Way.co salvaged its hospitality-focused domain, RealtimeReservations.com, by proving that the term is generic. The company is using it as a URL forward to the Way.co web site.
The domain was chased into the UDRP process by RealTime Reservation LLC that asserted rights in the REALTIME RESERVATION mark. The Forum panelist agreed with the Respondent:
“Complainant’s evidence supporting its contention that it has common law rights in the REALTIME RESERVATION mark, noting that the mark is highly descriptive given the nature of the Complainant’s services, is minimal.”
Final decision: Deny the transfer of the domain RealtimeReservations.com to the Complainant.
The domain transfer was denied.
DECISION
RealTime Reservation LLC v. Way Info
Claim Number: FA2311002071701
PARTIES
Complainant is RealTime Reservation LLC (“Complainant”), represented by Karin Segall of Leason Ellis LLP, New York, USA. Respondent is Way Info (“Respondent”), represented by Brian J. Focarino of Cooley LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is realtimereservations.com (“Domain Name”), registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 17, 2023; Forum received payment on November 17, 2023.
On November 20, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the realtimereservations.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@realtimereservations.com. Also on November 21, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 6, 2023.
On December 6, 2023, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, RealTime Reservation LLC, is a hospitality software company that since 2019 has provided services to well-known hospitality providers from its website at www.realtimereservation.com. Complainant applied to register the coined mark REALTIME RESERVATION with the United States Patent and Trademark Office (“USPTO”) on November 15, 2023 and asserts common law rights in the REALTIME RESERVATION mark because the mark has achieved distinctiveness and secondary meaning though Complainant’s extensive use. Respondent’s realtimereservations.com Domain Name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the Domain Name and adds the letter “s” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the realtimereservations.com domain name because Respondent is not commonly known by the Domain Name. Furthermore, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the Domain Name resolves to Respondent’s website at www.way.co.
Respondent registered and uses the realtimereservations.com domain name in bad faith. Respondent was aware of Complainant at the time of registration, having previously entered into discussions about a possible business relationship. Respondent then registered the Domain Name to divert customers of Complainant to Respondent’s competing website, which disrupts Complainant’s business and provides commercial benefits to Respondent’s competing business. Respondent has also taken to disparaging Complainant and its services on third party platforms such as Linkedin.
B. Respondent
Complainant has provided no evidence establishing common law trademark rights over the generic terms “realtime reservation” which are commonly used in connection with hospitality related services. It has failed to obtain any trademark registrations for the REALTIME RESERVATION mark in the United States or any other countries.
Even if Complainant had established common law rights in the REALTIME RESERVATION mark, Respondent has made a bona fide offering of goods and services from the Domain Name as the Domain Name resolves to the Respondent’s website at www.way.co where it offers software that allows companies to see real-time availability of experiences and make real-time reservations for their guests on their behalf. Notably the Respondent’s website makes no explicit or implicit reference to Complainant and the Domain Name was acquired by Respondent before Complainant sought to register the Domain Name as a trademark.
Respondent has not registered or used the Domain Name in bad faith. Respondent has registered a domain name that contains terms common to the industry and redirects visitors to its website which does not mislead in any way.
FINDINGS
Complainant does not provide sufficient evidence of trademark rights for the REALTIME RESERVATION mark for the purposes of satisfying Policy ¶ 4(a)(i).
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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; and
(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
Complainant asserts that it has rights in the REALTIME RESERVATION mark based upon the secondary meaning it has achieved following its use and promotion of the mark in the past four years. While Complainant has a trademark application for the REALTIME RESERVATION mark with the USPTO, an application to register a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at 1.1.4 which states that “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”.
As Complainant does not have any registered trademark rights it is therefore necessary to consider whether Complainant holds common law rights in the REALTIME RESERVATION mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Establishing common law rights in a mark requires a showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Lack of evidence to support secondary meaning may result in failure to establish common law rights in a mark. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”).
In the present case Complainant’s evidence supporting its contention that it has common law rights in the REALTIME RESERVATION mark, noting that the mark is highly descriptive given the nature of the Complainant’s services, is minimal. The entirety of Complainant’s documentary evidence of reputation and use is a 5 page-extract from what is said to be its website though there is nothing in the document itself that explicitly indicates this extract is taken from the www.realtimereservation.com website. These 5 pages involve one use of the term “RealTime Reservation” as the header of a website, one use of “RealTime Reservations” apparently as a product name, and two uses in a single testimonial from a single hotel. In addition to the single customer testimonial, the 5-page extract includes logos of other well-known hotel chains that said to be clients of Complainant, but this is not supported by documentary evidence, nor is the depth of the relationship clear (for example is the Complainant’s product used across those chains or a single hotel). The Complaint provides no evidence of sales figures or advertising figures, nor does it provide any documentary evidence of advertising engaged in by Complainant other than the website. Finally, Complainant provides no other evidence establishing public association with this mark. Noting the highly descriptive nature of the REALTIME RESERVATION mark and the absence of any significant evidence that the mark has achieved secondary meaning, the Panel finds that Complainant has failed to establish common law rights in the mark per Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has not established rights in the REALTIME RESERVATION mark, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the realtimereservations.com domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: December 7, 2023
