Park Hospitality Worldwide LLC -v- Davis [2003] DRS 1093 (12 October 2003)

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The Complaint was lodged with Nominet on 4 July 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 9 July 2003 and informed the Respondent that she had 15 days within which to lodge a Response. A hard copy Response was received by Nominet on 22 July 2003 which was forwarded to the Complainant.
Mediation documents were generated on 10 September 2003. It appears that the Mediation was unsuccessful. On 25 September 2003 the Complainant paid Nominet the necessary fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 26 September 2003 Mr Clive Duncan Thorne, the undersigned, ("the Expert") was selected. On 30 September 2003 he confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impracticality.

The Complainant, according to the pleading set out in the Complaint is an internationally renowned hospitality company which owns and operates hotels in countries throughout the world. It owns registered service marks "Park Inn" and "Park Inn Suites" which have been used by it since at least 1986. The Complainant states that it "maintains a significant internet presence" and has invested significant resources to establish and maintain this presence. The Complainant is the owner of the United States Federal Registration Number 2165600 for the mark "Park Inn" in class 42. A copy of the trade mark specification is exhibited at Annex A to the Complaint. According to the Complainant it is also the owner of approximately 150 pending or registered Park Inn related marks around the world including Great Britain.
The Respondent, Maggie Davis, appears to trade as MD Promotions. Little is known about MD Promotions. In its response which consists of a letter written by Maggie Davis dated 17 July 2003 she states that she registered the domain name (which was first registered on 22 December 1999) because the name "The Park Inn" was the name of "the pub in Dover, Kent we used to frequent in the 70's!".
The Complainant asserts in the Complaint that the domain name resolves to a website titled "ThePubGuide.com-Pub Portal For Kent Pubs". It exhibits to Annex B a copy of the web page for ThePubGuide.com. This appears to be some form of online guide for pubs in Kent referring inter alia to the "pub of the month" – the Star Inn at St Mary in the Marsh, Romney Marsh, Kent.

The substance of the Complaint is as follows:
1. The Complainant has registered marks worldwide in respect of the trade marks "Park Inn" and "Park Inn Suites" and has used the trading name Park Inn for hospitality and hotel services since at least 1986.
2. The Respondent has never been authorised to use the Complainant's marks or variations of the marks in a domain name or otherwise.
3. The Respondent has never been commonly known by the Domain Name which resolves to the website entitled "ThePubGuide.com" referred to above.
4. By using the Domain Name the Respondent is intentionally intending to attract for commercial gain internet users to the Respondent's website or other online location by creating a likelihood of confusion with the Complainants mark as to the source sponsorship affiliation or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. The Complainant relies on its submission that Park Inn and the Respondent's website are both considered hospitality related entities so that any internet user looking for Park Inn who winds up at the web page to which the domain resolves would likely to be confused and would logically but improperly conclude that the Complainant is endorsing ThePubGuide.com and its services.
5. The domain name was registered in order to prevent the owner of the marks from reflecting the marks in a corresponding domain name. This is demonstrated by registration of the Domain Name and improperly redirecting it to ThePubGuide.com so that the domain name was registered primarily for the purposes of unfairly disrupting the business of the Complainant.

Respondent:
The Respondent's contentions as set out in her letter of 17 July 2003 are as follows:
1. She purchased the domain name along with a handful of other popular UK pub names for private use. Park Inn was registered as a domain name because it was the name of "a pub in Dover, Kent she used to frequent in the 70's."
2. The Park Inn is a very popular UK pub name. At no time was the name registered to "disrupt" the Complainant's business or any other malicious act. She has never heard of Park Inn from the USA and only knows Park Inn as a UK pub name.
3. She draws attention to the fact that she has only registered the UK Domain Name "parkinn.co.uk" in contrast with registering "parkinn.com".
4. She has also offered to put a notice to viewers advising them that she has nothing to do with the Complainant and offering a free link to their website if they so wish.

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy, on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the domain name and, secondly, that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant's Rights

For the purposes of this Complaint, the Expert accepts that the Complainant has registered service marks "Park Inn" and "Park Inn Suites". In accepting this the Expert relies upon the evidence of the US Trade Mark Registration Number 2165600 and the submission by the Complainant that it is the "owner of approximately 150 pending or registered Park Inn related marks around the world, including Great Britain". However, the Expert notes that no evidence is given in relation to specific registrations in the United Kingdom. He is therefore unable to assess whether the trade mark rights in the United Kingdom are pending or registered.

