Choice Hotels International, Inc. v. Richard Jones - n/a a/k/a Richard Jones
Claim Number: FA0802001142754
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus of Arent Fox PLLC, District of
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <choisehotels.com> and <orlandorodewayinn.com>, registered with Interlink Co. Ltd. and Enom, Inc., respectively.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 5, 2008; the National Arbitration Forum received a hard copy of the Complaint February 6, 2008.
On February 7, 2008 Interlink Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <choisehotels.com> domain name is registered with Interlink Co. Ltd. and that Respondent is the current registrant of the name. Interlink Co. Ltd. verified that Respondent is bound by the Interlink Co. Ltd. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <orlandorodewayinn.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2008, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@choisehotels.com and postmaster@orlandorodewayinn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <choisehotels.com> and <orlandorodewayinn.com>, are confusingly similar to Complainant’s CHOICE HOTELS and RODEWAY INN marks, respectively.
2. Respondent has no rights to or legitimate interests in the <choisehotels.com> and <orlandorodewayinn.com> domain names.
3. Respondent registered and used the <choisehotels.com> and <orlandorodewayinn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels Int’l, Inc., provides hotel services under multiple marks, including its CHOICE HOTELS and RODEWAY INN marks. Complainant registered its CHOICE HOTELS mark with the United States Patent and Trademark Office (“USPTO”) May 20, 2003 (Reg. No. 2,717,062). Complainant also registered its RODEWAY INN with the USPTO on October 21, 1986 (Reg. No. 1,414,584).
Respondent registered the <choisehotels.com> domain name May 14, 2004, and the <orlandorodewayinn.com> domain name September 29, 2003. Respondent’s disputed domain names resolve to websites that display links to Complainant’s competitors, for which Respondent presumably receives click-through fees. Additionally, Respondent has a history of cybersquatting, and numerous UDRP decisions have transferred Respondent’s disputed domain names to the respective complainants in those cases. See First Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Yokahama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006); see also BedHead PJs, Inc. v. Jones, FA 952185 (Nat. Arb. Forum May 17, 2007).
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant provided evidence of the registrations of its
CHOICE HOTELS and RODEWAY INN marks with the USPTO. The Panel finds these registrations are
sufficient to establish Complainant’s rights in its CHOICE HOTELS and RODEWAY
INN marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA
1118154 (Nat. Arb. Forum Jan. 18,
2008) (“Complainant asserts rights in
the mark through its registration of the mark with the United States Patent and
Trademark Office. This
registration sufficiently establishes Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov.
11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent
registered, <choisehotels.com>, fully incorporates
Complainant’s CHOICE HOTELS mark with a typographical error that replaces the
letter “c,” with the letter “s.” In
addition, the disputed <orlandorodewayinn.com> domain name
fully incorporates Complainant’s RODEWAY INN mark with the addition of the
geographical term “
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserted that Respondent does not have rights to
or legitimate interests in the disputed domain names. Once Complainant presents a prima facie case supporting these
assertions, the burden shifts to Respondent to establish it does have rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel
finds that Complainant made a sufficient prima
facie case to support its assertions.
Respondent failed to submit a response to these proceedings; and in such
circumstances, the Panel may assume that Respondent does not have rights to or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the
Panel inspects the record with a view toward determining if the record suggests
that Respondent has rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.”); see also
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Respondent’s disputed domain names resolve to websites that
display links to Complainant’s competitors who also operate hotel
businesses. The Panel finds that Respondent’s
uses of the disputed domain names are not uses in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair uses pursuant
to Policy ¶ 4(c)(iii). See Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see also Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003)
(finding that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Respondent does not appear to be commonly known by the <choisehotels.com> or <orlandorodewayinn.com> domain names. The WHOIS information states Respondent is known as “Richard Jones.” Additionally, the record indicates Complainant has never authorized Respondent to use its CHOICE HOTELS or RODEWAY INN marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and thus has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent has previously engaged in a pattern of cybersquatting. Multiple UDRP panels have transferred disputed domain names from Respondent to the respective complainants. See First Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Yokahama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006); see also BedHead PJs, Inc. v. Jones, FA 952185 (Nat. Arb. Forum May 17, 2007). The Panel finds Respondent’s pattern of registering multiple infringing domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”).
Respondent’s <choisehotels.com> and <orlandorodewayinn.com>
domain names resolve to websites that display links to Complainant’s
competitors, who operate hotel businesses.
The Panel finds that Respondent’s use of the disputed domain names
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640
(Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to
websites that list links to competitors of Complainant, evidence that
Respondent intends to disrupt Complainant’s business, a further indication of
bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Also, Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the website resolving from the
confusingly similar <choisehotels.com> or <orlandorodewayinn.com>
domain names. Thus, the Panel
finds that Respondent is attempting to profit from the goodwill associated with
Complainant’s marks, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also
Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <choisehotels.com> and <orlandorodewayinn.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 9, 2008.
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