national arbitration forum

 

DECISION

 

Choice Hotels International, Inc. v. Alan Davison

Claim Number: FA1102001374454

 

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Eva J. Pulliam of Arent Fox LLP, Washington, D.C, USA.  Respondent is Alan Davison (“Respondent”), Vanuatu.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <comfortinnhampton.com>, registered with OnlineNIC  and  <comfortinnwinstonsalem.com>, registered with DOMAINTIMEMACHINE.COM LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 23, 2011; the National Arbitration Forum received payment February 23, 2011.

 

On March 2, 2011, OnlineNIC, confirmed by e-mail to the National Arbitration Forum that the <comfortinnhampton.com> domain name is registered with OnlineNIC and that Respondent is the current registrant of the name.  OnlineNIC  verified that Respondent is bound by the OnlineNIC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 21, 2011, DOMAINTIMEMACHINE.COM LLC confirmed by e-mail to the National Arbitration Forum that the <comfortinnwinstonsalem.com> domain name is registered with DOMAINTIMEMACHINE.COM LLC and that Respondent is the current registrant of the name.  DOMAINTIMEMACHINE.COM LLC verified that Respondent is bound by the DOMAINTIMEMACHINE.COM LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@comfortinnhampton.com and postmaster@comfortinnwinstonsalem.com.  Also on March 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 April 15, 2011, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant. 

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names are confusingly similar to Complainant’s COMFORT INN mark.

 

2.    Respondent does not have any rights to or legitimate interests in the <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names.

 

3.    Respondent registered and used the <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Choice Hotels International, Inc., is the owner of the COMFORT INN mark and has used the mark in connection with its hotel and motel services since 1981.  Complainant holds numerous trademark registrations for the COMFORT INN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,315,180 issued January 15, 1985). 

 

Respondent, Alan Davison, registered the <comfortinnhampton.com> domain name on February 21, 2004, and the <comfortinnwinstonsalem.com> domain name on July 10, 2008.  The disputed domain names resolve to a website featuring reviews of Complainant’s hotels, as well as links to competing hotel reservation services.

 

DISCUSSION

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.

 

Identical to and/or Confusingly Similar

 

Complainant argues that it has established rights in the COMFORT INN mark.  In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the Panel determined that the complainants had established rights in marks where the marks were registered with a trademark authority.  See also 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.”).  Complainant is not required to register its mark within the country where Respondent resides or operates so long as it has registered a mark in some jurisdiction.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Here, Complainant holds numerous trademark registrations for its COMFORT INN mark with the USPTO (e.g., Reg. No. 1,315,180 issued January 15, 1985).  The Panel concludes that Complainant demonstrated rights in the COMFORT INN mark, under Policy ¶ 4(a)(i), via its registration with a trademark authority. 

 

Complainant alleges that Respondent’s <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names are confusingly similar to Complainant’s COMFORT INN mark.  Both of the disputed domain names utilize Complainant’s mark in its entirety.  The domain names differ from Complainant’s mark only through the addition of the geographical terms “winston salem” and “hampton,” which reference two of Complainant’s hotel locations, the addition of the generic top-level domain (“gTLD”) “.com,” and the deletion of the space between words of the mark.  The Panel finds that addition of geographic terms does not adequately distinguish the disputed domain name from Complainant’s mark.  See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).  The Panel also finds that the deletion of a space and the affixation of a gTLD do not serve to avoid a finding of confusing similarity.  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); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). 

The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s COMFORT INN mark under Policy; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant argues that Respondent has no rights to or legitimate interests in the disputed domain names.  In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”  Here, Complainant has made a prima facie case against Respondent.  Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has not asserted any rights or legitimate interests under Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, this Panel still looks to the record to determine whether evidence shows that Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant contends that Respondent is not commonly known by the disputed domain names.  The WHOIS information identifies Respondent as “Alan Davison,” which is not nominally similar to the disputed domain name.  Complainant further contends that Respondent has never been licensed or authorized to use its COMFORT INN mark in any way.  The Panel finds that Respondent is not commonly known by the <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names under Policy ¶ 4(c)(ii), and no information in the record would indicate otherwise.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

 

Respondent’s disputed domain names resolve to websites that feature reviews and descriptions of Complainant’s hotels.  The resolving websites also feature third-party links to competing hotel reservation services.  Respondent likely collects click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain names to direct Internet users to Respondent’s website for its own benefit and to direct users to Complainant’s competitors, 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 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 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 Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also contends that Respondent registered and used the disputed domain names in bad faith.  Respondent’s registration and use of the disputed domain names disrupts Complainant’s business in the hotel industry.  Internet users intending to make hotel reservations through Complainant may be diverted to Respondent’s websites due to the confusingly similar disputed domain names.  Users may then be diverted to others who compete with Complainant to book hotel reservations through one of the competing third-party links.  The Panel finds that Respondent’s use supports findings of bad faith registration and use under a Policy ¶ 4(b)(iii) analysis.  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Under circumstances such as those in this case, a Panel is permitted to make an inference that the Respondent receives click-through fees from third-party links.  Internet users searching for Complainant’s website and information may reach Respondent’s website instead.  Given the use of Complainant’s mark within the disputed domain name, users may become confused as to Complainant’s sponsorship of, or affiliation with, the resolving websites, the reviews and opinions offered, and the third-party links.  The Panel is also permitted to make an inference that Respondent intends to profit from this confusion through the receipt of click-through fees.  The Panel finds that such use constitutes bad faith under Policy ¶ 4(b)(iv).  See 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <comfortinnhampton.com> and <comfortinnwinstonsalem.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 21, 2011.

 

 

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