LodgeWorks, L.P. v. Daniel Kirchhof / Unister GmbHClaim Number: FA1007001336564
Complainant is LodgeWorks,
L.P. (“Complainant”), represented by Casimir
W. Cook, of Roylance, Abrams, Berdo & Goodman,
L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <avia-the-woodlands.com>, <avia-napa.com>, <avia-long-beach.com>, <hotel-sierra-redmond.com>, <hotel-sierra-richmond-west.com>, registered with PSI-USA, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2010.
On July 22, 2010, PSI-USA, Inc. confirmed by e-mail to the National Arbitration Forum that the <avia-the-woodlands.com>, <avia-napa.com>, <avia-long-beach.com>, <hotel-sierra-redmond.com>, and <hotel-sierra-richmond-west.com> domain names are registered with PSI-USA, Inc. and that Respondent is the current registrant of the names. PSI-USA, Inc. has verified that Respondent is bound by the PSI-USA, 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 July 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@avia-the-woodlands.com, postmaster@avia-napa.com, postmaster@avia-long-beach.com, postmaster@hotel-sierra-redmond.com, postmaster@hotel-sierra-richmond-west.com. Also on July 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <avia-the-woodlands.com>, <avia-napa.com>, and <avia-long-beach.com> domain names are confusingly similar to Complainant’s AVIA mark.
Respondent’s <hotel-sierra-redmond.com> and <hotel-sierra-
2. Respondent does not have any rights or legitimate interests in the <avia-the-woodlands.com>, <avia-napa.com>¸<avia-long-beach.com>¸<hotel-sierra-redmond.com>, and <hotel-sierra-richmond-west.com> domain names.
3. Respondent registered and used the <avia-the-woodlands.com>, <avia-napa.com>, <avia-long-beach.com>, <hotel-sierra-redmond.com>, and <hotel-sierra-richmond-west.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LodgeWorks, L.P., holds trademark registrations for its AVIA mark (Reg. No. 3,606,552 issued April 14, 2009) and its HOTEL SIERRA mark (Reg. No. 3,353,018 issued December 11, 2007) with the United States Patent and Trademark Office (“USPTO”). Complainant uses the marks in connection with hotel services, including online information regarding hotel accommodation rates, hotel services featuring incentive programs providing special guest services, amenities, and awards to members.
Respondent, Daniel Kirchhof / Unister GmbH, registered the disputed domain names not earlier than July 17, 2009. The disputed domain names resolve to Respondent’s website that features links to hotel and hospitality services that compete with Complainant.
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 asserts rights in its AVIA (Reg. No. 3,606,552
issued April 14, 2009) and HOTEL SIERRA (Reg. No. 3,353,018 issued December 11,
2007) marks based on its holding of trademark registrations of the marks with
the USPTO. The Panel finds that
registration of its AVIA and HOTEL SIERRA marks with the USPTO is sufficient
evidence of Complainant’s rights in the marks under Policy ¶ 4(a)(i). See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel also finds that it does not matter
whether or not Complainant registered its marks in the country where Respondent
resides or operates. See Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant asserts that Respondent’s <avia-the-woodlands.com>, <avia-napa.com>, and <avia-long-beach.com>
domain names are confusingly similar to Complainant’s AVIA mark. The disputed domain names add hyphens,
geographic terms, and the generic top-level domain (“gTLD”) “.com” to the
entirety of Complainant’s AVIA mark. The
Panel finds that such alterations do not create distinction between the
disputed domain names and Complainant’s mark.
See Sports
Auth. Mich. Inc. v. Batu 5, FA
176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of
a hyphen to Complainant's mark does not create a distinct characteristic capable
of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis.”); see also Am. Online, Inc. v.
Complainant further asserts that Respondent’s <hotel-sierra-redmond.com> and <hotel-sierra-richmond-west.com> domain names are confusingly similar to Complainant’s HOTEL SIERRA mark. The disputed domain names add hyphens, geographic terms, and the gTLD “.com” to the entirety of Complainant’s HOTEL SIERRA mark. The Panel finds that these alterations are not sufficient to remove the disputed domain names from the realm of confusing similarity. See Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar); see also 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <hotel-sierra-redmond.com> and <hotel-sierra-richmond-west.com> domain names are confusingly similar to Complainant’s HOTEL SIERRA mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and 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 Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Complainant further asserts that Respondent is not now, nor has ever been, a licensee or otherwise authorized by Complainant to acquire, appropriate and/or use any of Complainant’s marks. Additionally, the WHOIS information lists the registrant of the disputed domain names as “Daniel Kirchhof / Unister GmbH.” The Panel finds that Complainant’s assertions coupled with the WHOIS information provide sufficient evidence that Respondent is not commonly known by the disputed domain names 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s disputed domain names resolve to Respondent’s website that features links to hotel and hospitality services that directly compete with Complainant. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to display links to Respondent’s website that competes with Complainant in the hotel services industry is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <avia-the-woodlands.com>, <avia-napa.com>, <avia-long-beach.com>¸ <hotel-sierra-redmond.com>, and <hotel-sierra-richmond-west.com> domain names to attract Internet users seeking Complainant’s goods and services and redirect them to Respondent’s website constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent purports to operate in the hotel and hospitality services industry. The Panel presumes that Respondent likely profits in some way from the use of the disputed domain names that resolve to Respondent’s own website. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by registering and using the confusingly similar disputed domain names. The Panel concludes that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <avia-the-woodlands.com>, <avia-napa.com>, <avia-long-beach.com>¸ <hotel-sierra-redmond.com> and <hotel-sierra-richmond-west.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: September 1, 2010
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