Choice Hotels International, Inc. v. Duckwater, Inc.
Claim Number: FA0812001238851
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sleep-inn-orlando.com>, registered with Godaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2009 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@sleep-inn-orlando.com by e-mail.
Due to an administrative error, the
case was recommenced on
On January 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2009 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@sleep-inn-orlando.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sleep-inn-orlando.com> domain name is confusingly similar to Complainant’s SLEEP INN mark.
2. Respondent does not have any rights or legitimate interests in the <sleep-inn-orlando.com> domain name.
3. Respondent registered and used the <sleep-inn-orlando.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, is a nationwide
leader in hotel services. Complainant
uses the SLEEP INN mark in association with its advertisement and facilitating
of hotel services. Complainant owns a
number of federal trademark registrations for the SLEEP INN mark with the
United States Patent and Trademark Office (“USPTO”) (i.e. Reg. 1,690,604 issued
Respondent registered the <sleep-inn-orlando.com> domain name on
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."
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(e), 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 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 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.
Complainant’s registration of its SLEEP INN mark with the
USPTO establishes rights in its SLEEP INN mark pursuant to Policy ¶
4(a)(i). See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have
held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive."); see
also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum
Complainant alleges that Respondent’s disputed domain name
is confusingly similar to Complainant’s SLEEP INN mark pursuant to Policy ¶
4(a)(i). Respondent’s <sleep-inn-orlando.com> domain name contains
Complainant’s mark in its entirety, adds hyphens, adds the geographic location
“orlando,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
geographic term to a registered mark in a disputed domain name fails to prevent
the disputed domain name from being confusingly similar to the mark. See
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that the respondent’s domain name <net2phone-europe.com> is
confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a
domain name from being found confusingly similar"); see also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name
<cmgiasia.com> is confusingly similar to the complainant’s CMGI mark). In addition, the Panel finds that the
addition of a gTLD and hyphens are irrelevant in distinguishing a disputed
domain name from a registered mark. See Health Devices Corp. v.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the disputed domain name. Once
Complainant makes a prima facie case
in support of its allegations, the burden shifts to Respondent to prove that it
has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case Complainant
has established a prima facie
case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to the failure of Respondent to respond to the
Complaint, the Panel may assume that Respondent lacks rights and legitimate
interests in the disputed domain name. See Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
Complainant contends that Respondent is neither commonly
known by the disputed
domain name, nor licensed to register domain names using the SLEEP INN
mark. Respondent’s WHOIS information
identifies Respondent as “Duckwater, Inc.”
The Panel finds that without any affirmative evidence, Respondent is not
commonly known by the disputed domain name and lacks rights and legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Complainant presents evidence that Respondent is using the <sleep-inn-orlando.com> domain name to redirect
unknowing Internet users to the website located at the <bestcoachusa.com>
domain name, where Respondent offers transportation products and services
unrelated to Complainant. The Panel
finds that the use of a confusingly similar disputed domain name to redirect unknowing
Internet users to a commercial website is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith where the disputed domain name resolves to Respondent’s commercial website. The Panel finds that such use of a confusingly similar disputed domain name to commercially benefit Respondent by creating a likelihood of confusion between the disputed domain name and Complainant’s registered mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sleep-inn-orlando.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 16, 2009
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