ESH Strategies Branding LLC v. Domain Administrator
Claim Number: FA2203001986957
Complainant is ESH Strategies Branding LLC (“Complainant”), represented by Patrick J. Concannon of Nutter, McClennen & Fish, LLP, Massachusetts, USA. Respondent is Domain Administrator (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <extendedastay.com>, registered with Sav.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022; the Forum received payment on March 4, 2022.
On March 8, 2022, Sav.com, LLC confirmed by e-mail to the Forum that the <extendedastay.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 March 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2022, 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@extendedastay.com. Also on March 10, 2022, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name <extendedastay.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in its registered service marks described below, each of which contains as its initial and dominant element the words EXTENDED STAY. Complainant further claims unregistered rights by virtue of its widespread, continuous and exclusive use of the marks in providing its accommodation services in the United States and Canada, including on the Internet.
Complainant submits that the disputed domain name is confusingly similar to the abovementioned marks in which it has rights arguing that EXTENDED STAY is the dominant element in each of its trademarks and that the disputed domain name contains said dominant element with the mere addition of the letter “a”. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that the misspelling of a mark by a single letter increases, rather than decreases, confusing similarity).
Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com>, does not add any distinctiveness or meaningfully differentiate the disputed domain name and submits that it is generally accepted by panels established under the Policy, that the gTLD extension should be ignored when assessing whether a domain name is identical or confusingly similar to a trademark because it is a technical requirement of registration.
Complainant next submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent registered the disputed domain name on December 30, 2021, long after Complainant registered all but one of its registered service marks and long after Complainant began using the service marks upon which it relies.
Complainant asserts that it is not affiliated with Respondent, adding that Complainant never at any time authorized Respondent’s use of its service marks or any of Respondent’s activities that are complained of herein.
Complainant adds that Respondent is not generally known by the disputed domain name.
Referring to a screen capture of the web page to which the disputed domain name resolves, which contains only links to third party websites, Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because the said links resolve to the websites of competing accommodations serve providers, none of which is affiliated with Complainant.
Complainant further asserts that there is no agreement in place under which any linked-to accommodations service provider is authorized to make use of Complainant’s marks or receive online referrals, links or redirection of Internet users, and submits that such use of a confusingly similar domain name to divert Internet users to a website containing such links is not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i).
Respondent’s activity directing the disputed domain name to a website with a pay-per-click linking scheme entailing links to websites offering services that compete with those marketed by Complainant amounts to neither a bona fide offering of goods nor a legitimate noncommercial or fair use of the disputed domain name under subparagraphs (i) and (iii) of Policy paragraph 4(c).
Moreover, the registration of the disputed domain name which is comprised of Complainant’s trademark, merely adding one letter constitutes typosquatting, which demonstrates a lack of rights or legitimate interests per Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”
Further still, Respondent indicated that his/her/its name is “Domain Administrator” when registering the disputed domain name and Complainant argues that the provision of a fake name reflects illegitimate use and registration of the disputed domain name.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith to redirect Internet users to a website comprised of links to Complainant’s competitors, apparently for commercial gain, arguing that there is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name.
Policy ¶ 4(b)(iii) provides that evidence of the registration and use of a domain name in bad faith includes a situation where: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor”. Complainant argues that in diverting Internet users searching for Complainant’s website (but who have miss-keyed Complainant’s well known trademark into their Internet browsers) to Respondent’s website, Respondent has interfered with Complainant’s business and has demonstrated bad faith in both registering and using the disputed domain name. See Beronata Services Ltd v. Private Registration, Account Privacy/Suren Akopian, WIPO Case No. D2017-1796 (respondent’s redirecting users to another domain name providing services in competition with the complainant evidences bad faith registration and use).
Furthermore, Complainant submits that the term “extendedastay” is not a phrase that Respondent would legitimately choose unless seeking to create the impression of an association with the Complainant.
Complainant argues that Respondent must have had actual or constructive knowledge of Complainant’s marks when the disputed domain name was chosen and registered, as Complainant secured registration rights for most of its marks that incorporate Extended Stay as their initial and dominant element long in advance of the registration of the disputed domain name on December 30, 2021 See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Further still, Complainant repeats that Respondent identified himself/herself/itself as “Domain Administrator” when registering the disputed domain name which obviously is not a real name and constitutes even more evidence of bad faith use and registration of the disputed domain name See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, FA 1411001647718 (Forum Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use.”).
