National Arbitration Forum

 

DECISION

 

Choice Hotels International, Inc. v. Domain Admin care of Logical Sites, Inc. a/k/a Domain Administrator care of Logical Sites, Inc.

Claim Number: FA1003001310645

 

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP, Washington, DC, USA.  Respondent is Domain Admin care of Logical Sites, Inc. a/k/a Domain Administrator care of Logical Sites, Inc. (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <eurekaspringscomfortinn.com> and <surfsideeconolodge.com>, registered with Moniker.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Jeffrey M. Samuels, Tyson R. Atkinson, Jr., and Diane Cabell, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2010.

 

On March 3, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <eurekaspringscomfortinn.com> and <surfsideeconolodge.com> domain names are registered with Moniker and that the Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eurekaspringscomfortinn.com and postmaster@surfsideeconolodge.com.  Also on March 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.[1]

 

A timely Response was received and determined to be complete on March 18, 2010.

 

Complainant’s Additional Submission was received on March 23, 2010 in compliance with Supplemental Rule 7. 

 

Respondent, on March 26, 2010, filed a “Response to the Additional Submission from Complainant.”

 

On March 26, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Tyson R. Atkinson, Jr., and Diane Cabell, as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant Choice Hotels International is one of the world’s largest lodging franchisors, with over 5,000 hotels around the world.  Complainant owns numerous federal registrations in the U.S. and abroad for the service marks COMFORT INN and ECONO LODGE, as used in connection with hotel and motel services, including online reservation services.  See Complaint, Annex A.[2]  The COMFORT INN mark was first used since at least as early as June 1981.  The ECONO LODGE mark has been in use since at least as early as May 1965.   Both marks have been widely advertised and publicized.  Complainant also owns the domain names confortinn.com and econolodge.com.

 

Complainant asserts that the disputed domain names are identical or confusingly similar to marks in which it has rights.  Complainant points out that the domain names wholly incorporate the COMFORT INN or ECONO LODGE mark.  It contends that the addition of the geographic terms “Eureka Springs” and “Surfside” does not reduce the confusing similarity between the marks and domain names.  Indeed, Complainant argues, the geographic identifiers “Eureka Springs” and “Surfside” “merely exacerbate confusion given that Eureka Springs and Surfside are commonly known resort destinations in the U.S. where tourists might naturally presume Complainant’s hotels are located.”

 

Complainant further indicates that Respondent has no rights or legitimate interests in the disputed domain names.  Complainant maintains that Respondent is not now, and has never been, licensed or authorized by Complainant to use the COMFORT INN or ECONO LODGE mark or to register or use any domain names incorporating such marks.

 

Complainant notes that Respondent registered the eurekaspringscomfortinn.com name on March 24, 2000 and the surfsideeconolodge.com domain name on August 6, 2007, well after Complainant’s first use of such marks.  According to Complainant, the eurekaspringscomfortinn.com domain name redirects internet users to a commercial web site located at eurekasprings.com, which displays information about Eureka Springs, Arkansas and prominently promotes hotel services that directly compete with Complainant. Respondent’s surfsideeconolodge.com domain name resolves to a pay-per-click website offering links to hotel services that directly compete with Complainant.  See Complaint, Annex C.

 

Complainant asserts that “Respondent’s use of the entire Marks in the Disputed Domain Names makes it difficult to infer a legitimate use…. Further, use of a confusingly similar domain name to direct unsuspecting consumers to competitive third-party services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.” There is also, Complainant adds, nothing indicating that Respondent claims to be named, or is commonly known as, COMFORT INN or ECONO LODGE and/or the disputed domain names.

 

With respect to the issue of bad faith registration and use, Complainant maintains that: (1) registration of a confusingly similar domain name with knowledge of another’s mark is evidence of bad faith; (2) its COMFORT INN and ECONO LODGE marks are well-known and widely advertised in the U.S. and abroad and that the well-known nature of a mark “creates a prima facie presumption that the respondent registered the domain name … to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark”; (3) it can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the marks because the domain names were registered many years after Complainant first used the COMFORT INN and ECONO LODGE marks and obtained federal registration; (4) Respondent registered the disputed domain names to take advantage of Complainant’s well-known marks by confusing and diverting internet users to the disputed domain names, which are not owned by or affiliated with Complainant, and offer hotel reservation services in direct competition with those offered by Complainant; (5) attracting and diverting internet users seeking information about Complainant’s hotel properties to third party websites unaffiliated with Complainant is a disruption of Complainant’s business; and (6) Respondent has a history of bad faith registration and use of domain names, having been found to have violated ICANN policy in connection with his registration and use of the domain name myflorida.mobi.[3]

 

B. Respondent

In its Response, Respondent “admit[s] that the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”[4]

 

However, Respondent asserts that it has rights and legitimate interests in the subject domain names.   Respondent explains that surfsideeconolodge.com originally belonged to the Econolodge in Bradenton Beach, Florida and that the hotel was a paying client.  The Bradenton Beach Econolodge was an authorized licensee of Complainant.  The hotel, apparently, closed in 2003 and the domain name was due to expire in 2007.  Respondent purchased the domain name in a so-called “name-drop” auction for $60.  See Response, Appendix 4.  According to Respondent, “it is well established through UDRP cases that if a trademark holder abandons a name, they do not have an automatic right to have the domain name returned to them.”[5] 

 

With respect to the eurekaspringscomfortinn.com domain name, Respondent indicates that the Comfort Inn in Eureka Springs, Arkansas, which, at one point, owned the domain name was a client of Respondent.  Respondent indicates that the owner of the hotel informed Respondent in the spring of 2006 that she was having problems paying Respondent because of a fire at the hotel.

