I have a client, an all-inclusive hotel with an overall good reputation. They recently opened a new hotel. During the very first week within opening they had about 12-15 guests total in the hotel. Anyone in the hospitality business will know that you can't please everyone and if you knew the particulars of this case, one would understand that they seem to be simply looking for an additional free vacation (in addition to the rebates/concessions they already got on complaining). When the management denied this request, they returned to the U.S. and bought the domains:

www.hotelnamesucks.com
www.hotelname.com (without the "s" in the official sites www.hotelnames.com)

and a couple others. The second one is the one which catches those guests who leave off the "s" by mistake which is common. It has resulted in losing business for them. Their reputation is quite good with the majority of guests and have won awards from Fox Family Tv and others.

They have tried snapnames but cannot wrest the names from this disgruntled and dishonest guest.

What options without an expensive lawsuit (in an industry where free speech is an issue..and laws are still being made) are open to them?

www.hotelnamesucks.com
www.hotelname.com (without the "s" in the official sites www.hotelnames.com)
It's possible they could take the names in a dispute under the UDRP.

For example, the WIPO decision in gatewaypcs.com (http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0767.html)

(Taking off the "s" isn't relevant either in a trademark issue or in a domain name dispute).

On the other hand, the decision in Bally Total Fitness Holding Corp. v. Faber held that the addition of the word "sucks" prevents a user from confusing a "sucks" website with an authorized website. But, there's been some disagreement about that issue among arbiters; in some cases other elements of a dispute case have led them to rule in the other direction on that question.

Domain dispute decisions have sometimes protected such protest sites, finding that it is noncommercial fair use. But "bad faith" has sometimes been found to exist where a person operates a consumer complaint site by using a company's mark in the domain name in hopes of attracting internet users looking for the company's site.

Relevant in a dispute would be such factors as whether the registrant has established a pattern of buying such domains, whether he has offered any for sale, and whether the site has commercial content. It'd help that registrant if the site has sufficient disclaimers attempting to avoid confusion about the ownership of the site.

Some of the discussion in these decisions might help:

aameshomeloans.com (http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0699.html)
bridgestone-firestone.net (http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0190.html)
wal-martsucks.com (http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0662.html)

If the hotel has the name trademarked, or if the offending sites are displaying slanderous (i.e. - untrue) statements, then the cheapest course of action would be to have their lawyer write a cease and desist demand letter to the owners of the offending domains. It would be even more effective to hire an attorney in the same city that the renegade hotel guests live in. The real trick is that the letter needs to come from an attorney.

But you bring up a good point... in the future, it might be cheap insurance for all of us to register all variations of our business name, including: yourbusinessnamesucks.com.

The real kicker is that I bet they took the towels home, too ;)


lol,


Keith

The real kicker is that I bet they took the towels home, too

LOL :D

Open all forces....intimidation may work before anything else...so, they should have a lawyer write....they should file a name dispute under ICANN guidelines, they need to make it clear they won't tolerate it and will take action. When the offenders realize that, at best, it will become very costly, and, at worst, it will be extremely costly...whether they when or lose in court or before ICANN, they will lose lots of money defending...then the offenders are more likely to back down.

As someone said earlier, nothing to do about the sucks site, unless something on it is in violation of the law, but the "no s" site is the one to take extremely aggressive action on. The longer delayed, the more negative the impact.

Hey Incognito

You not only do business well with people...you give good advice too! :)

Yes I agree with you. I think they warned the party about legal action to which they replied "bring it on".

I think the hotel is trying to assess whether at this point they'll spend more $ on a lawsuit than on the amount of business they lose to the fake domain. Where I live it isn't easy to come by US$'s !! So the ex-guest may actually be counting on this. It's to see who is bluffing who.

I'd go for it too if I was the hotel and had the bucks.

I was curious though, if their company was registered locally but not registered with an international trademark, if that would affect their standing.

Originally posted by 95 Degrees
I was curious though, if their company was registered locally but not registered with an international trademark, if that would affect their standing. No, not really. Registering a trademark is mostly useful for the purposes of documentation. The real legal test, if the use of a name or mark were to end up in a court of law, is that you have to establish "prior use" for a given purpose. Registering a trademark is a legal, formal way to record such use.

In a domain name dispute there are essentially three tests: that the domain name is "identical or confusingly similar" to a mark used (and such use might be established even in the absence of a trademark registration) by the complainant, that the respondant (the hotel guests in this case) has no "legitimate rights or interests" in the name, and that the name has been "registered and used in bad faith" by the respondant.

Existence or non-existance of a trademark registration is a factor that may be used in the arguments of one or both sides of a domain name dispute in an attempt to win on one or more of the points determined by those tests.

Thanks again JayC.

I will certainly pass on all the replies to this post to the hotelier. I am sure it will be very helpful.

I got really upset with a company once and threatened to register similar domain names to defame them.

They then said they would sue for damages.

I changed my mind.


:D

I agree with JayC above.

The only benefit to a trademark is that it makes it easier to take court action. If you have a history of trading under a particular name you can still take court action, but further evidence needs to be tabled to prove the use of that trading name.