Occidentalhotels.net

The timeline behind occidentalhotels.net

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Occidental Hoteles Management, S.A., and Corcital II, S.A. v. Hargrave Arts, LLC Claim Number: FA0704000959645 PARTIES Complainant is Occidental Hoteles Management, S.A., and Corcital II, S.A. (“Complainant”), represented by William J. Cremer, of Cremer, Kopon, Shaughnessy & Spina, LLC, 180 North LaSalle Street, Suite 3300, Chicago, IL 60601. Respondent is Hargrave Arts LLC (“Respondent”), Box 52820, Tulsa, OK 74152, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <occidentalhotels.net>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Robert T. Pfeuffer, Senior District Judge as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2007. On April 11, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <occidentalhotels.net> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On April 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@occidentalhotels.net by e-mail. A timely Response was received and determined to be complete on May 2, 2007. On May 9, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant claims that it is a Spanish corporation that operates 46 hotels and resorts under the OCCIDENTAL mark around the world. Complainant alleges that it has continuously used the mark since 1982 and has maintained a website at the <occidental-hoteles.com> domain name since October 16, 1996. Complainant does not provide any evidence of a trademark registration containing the OCCIDENTAL mark. B. Respondent Respondent claims that Complainant has no rights in the OCCIDENTAL mark. Respondent argues that the United States Patent and Trademark Office cancelled Complainant’s trademark registration (Reg. No. 1,783,030 issued July 20, 1993, cancelled July 3, 2000). Respondent further alleges that after an “exhaustive” trademark search, Respondent could not find any evidence of Complainant having rights in the mark. C. Additional Submissions None. FINDINGS The Panel finds that the evidence submitted by Complainant is totally insufficient to sustain its burden of proof that it has a trademark registration containing the OCCIDENTAL mark nor has it established by sufficient and competent evidence that it has established rights in the mark under common law principles. Complainant has failed to provide sufficient and competent evidence to establish continuous use of the OCCIDENTAL mark for many years prior to Respondent’s registration of the <occidentalhotels.net> domain name and therefore cannot establish any rights under the common law. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Although Complainant has not provided any evidence of a trademark registration containing the OCCIDENTAL mark, the Panel could have found that the Policy does not require a trademark registration in order for Complainant to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (“The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The allegations made by Complainant that it is a Spanish corporation that operates 46 hotels and resorts under the OCCIDENTAL mark around the world and that it has continuously used the mark since 1982 and has maintained a website at the <occidental-hoteles.com> domain name since October 16, 1996, are not supported by a preponderance of the evidence Complainant has submitted. Had the Panel received competent evidence to sustain these allegations, it might have found that Complainant’s continuous use of the OCCIDENTAL mark for many years prior to Respondent’s registration of the disputed domain name demonstrated that Complainant’s mark had acquired sufficient secondary meaning for it to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). The evidence submitted by Respondent verifies its allegation that Complainant’s OCCIDENTAL mark was cancelled on July 3, 2000 and that many other entities in the hotel business operate under the name OCCIDENTAL in some form. Complainant claims to have established common law rights in the OCCIDENTAL mark but it does not provide sufficient evidence of its use of the mark besides its assertions of such use in its Complaint. The Panel therefore finds that Complainant has failed to show that it has rights in the OCCIDENTAL mark, even common law rights, and as a result, Complainant has failed to satisfy Policy ¶ 4(a)(i). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness). The Panel concludes that Complainant has not demonstrated by sufficient evidence that it has rights in the OCCIDENTAL mark according to Policy ¶ 4(a)(i) and therefore declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). DECISION Having failed to establish the first of the necessary elements required under the ICANN Policy, to wit that the mark is identical or confusingly similar to one in which Complainant has legitimate rights, the Panel concludes that it is unnecessary to consider the other two elements and therefore declines to analyze them. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief shall be DENIED without prejudice in the event Complainant wishes to refile the Complaint. Accordingly, it is Ordered that the <occidentalhotels.net> domain name NOT BE TRANSFERRED from Respondent to Complainant. ROBERT T. PFEUFFER, Senior District Judge, Panelist Dated: May 21, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.