Choice Hotels International, Inc. v. Media Magic a/k/a Media Magic Advertising
Claim Number: FA1102001374204
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Media Magic a/k/a Media Magic Advertising (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, <staycomfort.com>, and <qualityinnsa.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 22, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, <staycomfort.com>, and <qualityinnsa.com> domain names are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@comfortinnsanmarcos.com, postmaster@comfortinnuniversalcity.com, postmaster@staycomfort.com, and postmaster@qualityinnsa.com. Also on February 24, 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 March 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <comfortinnsanmarcos.com> and <comfortinnuniversalcity.com> domain names are confusingly similar to Complainant’s COMFORT INN mark.
Respondent’s <staycomfort.com> domain name is confusingly similar to Complainant’s COMFORT mark.
Respondent’s <qualityinnsa.com> domain name is confusingly similar to Complainant’s QUALITY INN mark.
2. Respondent does not have any rights or legitimate interests in the <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, <staycomfort.com>, and <qualityinnsa.com> domain names.
3. Respondent registered and used the <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, <staycomfort.com>, and <qualityinnsa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., uses its COMFORT, COMFORT INN, and QUALITY INN marks in connection with hotel and motel services, including reservation services. Complainant has registered each of the marks with the United States Patent and Trademark Office (“USPTO”): COMFORT (Reg. No. 1,788,677 issued August 17, 1993), COMFORT INN (Reg. No. 1,315,180 issued January 15, 1985), and QUALITY INN (Reg. No. 1,183,294 issued December 22, 1981).
Respondent, Media Magic a/k/a Media Magic Advertising, registered the <comfortinnsanmarcos.com> domain name on January 4, 2001, the <comfortinnuniversalcity.com> domain name on January 11, 2001, the <staycomfort.com> domain name on August 1, 2002, and the <qualityinnsa.com> domain name on February 27, 2003. The comfortinnsanmarcos.com> and <comfortinnuniversalcity.com> domain names currently resolve to websites featuring pay-per-click links to competing hotel reservations services. The <staycomfort.com> domain name was previously used for this same purpose. Currently, the <staycomfort.com> and <qualityinnsa.com> domain names fail to resolve to active websites.
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 has registered its COMFORT, COMFORT INN, and QUALITY INN marks with the USPTO. Registration of a mark with the USPTO is sufficient evidence of a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Therefore, this Panel finds that Complainant’s registrations of its COMFORT (Reg. No. 1,788,677 issued August 17, 1993), COMFORT INN (Reg. No. 1,315,180 issued January 15, 1985), and QUALITY INN (Reg. No. 1,183,294 issued December 22, 1981) marks with the USPTO give Complainant rights in those marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <comfortinnsanmarcos.com> and <comfortinnuniversalcity.com> domain names are confusingly similar to Complainant’s COMFORT INN mark. The disputed domain names incorporate the entire mark, absent the space between the terms, and then add both a geographical term and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these changes are insufficient to distinguish the disputed domain names from Complainant’s COMFORT INN mark. 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 Bond & Co. Jewelers, Inc. v. Texas 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). Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <comfortinnsanmarcos.com> and <comfortinnuniversalcity.com> domain names are confusingly similar to Complainant’s COMFORT INN mark.
Complainant contends that Respondent’s <staycomfort.com> domain name is confusingly similar to Complainant’s own COMFORT mark. The disputed domain name adds the descriptive term “stay” and the gTLD “.com,” which the Panel finds are not significant enough additions to avoid a finding of confusing similarity. See America Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”); 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). Accordingly, the Panel finds that Respondent’s <staycomfort.com> domain name is confusingly similar to Complainant’s own COMFORT mark under Policy ¶ 4(a)(i).
Finally, Complainant alleges that Respondent’s <qualityinnsa.com> domain name is confusingly similar to Complainant’s QUALITY INN mark. The disputed domain name adds the letters “sa” and the gTLD “.com” to Complainant’s entire mark, while deleting the space between the terms. The Panel finds that the addition of two letters along with a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Reese v. Morgan, supra; see also Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., supra. The Panel finds that, according to Policy ¶ 4(a)(i), Respondent’s <qualityinnsa.com> domain name is confusingly similar to Complainant’s QUALITY INN mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has done so, the burden of proof shifts to Respondent to provide affirmative evidence of its rights or legitimate interests in the disputed domain names. 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.”). The Panel finds that Complainant has met its burden, but that Respondent, by failing to respond, has not only failed to meet its burden but also has failed to invoke any circumstance by which it could be found to have rights or legitimate interests in the disputed domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Despite Respondent’s failure to respond, the Panel will examine the complete record to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant argues that nothing in the WHOIS records for the disputed domain names indicates that Respondent is commonly known by any of the disputed domain names. Additionally, Complainant asserts that Respondent is not now, and has never been, licensed or authorized by Complainant to use Complainant’s COMFORT, COMFORT INN, or QUALITY INN marks, or to register or use any domain names incorporating those marks. Upon examination of the record, the Panel cannot find any evidence that Respondent is commonly known by any of the disputed domain names. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name 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 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).
Complainant asserts that Respondent’s <comfortinnsanmarcos.com> and <comfortinnuniversalcity.com> domain names currently resolve to websites featuring pay-per-click links to competing hotel reservations services. Complainant further asserts that Respondent’s <staycomfort.com> domain name was previously used for this same purpose. The Panel presumes that Respondent profits from the receipt of click-through fees from the displayed links. Therefore, the Panel finds that Respondent’s use of the disputed domain names is not one 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts that Respondent’s <staycomfort.com> and <qualityinnsa.com> domain names currently fail to resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is evidence that Respondent has no bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or any legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) associated with the disputed domain names. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel concludes that Respondent’s registration and use of the <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, and <staycomfort.com> domain names to resolve Internet users to websites that feature links to Complainant’s competitors in the hotel and hotel reservations services industries constitutes a disruption of Complainant’s business. Therefore, the Panel finds that Respondent registered and used these disputed domain names in bad faith under Policy ¶ 4(b)(iii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s <staycomfort.com> and <qualityinnsa.com> domain names currently fail to resolve to active websites. The Panel finds that Respondent’s failure to make an active use of these disputed domain names is also evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith)
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 <comfortinnsanmarcos.com>, <comfortinnuniversalcity.com>, <staycomfort.com>, and <qualityinnsa.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 25, 2011
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