Choice Hotels International, Inc. v. Center for Ban on Drugs
Claim Number: FA1358951
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Center for Ban on Drugs (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comfotinn.com>, registered with DIRECTNIC, LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 17, 2010; the National Arbitration Forum received payment November 17, 2010.
On November 17, 2010, DIRECTNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <comfotinn.com> domain name is registered with DIRECTNIC, LTD and that Respondent is the current registrant of the names. DIRECTNIC, LTD verified that Respondent is bound by the DIRECTNIC, LTD registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@comfotinn.com. Also on November 19, 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 December 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. The domain name that Respondent registered, <comfotinn.com>, is identical to Complainant’s COMFORT INN mark.
2. Respondent has no rights to or legitimate interests in the <comfotinn.com> domain name.
3. Respondent registered and used the <comfotinn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International Inc., operates a line of hotels and hotel services under the COMFORT INN mark. This mark is registered with the United States Patent and Trade Office (“USPTO”) (Reg. No. 1,315,180 issued January 15, 1985).
Respondent, Center for Ban on Drugs, registered the domain name <comfotinn.com> on December 2, 2000. The domain name resolves to a links page that displays links to various other hotels and hotel services.
Respondent has been a respondent in numerous other UDRP proceedings where the domain names were transferred from Respondent to the respective complainants. See Vanguard Trademark Holdings USA LLC v. Ctr. for Ban on Drugs, FA 1333299 (Nat. Arb. Forum Aug. 15, 2010); see also Trellian Ltd. v. Ctr. for Ban on Drugs, FA 1217528 (Nat. Arb. Forum Sept. 24, 2008); see also Liberty Mut. Ins. Co. v. Ctr. for Ban on Drugs, FA 956407 (Nat. Arb. Forum May 22, 2007); see also Caterpillar Inc. v. Ctr. for Ban on Drugs, FA 661437 (Nat. Arb. Forum May 2, 2005).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the COMFORT INN mark through its registration of the mark with the USPTO (Reg. No. 1,315,180 issued January 15, 1985). Registration is sufficient for the purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). The Panel finds that Complainant has established the necessary rights in the COMFORT INN mark pursuant to Policy ¶ 4(a)(i).
The Panel also finds that the <comfotinn.com> domain name is confusingly similar to Complainant’s COMFORT INN mark. The only differences between the mark and the domain name are the lack of the space between the words, the omission of the letter “r,” and the addition of the generic-top-level domain (“gTLD”) “.com.” The omission of the space does not distinguish the domain name from the pre-existing mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The omission of the letter “r,” much like that of the space, also does not distinguish the domain name. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). As for the addition of “.com,” numerous panels have held that the addition of a gTLD is not relevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the <comfotinn.com> domain name is confusingly similar to Complainant’s COMFORT INN mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant further alleges that Respondent does not have any rights or legitimate interests in the <comfotinn.com> domain name. Once Complainant makes a prima facie showing to support this allegation, the burden of proof shifts to Respondent to prove that Respondent does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In light of the evidence provided, the Panel finds Complainant made a sufficient prima facie case. Because Respondent failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <comfotinn.com> domain name. However, this Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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).
Complainant contends that Respondent is not commonly known by the disputed domain name. This contention is supported by the fact that the WHOIS information does not match that of the domain name. Also, no other information in the record indicates that Respondent is commonly known by the disputed domain name. Taking this evidence at its face value, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant alleges that Respondent is using the disputed domain name as a links page diverting Internet users to other websites and therefore is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s domain offers a links page that is diverting Internet users away from Complainant’s business. The Panel is permitted to make an inference under such circumstances that Respondent is receiving financial benefit from it through sponsored links or click-through fees. The Panel finds that this redirection of Internet users to a links page is evidence that Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly alleges that Respondent registered and used the disputed domain name in bad faith and that Respondent’s use of the <comfotinn.com> domain name is one in a pattern of bad faith use and registration. Respondent has been a respondent in several UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases. See Vanguard Trademark Holdings USA LLC v. Center for Ban on Drugs, FA 1333299 (Nat. Arb. Forum August 15, 2010); see also Trellian Limited v. Center for Ban on Drugs, FA 1217528 (Nat. Arb. Forum September 24, 2008); see also Liberty Mutual Insurance Company v. Center for Ban on Drugs, FA 956407 (Nat. Arb. Forum May 22, 2007); see also Caterpillar Inc. v. Center for Ban on Drugs, FA 661437 (Nat. Arb. Forum May 2, 2005). The Panel finds this sufficient to constitute a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
Respondent’s website resolves to a links page containing links to third-parties that offer services that are similar to those offered by Complainant. Because these links are competing with Complaint’s offerings in the hotel and hotel services industry, the Panel finds that Respondent’s use is calculated to disrupt Complainant’s business. 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 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).”). The Panel finds that this disruption supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel finds that Respondent is using the <comfotinn.com> domain name to attract users to its website for commercial gain. The Panel presumes that Respondent benefits through sponsored links or click-through fees from this display of links. In order to increase these fees, Respondent has created a confusingly similar domain name with the intent to attract Internet users to its site although they seek Complainant and Complainant’s services. By doing so, Respondent creates confusion as to the sponsorship or affiliation with Complainant. This type of use for gain supports findings of bad faith pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comfotinn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 21, 2010.
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