 

“Later, it turned out that this was just an excuse to buy time so that [the owner] could move all the web material from eurekaspringscomfortinn to a new site, namely comfortinneurekasprings.com.  Once we discovered this theft of copyrighted material belonging to us, we demanded payment in full of the entire outstanding bill.  Suffice it to say that [the owner] did not pay the $621 owned to us, nor did she care to rectify the copyright infringement she had committed….

 

“Furthermore, and most importantly, by not paying any portion of our bill to her, [the owner] abandoned eurekaspringscomfortinn.com.  Our very last bill we sent to her, which we sent 3 times, had as the first item `Renewal of eurekaspringscomfortinn.com (for one year)’. The second late notice has our standard bright orange insert stating that all services and products will be cancelled if payment is not received.

 

“The Complainant licenses entities who employ people of various skill levels in the area of intellectual property, does nothing in their licensing agreements to force the licensee to use an intellectual property attorney for IP matters …. Yet they expect us to just roll over and hand over these names when their licensees abandon domain names.”

 

Respondent contends that it did not register and does not use the disputed domain names in bad faith. It reiterates the domain names were abandoned by Complainant’s licensees and points out that it has not registered any other names involving Complainant’s marks, nor did it approach Complainant offering to sell the names.  “When we offered to relinquish surfsideeconolodge in August 2008 for $368, it merely reflected our weak interest in that particular domain name,” and we clearly said that.  See Response, Appendix 1.

 

Respondent also notes that it has won several UDRP cases, involving the domain names scania.mobi[6] and heathrow.com. “In both of these cases …, the Panelist ruled that I or my company had rights in the disputed domain names and thus denied the Complainant’s request.  They ruled that I had rights in these names, Scania the truck manufacturer and Heathrow the airport notwithstanding.  In other words, the Panel found that, also under the UDRP, trademark holder’s rights are limited.  We submit that the Panel should similarly deny this Complaint for two reasons: 1/ We have rights and a legitimate interest in the disputed domain names and 2/ this is not the proper forum to decide cases involving abandoned domain names.”

 

Respondent further argues that Complainant’s citation of one UDRP case to show a history of bad faith registration and use is ridiculous, given the number of cases it has won, and that it is not in competition with Complainant.

 

Respondent also contends that its use of the domain names is not likely to result in any consumer confusion.  “So the question the (sic) becomes: would a sufficiently large number of people looking at these websites think that either is sponsored by, affiliated with or endorsed by Complainant?  While I cannot prove it without [an] extensive and expensive survey, I am confident that such a survey would show that an insignificant percentage would think so.  In other words, Complainant would fail to be able to demonstrate confusion among the public in a court of law.  Almost no one looking at the sites under the disputed domain names would think they are affiliated with Complainant.” 

 

Respondent concludes by noting that it is engaged in the publishing of geographic portal websites and that its intent in owning the disputed domain names is to publish geographic portal websites and nothing else.  Respondent indicates that it earned less than $720 in 2009 from domain name parking.

 

 

C. Additional Submissions

In its Additional Submission, Complainant argues that the Bradenton Beach ECONO LODGE never authorized Respondent to register the domain name in Respondent’s name and, in any case, Complainant would not have authorized such an action.

 

Complainant contends that the decision in the superfuzz.com case does not support Respondent’s contention that, if a trademark holder abandons a name, it does not have the automatic right to have the domain name returned to it.  Complainant indicates that the panel in the superfuzz.com case denied the request to transfer because complainant had abandoned the SUPER FUZZ mark before respondent registered the superfuzz.com domain name and the term “super fuzz” was commonly understood to refer to an electrical distortion device for guitars and respondent used his website in good faith to promote guitar accessories.  In this case, Complainant emphasizes, Complainant has not abandoned either the ECONO LODGE or COMFORT INN marks, neither of the marks is a common descriptive term, and Respondent is only using the domain names to profit from the goodwill in Complainant’s marks.

 

With regard to the eurekaspringscomfortinn.com domain name, Complainant notes that any dispute between Respondent and the property owner is outside the scope of this proceeding and that Respondent registered the domain name in its own name.  Complainant indicates that the franchised hotel had no authority to grant Respondent any right to use the COMFORT INN mark or register the mark in any domain name.  See Additional Submission, Exhibit A.  Citing Michael Miller v. J. Eric Arterburn c/o Soda Sunglasses, FA 832822 (Nat. Arb. Forum Dec. 29, 2006), Complainant asserts that “[a] web site developer’s registration of a domain name in its client name and then failing to relinquish the domain name after the business relationship has ended is `unmistakable’ evidence of bad faith use and registration.”

