national arbitration forum

 

DECISION

 

Choice Hotels International, Inc. v. Damian Macafee c/o QTK Internet/Name Proxy

Claim Number: FA0902001249545

 

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP, Washington, D.C., USA.  Respondent is Damian Macafee c/o QTK Internet/Name Proxy (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2009.

 

On February 26, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 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@comfortinn-bellingham.com, postmaster@econolodgelasvegas.com, and postmaster@econolodgeofrichmond.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 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <comfortinn-bellingham.com> domain name is confusingly similar to Complainant’s COMFORT INN mark.  Respondent’s <econolodgelasvegas.com> and <econolodgeofrichmond.com> domain names are confusingly similar to Complainant’s ECONO LODGE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names.

 

3.      Respondent registered and used the <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Choice Hotels International, Inc., provides hotel and hotel reservation services, along with other related services internationally.  Complainant is one of the largest hotel franchisors, with over 2,000 COMFORT INN hotels and 800 ECONO LODGE hotels worldwide.  Complainant has registered its COMFORT INN and ECONO LODGE marks with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,315,180 issued January 15, 1985; and Reg. No. 813,642 issued August 23, 1966, respectively), along with other governmental trademark authorities worldwide.  Complainant also owns and operates the <comfortinn.com> and <econolodge.com> domain names in connection with its operations.

 

Respondent registered the disputed <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names on October 25, 2005, August 19, 2005, and July 19, 2005, respectively.  Each of the disputed domain names resolves to the <roomsusa.com> wherein directly competitive hotel reservation services are offered.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations of its COMFORT INN and ECONO LODGE marks with the USPTO and other governmental trademark authorities worldwide demonstrate Complainant’s rights in the marks under Policy ¶ 4(a)(i).  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

The disputed <comfortinn-bellingham.com> domain name contains Complainant’s COMFORT INN mark with the following additions: (1) a hyphen; (2) the geographic term “bellingham;” and (3) the generic top-level domain “.com.”  The Panel notes that the additions of punctuation, such as a hyphen, and a generic top-level domain are considered immaterial under a Policy ¶ 4(a)(i) analysis.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).  Moreover, the addition of a geographic term tends to heighten the confusing similarity, as it lends to the impression that the disputed domain name refers to a specific location in which Complainant operates.  See, e.g., InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).  Therefore, the Panel finds that the <comfortinn-bellingham.com> domain name is confusingly similar to Complainant’s COMFORT INN mark under Policy ¶ 4(a)(i).

 

The disputed <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names contain Complainant’s ECONO LODGE mark with the following additions: (1) the geographic terms “las vegas” or “richmond;” (2) the generic top-level domain “.com;” and/or the generic preposition “of.”  The Panel reiterates its earlier findings concerning how these additions fail to create any meaningful distinction capable of thwarting a finding of confusing similarity.  See Innomed Techs., supra; see also InfoSpace, Inc., supra; see also Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”).  Therefore, the Panel finds that the <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names are confusingly similar to Complainant’s ECONO LODGE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names.  Complainant has established a sufficient prima facie case supporting its allegations, thus the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

The WHOIS information lists Respondent as “Damian Macafee c/o QTK Internet/Name Proxy.”  Complainant alleges that Respondent lacks license or authorization to use either of Complainant’s marks in any fashion.  There is no contrary assertion within the record to counter a finding that Respondent is not commonly known by the disputed domain names, and the Panel therefore makes such a finding under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

The disputed domain names resolve to a website at the <roomsusa.com> domain name that offers directly competitive hotel reservation services.  The offering of strictly competing services through the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See, e.g., 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

As mentioned above, the disputed domain names resolve to a directly competitive website.  That an intent was formulated to disrupt Complainant’s business through this use of the disputed domain names is clear, and in any event Respondent has not come forth with evidence indicating otherwise.  The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).  See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

 

Moreover, the commercial gain that results from this competitive use of the confusingly similar disputed domain names is patently clear.  The foundation of this diversion is the likelihood of confusion that was intentionally created between Complainant’s marks (and their surrounding goodwill) and the disputed domain names.  Therefore, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <comfortinn-bellingham.com>, <econolodgelasvegas.com>, and <econolodgeofrichmond.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  April 10, 2009

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum