LivINN Suites, Ltd. v. Daniel Kirchhof / Unister GmbH
Claim Number: FA1012001362675
Complainant is LivINN Suites, Ltd. (“Complainant”), represented by Benjamin P. Freedland of Leonard, Street and Deinard, P.A., Minnesota, USA. Respondent is Daniel Kirchhof / Unister GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com>, registered with PSI-USA, Inc. d/b/a Domain Robot.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2010; the National Arbitration Forum received payment on December 10, 2010.
On December 9, 2010, PSI-USA, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names are registered with PSI-USA, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the names. PSI-USA, Inc. d/b/a Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@livinn-suites.com, postmaster@livinn-suites-maplewood.com, postmaster@livinn-suites-fridley.com and postmaster@livinn-suites-sharonville.com. Also on December 10, 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 January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names are confusingly similar to Complainant’s LIVINN SUITES mark.
2. Respondent does not have any rights or legitimate interests in the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names.
3. Respondent registered and used the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LivINN Suites, Ltd., is the owner and operator of hotels located in Minnesota and Ohio in the United States. Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the LIVINN SUITES mark (Reg. No. 2,936,821 issued March 29, 2005).
Respondent, Daniel Kirchhof / Unister GmbH, registered the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names no earlier than July 17, 2009. The disputed domain names all resolve to the <hotelreservations.com> domain name, a hotel reservation website that competes directly with the Internet, telephone and in-person reservation services provided by 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 owns a USPTO registration for the LIVINN SUITES mark (Reg. No. 2,936,821 issued March 29, 2005). The Panel finds that a trademark registration with the USPTO provides sufficient evidence to prove Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even though Respondent lives or operates in a country other than where the mark is registered. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names are confusingly similar to Complainant’s LIVINN SUITES mark. All of the disputed domain names include Complainant’s mark but replace the space between terms with a hyphen. The <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names all add another hyphen followed by geographic term. All four disputed domain names also append the generic top-level domain (“gTLD”) “.com.” The Panel finds that replacing the space between terms with a hyphen and adding a gTLD have no effect on preventing a finding of confusing similarity. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel also finds that adding a geographic term following an extra hyphen to Complainant’s mark does not dispel confusing similarity according to Policy ¶ 4(a)(i). 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)(i)); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). Thus, the Panel finds that Respondent’s <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names are confusingly similar to Complainant’s LIVINN SUITES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) places the burden of establishing a prima facie case upon Complainant. Only after such a prima facie case has been presented does the Policy allow the burden of proving rights and legitimate interests to be transferred to Respondent. In the instant proceeding, Complainant has met this burden. Respondent, however, failed to respond and thus failed to satisfy its obligation of proof. The Panel accordingly infers that Complainant’s allegations are true and that Respondent does not possess rights and legitimate interests in the disputed domain names. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). The Panel will consider all the evidence in the record in light of the Policy ¶ 4(c) factors, however, in order to determine whether Respondent has any rights and legitimate interests in the disputed domain names.
Complainant argues that Respondent is not commonly known by the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names because the WHOIS information lists the registrant as “Daniel Kirchhof / Unister GmbH.” The Panel finds that the lack of association between the WHOIS information and the disputed domain names indicates that Respondent is not commonly known by the disputed domain names and does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that all of Respondent’s <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names redirect Internet users to the <hotelreservations.com> domain name, a hotel reservation service that competes directly with Complainant’s Internet, telephone, and in-person reservation services. Complainant argues that using the disputed domain names for such a diversionary and competitive purpose is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names all resolve to the competitive <hotelreservations.com> domain name. Respondent’s resolving website at the <hotelreservations.com> domain name offers competitive hotel reservation services, including reservations to hotels other than Complainant’s. The Panel finds that providing such competing services under Complainant’s mark disrupts Complainant’s business and shows bad faith registration and use for the purposes of Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent intentionally includes Complainant’s LIVINN SUITES mark in the <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names in order to attract Complainant’s intending customers and divert them to Respondent’s competing hotel reservations website. Complainant alleges that Respondent presumably profits from the website at the <hotelreservations.com> domain name as it misleads Internet users into believing that Respondent’s website is somehow affiliated with or sponsored by Complainant. The Panel finds that Respondent’s intention to divert and mislead Complainant’s customers for Respondent’s profit demonstrates bad faith registration and use according to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds 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 <livinn-suites.com>, <livinn-suites-maplewood.com>, <livinn-suites-fridley.com>, and <livinn-suites-sharonville.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 17, 2011
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