First Hotels AS of Oslo, Norway just lost a UDRP on the domain name FirstHotel.com which is owned by  Klaudia Kruzicevic of Split, Croatia, who was represented by ESQwire.com, P. C.

The three member panel basically found that the domain holder did not buy the domain FirstHotel.com in bad faith but in support of its Internet based travel business she and her deceased husband started in 1999 operating many travel related websites including Cheaprooms.com, Cheaphotel.com, and Cheaphotels.com.

“The Complainant was established in 1993 and operates several hotels centrally located at selected destinations throughout Scandinavia.”

“The Complainant is registered owner of trademark registrations for FIRST HOTEL and FIRST HOTELS, namely Norwegian trademark registration no. 214709 FIRST HOTEL and device, applied for on February 7, 2001 and registered on June 20, 2002 in connection with services in classes 35, 36, 37, 39, 41 and 42; Norwegian trademark registration no. 214715 FIRST HOTEL, applied for on May 22, 2001 and registered on June 20, 2002 in connection with services in classes 35, 36, 37, 39, 41 and 42; and International trademark registration no. 949263 FIRST HOTELS, registered on November 1, 2007 in connection with services in classes 35, 36, 37, 39, 41 and 42 (the “Complainant’s Marks”).”

The disputed domain name was acquired by the Respondent’s husband from its prior owner on December 4, 2005 and was transferred to the Respondent’s control after her husband’s death in 2009.

The disputed domain name is used to forward Internet users to the Respondent’s website available at “Cheaprooms.com.

The Complainant sent a cease and desist letter to the Respondent on April 18, 2013, which remained unanswered.

She argues that the words “First Hotel” are generic and that the Complainant does not have exclusive trademark rights in the term “First Hotel”.

She states that a Google search for “First Hotel” yielded 1,010,000,000 results with the first two pages of results showing at least six third party hotels using the term “First Hotel”.

The Respondent further states that she has an incontestable right to the disputed domain name and has used the disputed domain name legitimately and in good faith.  She argues that the UDRP and established trademark law support a “common sense” approach to the treatment, use, and protection of descriptive terms, which precludes the Complainant’s claim that the Respondent is not entitled to own the disputed domain name.

The Respondent contends that the disputed domain name was purchased in good faith from its prior owner solely because it included the generic term “hotel”, preceded by the laudatory term “first” and that the Complainant has set forth no evidence demonstrating otherwise or that it was targeted.

She further argues that it is well-established under the Policy that the use and registration of descriptive domain names is an extremely common and permissible business practice.

She states that the disputed domain name had three prior owners before the Respondent purchased it in 2005, i.e. almost eight years before the filing of the Complaint, and contends that this significant delay and the fact that the disputed domain name changed ownership three times raises the inference that the Complainant did not genuinely believe that Respondent engaged in abusive domain name registration or use.

She further states that this immense gap in time and the inaction by the Complainant further raises the question of whether the Complaint should be barred pursuant to the doctrine of laches.

With regard to the elements specified in paragraph 4(a) of the Policy, the Respondent states that she did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website and that she was not aware of the Complainant and did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark.

Furthermore, the Respondent states that the original registration date of the disputed domain name predates the Complainant’s first trademark registration, that the Complainant’s International Registration was registered two years after the Respondent purchased the disputed domain name from its prior owner and that there is neither evidence that the Complainant was or is now known outside of Norway nor that the Respondent or the disputed domain name’s prior owner knew of or targeted the Complainant.  She finally argues that her legitimate interest is bolstered by the fact she uses the disputed domain name in connection with the provision of related hotel booking services, which is in connection with a legitimate business and is a legitimate use under the Policy. ”

The three member panel said:

“”With regard to bad faith registration, having carefully considered the facts contained in the case file, the Panel finds that the Complainant has not provided sufficient evidence as to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the Respondent became the registered owner of the disputed domain name and that, therefore, the Complainant failed to meet its burden of proof in this regard.

First of all, the Panel is convinced that the term “First Hotel” is not distinctive enough to identify only one company, user or services, but is rather generic and descriptive and seems to be concerned with the first quality or first value of hotel reservations.

Based on the facts and evidence provided by the Complainant, the Respondent must not necessarily have been aware of the Complainant.

In this regard, the Panel especially takes into account that the Respondent is based in Croatia and that the Complainant’s business activities are limited to Scandinavia, that the Complainant has registered trademark rights in Norway, Denmark, Sweden and Germany only, that the disputed domain name consists of the singular “First Hotel” while the Complainant seems to use only the plural “First Hotels” in commerce, that the Respondent and her husband, who was the prior owner of the disputed domain name, have been in the hotel reservations business since 1999, and that the website available at the disputed domain name has absolutely nothing in common with the Complainant’s website at Firsthotels.com”

Under these circumstances, the Panel considers it more likely than not that the Respondent was in fact not aware of the Complainant and its rights in “First Hotel” and “First Hotels” at the time she became registered owner of the disputed domain name after her husband died and that the Respondent’s use of the disputed domain name is not targeting or chasing the name or trademarks of the Complainant.”