 

Complainant also contends that Respondent has demanded sums in excess of its registration costs to transfer the disputed domain names to Complainant.  Complainant indicates that Respondent first offered to sell the domain names to Complainant for $368 and then demanded payment of $600.  See Additional Submission, Exhibit B.[7]

 

In its “Response … to the Additional Submission of Complainant,”[8]  Respondent first challenges the statement in Complainant’s additional submission that Respondent admitted that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which Complainant has rights.”  According to Respondent, “[w]e did no such thing.  We admitted everything in 5.A. of the Complaint, a section in which neither the word `confusingly’ nor any variation of it exists.  This is a key point, because although the disputed domain names contain the Complainant’s Marks, the Panel will have to decide whether the domain names themselves or our use of them causes confusion among the public.”[9]  With respect to the likelihood of confusion issue, Respondent asserts that “no one in their right mind would visit surfsideeconolodge.com or eurekaspringscomfortinn.com and think that these sites are Choice Hotel websites, or somehow affiliated by or sponsored by that brand.”

 

Respondent also denies the allegation that it registered the domain names to benefit from Complainant’s marks.  “We acquired these domain names when the Complainant’s licensees abandoned them and we acquired them for the traffic that they might have….”

 

Respondent also takes issue with Complainant’s characterization of both the “superfuzz” and Soda Sunglasses cases.  Respondent indicates that the panel in the former case did not find that complainant had abandoned the mark and in the latter case did not hold that failing to relinquish a domain name after a business relationship has ended is “unmistakable evidence of bad faith use and registration.”  Rather, according to Respondent, the panel in the Soda Sunglasses case held that “Respondent’s actions unmistakably provide evidence of bad faith registration and use.” [10]

 

Respondent further argues that Complainant’s reliance on Exhibit B to its additional submission in an effort to establish bad faith registration and use is improper.  It contends that such exhibit constitutes inadmissible evidence under Rule 408 of the Federal Rules of Evidence since it was sent as part of an attempt to settle the matter.  

 

FINDINGS

The Panel finds that: (1) the disputed domain names are confusingly similar to a trademark(s) or service mark(s) in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the subject domain names; and (3) the domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

Even if we did not find that Respondent has conceded that the disputed domain names are identical or confusingly similar to Complainant’s marks, it is clear to the Panel that the domain names are confusingly similar to Complainant’s marks.  Both names incorporate Complainant’s marks in their entirety, merely adding a geographic term and the generic top-level domain “.com.”  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun,” to the end of the CHEAPTICKETS mark in the cheapticketscancun.com, cheapticketscancun.biz, cheapticketscancun.net, and cheapticketscancun.org domain names does not overcome a finding of confusing similarity under Policy ¶4(a)(1)).

 

The Panel also determines that, as a result of its registration and use of the COMFORT INN and ECONO LODGE marks, Complainant has rights in such marks. 

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names and that Respondent has not shown the contrary. Respondent asserts that it has rights or legitimate interests in this case because it registered the domain names only after Complainant’s licensees abandoned such domain name registrations.  There is no evidence, however, that the licensees, let alone Complainant, authorized such action by Respondent.  Indeed, the evidence indicates that the licensees could not legally have authorized such action. Regardless, registration after abandonment does not, of itself, establish a right or legitimate interest.

 

The evidence further establishes that Respondent is not making a bona fide offering of goods or services under the domain names, is not commonly known by the domain names, and is not making a noncommercial or fair use of such names.  The evidence indicates that the disputed domain names resolve or redirect to commercial websites featuring third-party links to businesses that directly compete with Complainant.  A majority of the Panel is of the opinion that such use does not constitute a “bona fide” offering under the Policy.  See Persohn v. Lim, FA874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting internet users to a commercial search engine website with links to multiple websites that may be of interest to complainant’s customers and presumably earning “click-through fees” in the process); St. Lawrence Univ. v. Nextnet Tech, FA881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under ¶Policy 4(c)(1) or a legitimate noncommercial or fair use under ¶Policy 4(c) (iii).  The third Panelist believes that there is no bona fide right or interest because Respondent registered the domain in an attempt to obtain settlement of a debt owed it and not for a legitimate fair use. 

 

Registration and Use in Bad Faith

 

The Panel unanimously determines that the disputed domain names were registered and are being used in bad faith.  As determined above, the domain names are confusingly similar to Complainant’s ECONO LODGE and COMFORT INN marks. The Panel further finds that Respondent, through his employment with Complainant’s franchisees, as well as the longstanding and widespread use of such marks, was aware of such marks at the time the domain names were registered.  The evidence also indicates that the disputed domain names resolve to commercial websites featuring third-party links to businesses that directly compete with Complainant and that Respondent earns income[11] through such activity. 

 

In view of the above, the Panel concludes that, by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, internet users to such sites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of such sites or the services on such sites, within the meaning of ¶Policy 4(b)(iv). 

 

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 <eurekaspringscomfortinn.com>< surfsideeconolodge.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panel Chair
Dated: April 9, 2010

 

 

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