Choice Hotels International, Inc. v. Martin Koot
Claim Number: FA0909001283172
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 <comfortcarpinteria.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <comfortcarpinteria.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 September 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@comfortcarpinteria.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <comfortcarpinteria.com> domain name is confusingly similar to Complainant’s COMFORT mark.
2. Respondent does not have any rights or legitimate interests in the <comfortcarpinteria.com> domain name.
3. Respondent registered and used the <comfortcarpinteria.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels
International, Inc., uses the COMFORT mark in connection with hotel services,
hotel reservation services, and related goods and services. Complainant holds several registrations of
the COMFORT mark with the United States Patent and Trademark Office (“USPTO”)
(e.g., Reg. No. 1,788,677 issued August 17, 1993).
Respondent, Martin Koot, registered the <comfortcarpinteria.com> domain name on August 24, 2004. The disputed domain name resolves to a website that displays content copied from Complainant’s franchisee’s website and hyperlinks to third-party websites, some of which directly compete with Complainant’s hotel services business.
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 has submitted copies of several registrations of
the COMFORT mark that it holds with the USPTO (e.g.,
Reg. No. 1,788,677 issued August 17, 1993). The Panel is satisfied with Complainant’s
showing and finds that Complainant has sufficiently established rights in the
COMFORT mark under Policy ¶ 4(a)(i). See Miller
Brewing
Respondent’s <comfortcarpinteria.com>
domain name contains Complainant’s entire COMFORT mark, adds the geographic
term “Carpinteria,” a city in
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Upon Complainant making such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). Respondent has failed to submit a response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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 WHOIS information for the <comfortcarpinteria.com> domain name lists “Martin Koot” as the registrant. In addition, Respondent has not submitted any evidence that it is commonly known by the disputed domain name. Moreover, Complainant states it has not authorized or licensed Respondent to use the COMFORT mark. Therefore, the Panel finds that Respondent is not commonly known by the <comfortcarpinteria.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Respondent’s <comfortcarpinteria.com> domain name resolves to a website that features hyperlinks to third-party websites, some of which directly compete with Complainant’s hotel services business. The Panel presumes that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Complainant’s use of the <comfortcarpinteria.com> domain name is 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). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also 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)).
Furthermore, the website resolving from the <comfortcarpinteria.com> domain name
also contains content that was copied from Complainant’s franchisee’s website,
which gives the impression that Complainant is operating the website. Accordingly, the Panel finds that Respondent
is attempting to pass itself as Complainant, which is further evidence that
Respondent lacks rights and legitimate interests in the <comfortcarpinteria.com> domain name
under Policy ¶ 4(a)(ii). See MO
Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent
lacked rights and legitimate interests in the disputed domain name when the
respondent copied the complainant’s websites in their entirety at the disputed
domain names); see also Dream Horse Classifieds v. Mosley, FA 381256
(Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself
off as the complainant by implementing a color scheme identical to the
complainant’s was evidence that respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <comfortcarpinteria.com>
domain name, since it was registered on August 24, 2004, has resolved to a
website that contains hyperlinks to third-party websites, some of which
directly compete with Complainant’s hotel services business. The Panel finds that Respondent’s use of
hyperlinks to redirect Internet users to Complainant’s competitors’ websites
disrupts Complainant’s business. The
Panel further finds that such a disruption constitutes bad faith registration
and use under Policy ¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)); see
also Am. Airlines, Inc. v.
The Panel finds that Respondent’s use of the confusingly
similar <comfortcarpinteria.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name. Moreover,
Respondent is presumably receiving click-through fees for the aforementioned
hyperlinks displayed on the resolving website. Accordingly, the Panel finds
that Complainant’s use of the disputed domain name to presumably commercially
benefit from this likelihood of confusion constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See
Respondent’s website resolving from the <comfortcarpinteria.com> domain name
features content that was copied from Complainant’s franchisee’s website. The Panel finds that Respondent is attempting
to pass itself off as Complainant.
Therefore, the Panel finds that Respondent’s use of the confusingly
similar <comfortcarpinteria.com>
domain name to pass itself off as Complainant is further evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum
May 30, 2003) (finding that the disputed domain name was registered and used in
bad faith where the respondent hosted a website that “duplicated Complainant’s
mark and logo, giving every appearance of being associated or affiliated with
Complainant’s business . . . to perpetrate a fraud upon
individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat.
Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only
registered Complainant’s famous TARGET mark, but “reproduced . . .
Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red
bull’s eye [at the domain name] . . . to a point of being indistinguishable
from the original.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comfortcarpinteria.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 21, 2009
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