consistent with the Respondent having any legitimate basis for owning the disputed domain name.
As far as bad faith is concerned, the Complainant asserts that the Respondent registered the disputed domain name so as to disrupt the Complainant's business and that the re-direction to the "Hotels.com" website is indicative of it having sought to intentionally divert customers for hotel services in Ojai, California for its own commercial gain, by creating a likelihood of confusion with the Complainant's OJAI VALLEY INN mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name in terms of paragraph 4(b)(iv) of the Policy. In other words, says the Complainant, the Respondent, having had actual or constructive notice of the Complainant and of its OJAI VALLEY INN mark, both registered and used the disputed domain name in bad faith in order to receive a share of advertising revenue derived from advertisements displayed on the website to which the disputed domain name resolves.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns United States trade mark registration 5260280 for OJAI registered on August 8, 2017 and trade mark registration 363438 for OJAI VALLEY INN & SPA, registered on June 16, 2009, with both registrations having a first use date of December 1, 1997.
The Complainant's OJAI mark is wholly incorporated into the disputed domain name. Further, the disputed domain name only differs from the Complainant's OJAI VALLEY INN & SPA registration by the omission of the term "& SPA". The Panel notes that this latter term comprises a common English term used widely in the accommodation industry and does not distinguish the Complainant's mark from the disputed domain name. As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant's OJAI VALLEY INN & SPA trade mark registration.
While the Complainant has also asserted that it owns common law rights in its OJAI VALLEY INN mark since 1947 and has provided some degree of supporting evidence, it is unnecessary in the circumstances for the Panel to make any determination in this regard for purposes of the first element.
Accordingly, the complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that it has not licensed its OJAI VALLEY INN mark, or its other trade marks, to the Respondent and says that the Respondent has not acquired any rights to the mark and is not making a legitimate noncommercial or fair use of the disputed domain name. It asserts that the Respondent's use of the disputed domain name to resolve to a Hotels.com web page at which competing hotel properties are advertised is not bona fide use and is not consistent with a legitimate use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence before the Panel that the Respondent initially registered the disputed domain name for a bona fide purpose and the mere fact that prior to 2017 it was initially used for an Internet resources page and then as a place keeper site is insufficient to rebut the Complainant's case. Also, for the reasons set out under section 6C. below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that therefore the complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered on June 11, 2001, just over 16 years ago. However, the Panel notes that the Respondent has failed to make out any case of it having used the disputed domain name in good faith, or of its interests having been prejudiced as a result of the Complainant having waited to bring these proceedings until now. Therefore, the Panel will not consider any issue of delay further.
The Respondent registered the disputed domain name many decades after the Complainant's first use in commerce date of its OJAI VALLEY INN mark and several years after its first United States registration for this mark on October 27, 1998. As discussed earlier, there is nothing to suggest that the Respondent ever intended using, or in fact used, this mark in the course of trade and considering the long history of the Complainant's use, the degree of renown attaching to its OJAI VALLEY INN mark as a result and the fact that the disputed domain name has subsequently been used to resolve to a website featuring competing hotels, the overwhelming inference is that the Respondent registered the disputed domain name with knowledge of the Complainant's rights in OJAI VALLEY INN.
Under paragraph 4(b)(iv) of the Policy there is deemed evidence of registration and use of a domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The Respondent in this case has used the disputed domain name with a view to confusing Internet users into thinking that they are reaching the Complainant's or some associated website and then diverting them to a website that features offers for competing hotels. It is most likely that the Respondent has obtained some sort of commercial gain from this arrangement and the Panel finds that the Respondent's conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the complaint also succeeds under the third element of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <ojaivalleyinn.com> be transferred to the Complainant.
Alistair Payne
Presiding Panelist
Gregory N. Albright
Panelist
Miguel B. O'Farrell
Panelist
Date: February 5, 2018
