national arbitration forum

 

DECISION

 

Choice Hotels International, Inc. v. Balata.com Ltd

Claim Number: FA0903001250785

 

PARTIES

 

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP, Washington, DC, USA.  Respondent is Balata.com Ltd (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com>, registered with Black Ice Domains, Inc.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2009.

 

On March 12, 2009, Black Ice Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com> domain names are registered with Black Ice Domains, Inc and that Respondent is the current registrant of the names.  Black Ice Domains, Inc has verified that Respondent is bound by the Black Ice Domains, Inc 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 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@comfortsuitessumter.com, postmaster@sleepinn-miamiairport.com, and postmaster@sleepinnsumter.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <comfortsuitessumter.com> domain name is confusingly similar to Complainant’s COMFORT SUITES mark.  Respondent’s <sleepinn-miamiairport.com> and <sleepinnsumter.com> domain names are confusingly similar to Complainant’s SLEEP INN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com> domain names.

 

3.      Respondent registered and used the <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com> domain names in bad faith.

 

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

 

FINDINGS

 

Complainant, Choice Hotels International, Inc., holds several trademark registrations in the COMFORT SUITES (Reg. No. 1,712,482 issued Sept. 1, 1992) and SLEEP INN (Reg. No. 1,690,604 issued June 2, 1992) marks with the United States Patent and Trademark Office (“USPTO”) in connection with its hotel and motel franchise company.

 

Respondent registered the the <sleepinn-miamiairport.com> domain name on January 1, 2007; the <sleepinnsumter.com> domain name on January 27, 2008; and the <comfortsuitessumter.com> domain name on February 25, 2008.  The disputed domain names currently resolve to websites purporting to offer self-help advice and display lists of links to third-party websites offering help with motivation, goal setting, and reaching success.  As of December 1, 2008, the <comfortsuitessumter.com> and <sleepinnsumter.com> domain names resolved to websites with links to third parties, some of which were Complainant’s direct competitors.  As of December 1, 2008, the <sleepinn-miamiairport.com> domain name redirected Internet users to a website offering a download of “eMule Accelerator” software. 

 

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 by registering its COMFORT SUITES and SLEEP INN marks with the USPTO, Complainant has established rights in the marks pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

The <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com> domain names use Complainant’s COMFORT SUITES and SLEEP INN marks, respectively, with the space between the words of the marks omitted, add a geographic word and a generic top-level domain (“gTLD”).  The <sleepinn-miamiairport.com> domain name also includes a hyphen between Complainant’s SLEEP INN mark and the geographic words “Miami airport.”  The Panel finds that the dominant features in the disputed domain names are Complainant’s marks and thus the comfortsuitessumter.com> and <sleepinn-miamiairport.com> domain names are confusingly to Complainant’s COMFORT SUITES mark, while the <sleepinnsumter.com> domain name is confusingly similar to the SLEEP INN mark pursuant to Policy ¶ 4(a)(i).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).

 

Moreover, generic top-level domains and punctuation marks are irrelevant when considering Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Because no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the COMFORT SUITES or SLEEP INN marks, and the WHOIS information identifies Respondent as “Balata.com Ltd.”  Thus, the Panel finds that Respondent has not established rights or legitimate interests in any of the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

As of December 1, 2008, the <comfortsuitessumter.com> and <sleepinnsumter.com> domain names resolved to websites with links to third parties, some of which were Complainant’s direct competitors.  The Panel infers that Respondent was receiving pay-per-click fees when Internet users clicked on these links.  The Panel finds that displaying competing links through confusingly similar domain names is not a bona fide offering or goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <comfortsuitessumter.com> and <sleepinnsumter.com> domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).

 

As of December 1, 2008, the <sleepinn-miamiairport.com> domain name redirect Internet users to a website offering a download of “eMule Accelerator” software.  The Panel infers that Respondent received payment for redirecting Internet users to a website offering software unrelated to Complainant’s mark.  The Panel finds that the use of another’s mark to direct Internet users to a completely unrelated website is not a bona fide offering or goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <sleepinn-miamiairport.com> domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).

 

Currently, the disputed domain names resolve to self-help websites on various topics with a list of links to third parties also offering self help.  The resolving websites are completely unrelated to Complainant’s COMFORT SUITES and SLEEP INN marks or business.  The Panel infers that Respondent is attempting to increase traffic to its websites by using Complainant’s marks.  The Panel also infers that Respondent is receiving click-through-fees for the advertisements and links on the resolving websites.  The Panel finds this is not a bona fide offering or goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Bank of Am. Fork, supra; see also The Vanderbilt Univ., supra.

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent was using the <comfortsuitessumter.com> and <sleepinnsumter.com> domain names to resolve to a website containing links to third-party websites that divert Internet users to Complainant’s competitors.  The Panel finds that this prior use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

The website that previously resolved from the <comfortsuitessumter.com> and <sleepinnsumter.com> domain names displayed links to websites related to and in direct competition with Complainant’s business.  The Panel infers that Respondent received either pay-per-click fees or advertising fees for these advertisements.  Because the disputed domain names are confusingly similar to Complainant’s marks, Internet users are likely to become confused as to Complainant’s affiliation or sponsorship of the disputed domain names and resolving website.  Respondent presumably was seeking to profit from this confusion by hosting advertisements on the resolving website.  The Panel finds this prior use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See American 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 Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

Also, Respondent was using the <sleepinn-miamiairport.com> domain name redirect Internet users to a website offering a download of “eMule Accelerator” software.  The Panel infers that Respondent received payment for redirecting Internet users to a website offering software unrelated to Complainant’s mark.  The use of Complainant’s mark in the disputed domain name would likely result in confusion among Internet users as to Complainant’s affiliation, sponsorship, or endorsement of the resolving website.  The Panel finds that Respondent’s attempt to profit from this confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

Furthermore, Respondent is currently using all three disputed domain names to resolve to websites offering self-help advice and links to third-party websites offering similar advice.  This use is completely unrelated to the plain meaning of the disputed domain names or Complainant’s COMFORT SUITES and SLEEP INN marks.  The Panel infers that Respondent receives click-through-fees for directing Internet users to unrelated third-party websites.  The use of Complainant’s marks in the disputed domain names is likely to cause confusion among Internet users accessing the resolving website as to Complainant’s affiliation, sponsorship, or endorsement of the resolving website.  The Panel finds that Respondent’s attempt to profit from this confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp., supra.

 

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

 

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 <comfortsuitessumter.com>, <sleepinn-miamiairport.com>, and <sleepinnsumter.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  April 29, 2009

 

 

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