Complainant concludes that the evidence points to the inevitable conclusion that the disputed domain name was registered in bad faith and is being used in bad faith in order to take predatory advantage of Complainant, its reputation and goodwill for ill-gotten commercial gain. Good faith registration or use is not plausible.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of accommodation services and is the owner and user of the following portfolio of service mark registrations:
· United States of America registered service mark EXTENDED STAY AMERICA, registration number 2,457,084, registered on the Principal Register on June 5, 2001 for services in international class 42;
· United States of America registered service mark EXTENDED STAY AMERICA WORKS registration number 5,758,664, registered on the Principal Register on May 21, 2019 for services in international class 43;
· United States of America registered service mark EXTENDED STAY DELUXE, registration number 4,104,698, registered on the Principal Register on February 12, 2012 for services in international class 43;
· United States of America registered service mark EXTENDED STAY AMERICA SUITES registration number 6,648,302 registered on the Principal Register on February 15, 2022 for services in international class 43.
· Canadian registered service mark, EXTENDED STAY CANADA registration number TMA906200, registered on June 11, 2015 for services in class 43;
· Canadian registered service mark, EXTENDED STAY AMERICA, registration number TMA562533, registered on May 27, 2002, for services in class 43.
· Complainant also owns the domain name extendedstay.com (which redirects to a website associated with the domain name extendedstayamerica.com) through which it promotes and transacts its services.
The disputed domain name <extendedastay.com> was registered on December 30, 2021, and resolves to a web page with links to third party websites.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum to provide the registration details of the disputed domain name in the course of this proceedings.
The Registrar disclosed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
Paragraph 15(a) of 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; 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence that it has rights in above-described service marks, each of which contain as the dominant element the words EXTENDED STAY, established by its ownership of its portfolio of service mark registrations described above and extensive use of the marks by the Complainant in its accommodation services business.
The disputed domain name <extendedastay.com> consists of the dominant element of each of Complainant’s marks, albeit with the letter “a” inserted between the element “extended” and “stay” together with the generic Top Level Domain “(gTLD”) extension <.com>.
The term EXTENDED STAY, which is the dominant element of all of Complainant’s marks is clearly identifiable within the disputed domain name.
This Panel accepts that, on the balance of probabilities, the term “extendedastay” is not a phrase that Respondent would likely choose unless seeking to create the impression of an association with the Complainant.
In the circumstances of this Complaint, the gTLD extension <.com> does not prevent a finding of confusing similarity as Internet users would understand it to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to Complainant’s marks in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent registered the disputed domain name on December 30, 2021, long after Complainant registered all but one of its above-referenced marks which incorporate the term Extended Stay;
· Complainant asserts that it is not affiliated with Respondent;
· Complainant asserts that it never at any time authorized Respondent’s use of its trademarks;
· Respondent is not generally known by the disputed domain name;
· the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that Respondent’s website contains only links to the websites of competing accommodations service providers, none of which is affiliated with Complainant; there is no agreement in place under which any linked-to accommodations service provider is authorized to make use of Complainant’s marks or receive online referrals, links or redirection of Internet users; and so it follows that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use;
· Respondent’s activity directing the disputed domain name to a website with a pay-per-click linking scheme entailing links to websites offering services that compete with those marketed by Complainant amounts to neither a bona fide offering of goods nor a legitimate noncommercial or fair use of the disputed domain name under subparagraphs (i) and (iii) of Policy paragraph 4(c).
· the registration and use of the disputed domain name comprising as it does Complainant’s trademark but merely adding one letter constitutes typosquatting, which demonstrates a lack of rights or legitimate interests per Policy ¶ 4(a)(ii);
· Respondent indicated that his/her/its name is “Domain Administrator” when registering the disputed domain name and Complainant argues that the provision of a fake name reflects illegitimate use and registration of the disputed domain name.
It is well established that once a Complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s trademark rights and use of the trademarks which incorporate the words EXTENDED STAY as their dominant elements long predate the registration of the disputed domain name on December 30, 2021.
The disputed domain name consists of the words “extended” and “stay” with the addition of the letter “a” between those elements. Respondent has not provided any explanation as to why this disputed domain name was chosen.
Respondent appears to have no connection with the term “extended stay” and its website is merely a page with links to third party sites from which it must be assumed that Respondent is receiving pay-per-click revenue.
The screen capture, exhibited in the annex to the Complaint, shows that the links generated on Respondent’s website have associations with accommodation and hospitality services which compete with Complainant’s business. It may very well be the case that a person using a different computer might be presented with a different set of choices.
Even if the links had no connection with competing services, on the evidence adduced, this Panel must find that on the balance of probabilities Respondent is using disputed domain name in bad faith to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant's business, marks and goodwill, as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and attract the Internet users to the links which Respondent displays.
In finding that the disputed domain name was both registered and is being used in bad faith, this Panel is fortified by the fact that the disputed domain name is on the balance of probabilities an intentional misspelling of the term EXTENDED STAY and therefore Respondent is engaged in typosquatting.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element and final element of the test in Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <extendedastay.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 6, 2022
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