Choice Hotels International, Inc. v. this domain ForSale
Claim Number: FA1102001370580
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA. Respondent is this domain ForSale (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uchoicehotel.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 1, 2011.
On February 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <uchoicehotel.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2011 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@uchoicehotel.com. Also on February 2, 2011, 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 February 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. The Forum did receive correspondence from the Respondent which did not contest the granting of relief sought by Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <uchoicehotel.com> domain name is confusingly similar to Complainant’s CHOICE HOTEL mark.
2. Respondent does not have any rights or legitimate interests in the <uchoicehotel.com> domain name.
3. Respondent registered and used the <uchoicehotel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding. The Panel did review correspondence sent to the Forum by the Respondent, found that it did not constitute a Response and that it did not contest the granting of relief sought by the Complainant. Accordingly, the Panel proceeded as though this were a default proceeding.
Complainant, Choice Hotels International, Inc., is owner of the CHOICE HOTELS mark and has used its mark since 1990 in connection with its hotel and lodging services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,717,062 issued May 20, 2003) and in China with the State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 4507553 issued September 7, 2008).
Respondent registered the <uchoicehotel.com> domain name on August 8, 2010. The disputed domain name resolves to a website which offers online hotel reservation services and third-party links in direct competition with Complainant’s hotel and lodging services.
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 argues that it has demonstrated its rights in the CHOICE HOTELS mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002),the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. See also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Here, Complainant holds numerous trademark registrations for its CHOICE HOTELS mark with the USPTO (e.g., Reg. No. 2,717,062 issued May 20, 2003) and with China’s SIPO (e.g., Reg. No. 4507553 issued September 7, 2008). Therefore, the Panel concludes that Complainant has established rights in its CHOICE HOTELS mark under Policy ¶ 4(a)(i) via its federal trademark registration .
Complainant maintains that Respondent’s <uchoicehotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark. The disputed domain name incorporates Complainant’s mark in its entirety and alters it only by deleting the space between the words of the mark, adding the single letter “u,” and adding the generic top-level domain (“gTLD”) “.com.” Accordingly, the Panel finds that the deletion of a space between words of the mark and the affixation of a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s 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 Panel also finds that the addition of a single letter to the disputed domain name is not enough to avoid a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s CHOICE HOTELS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant contends that Respondent has no rights or legitimate interests in the <uchoicehotels.com> domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel determined 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). Here, Complainant has made a prima facie showing in support of its claims against Respondent. Given the fact that Respondent failed to submit a Response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel chooses to first look to the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c) before reaching any conclusions.
Complainant argues that Respondent is not commonly known by the <uchoicehotels.com> domain name. The WHOIS information identifies Respondent as “this domain ForSale,” which is not similar to the disputed domain name. Complainant maintains that Respondent is not licensed or authorized to use its CHOICE HOTELS mark within any domain name. The Panel finds that Respondent is not commonly known by the <uchoicehotels.com> domain name under Policy ¶ 4(c)(ii) since there is no information in the record that would provide a basis for finding that the Respondent is commonly known by the disputed domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to resolve to a website which offers online hotel reservation services and third-party links in direct competition with Complainant’s hotel business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors in the hotel industry 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <uchoicehotels.com> domain name disrupts its business. The resolving website features online hotel reservation services and links to Complainant’s competitors. Internet users searching for Complainant’s hotel and lodging services may instead discover Respondent’s website due to the confusingly similar disputed domain name. Users may then purchase similar hotel accommodations from one of Complainant’s competitors as a result. The Panel concludes that Respondent’s use of the disputed domain name does disrupt Complainant’s business which constitutes bad faith use and registration under 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 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)).
The Panel infers that Respondent likely receives click-through fees from the previously mentioned links. Respondent’s uses the disputed domain name to redirect Internet users to a website featuring services and links that directly compete with Complainant’s hotel business. Internet users searching for Complainant’s website may find Respondent’s website and become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and third-party links. Respondent tries to capitalize off this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the <uchoicehotels.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uchoicehotel.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 26, 2011
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