The Expert also accepts that the Complainant has used the marks "Park Inn" and "Park Inn Suites" commercially since at least 1986 for hospitality and hotel services. However, it notes that no evidence is given as to the location of hotels operated or owned by the Complainant throughout the world including in particular, in the United Kingdom.
The Expert notes that the definition of "Rights" in the Policy states that "Rights includes but is not limited to, rights enforceable under English law." Therefore for the purposes of this Complaint the Expert is prepared to find that the Complainant has rights in respect of "Park Inn" and "Park Inn Suites". The fact however that there is no evidence of the rights existing in the United Kingdom or enforceable under English law will be relevant in its consideration of the Complaint.

This leaves the second limb. Is the Domain Name, in the hands of the Respondent an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:
"a Domain Name which either:
  i. was registered or otherwise acquired in a manner,
   which at the time when the registration or acquisition
   took place, took unfair advantage of or was unfairly
   detrimental to the Complainant's Rights; OR
  ii. has been used in a manner, which took unfair advantage
   of or was unfairly detrimental to the Complainant's Right."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy.
It appears to the Expert that the only potential relevant factors in paragraph 3 are to be found in subparagraphs 3a(i)(B), 3a(i)(C) and 3a(ii).

Paragraph 3a(i)(B) reads as follows:
"Circumstances indicating that the Respondent has
registered or otherwise acquired the Domain Name:
B. as a blocking registration against a name or mark
in which the Complainant has Rights."

Here the Complainant submits that the Domain Name was registered in order to prevent the Complainant, the owner of the Marks, from reflecting the Marks in a corresponding domain name. Because the Respondent already owns the registration for ThePubGuide.com, registering parkinn.co.uk and improperly redirecting it to ThePubGuide.com demonstrates that the Respondent "intended to prevent the Complainant, the owner of the marks, from reflecting the marks in a corresponding domain name".
In the Expert's view there is really no evidence adduced by the Complainant to support this submission.

In the absence of evidence from the Complainant the Expert has no alternative but to accept the submission by the Respondent that the domain name was not registered as a result of any malicious act and that she had not heard of the Park Inn from the USA. In this regard the Expert also finds it significant that in the absence of any evidence from the Complainant that it is trading in the United Kingdom or evidence of trade mark rights in the United Kingdom then the submission by the Respondent as to lack of knowledge of the activities of the Complainant is strengthened.
Paragraph 3a(i)(C) of the Policy reads as follows:
"(i) Circumstances indicating that the Respondent has
registered or otherwise acquired the domain name:
(c) primarily for the purposes of the unfairly
disrupting the business of the Complainant."
In support of this submission the Complainant asserts that "because, the Respondent already owns the registration for ThePubGuide.com, registering parkinn.co.uk and improperly redirecting it to ThePubGuide.com demonstrates that the Respondent intended to divert and unfairly disrupt the business of the Complainant."
No evidence as to why this should be so is given by the Complainant beyond this assertion. By contrast, the Respondent again relies on the fact that she had never ever heard of Park Inn from the USA. In these circumstances and bearing in mind that the Complainant has the burden of proof, the Expert has no alternative but to accept the Respondent's submission.
Paragraph 3(a)(ii) of the Policy reads as follows:
"(ii) To circumstances indicating that the Respondent is using the domain name in a way which has confused people and businesses into believing that the domain name is registered to, operated it or authorised by or otherwise connected with the Complainant".

The Complainant relies upon the fact that the Respondent has never been commonly known by the domain name and that the domain name resolves to the website titled " ThePubGuide.com – Pub Portal For Kent Pubs". By using the domain name in this way the Respondent had intentionally attempted to attract for commercial gain internet users to the Respondent's website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation or endorsement of the Respondent's website or location of a product or service on the Respondent's website or location. Because Park Inn and the Respondent's website are both considered hospitality related entitles, any internet user looking for Park Inn who winds up at the web page to which the domain name resolves would likely be (sic) "confused and logically but improperly conclude the complaint is endorsing ThePubGuide.com and its services."
No evidence beyond speculation is given to support this submission. The Respondent does not specifically deal with this submission in its Response. The Expert notes however that the content of the website " ThePubGuide.com – Pub Portal for Kent Pubs" is specifically that of a guide to pubs in Kent rather than hotels which the Complainant appears to operate. In the absence of evidence to support the Complainant's submission, the Expert is unable to accept that there is any confusion taking place.
It follows that the Complainant has been unable to establish under paragraph 2 of the Policy that "the Domain Name, in the hands of the Respondent, is an Abusive Registration."

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is not an Abusive Registration, the Expert does not direct that the Domain Name "parkinn.co.uk" be transferred from the Respondent to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Park Hospitality Worldwide LLC -v- Davis [2003] DRS 1093 (12 October 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1093.html Cite as: [2003] DRS 1093