U.S. Franchise Systems, Inc. v. Jinsoo, Yoon
Claim Number: FA1108001405143
Complainant is U.S. Franchise Systems, Inc. (“Complainant”), represented by Susan L. Crane of Wyndham Worldwide Corporation, New Jersey, USA. Respondent is Jinsoo, Yoon (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hawthornsuites.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on August 29, 2011. The Complaint was submitted in both English and Korean.
On August 29, 2011, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <hawthornsuites.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 September 6, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of September 26, 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@hawthornsuites.com. Also on September 6, 2011, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hawthornsuites.com> domain name is identical to Complainant’s HAWTHORN SUITES mark.
2. Respondent does not have any rights or legitimate interests in the <hawthornsuites.com> domain name.
3. Respondent registered and used the <hawthornsuites.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Franchise Systems, Inc., is the owner of the HAWTHORN SUITES mark which it uses in connection with hotel and motel services including management, reservation, restaurant, and bar services. Complainant owns numerous registrations with federal trademark authorities for the HAWTHORN SUITES mark, a small portion of which are listed below.
Country Reg. No. Reg. Date
United States of America 1,531,365 March 21, 1989
Canada TMA473572 March 25, 1997
United Kingdom 2219155 November 24, 2000
European Community 2761617 September 10, 2003
Respondent, Jinsoo, Yoon, registered the disputed domain name on May 3, 2007. The disputed domain name displays links to third-party websites which, in direct competition with Complainant, offer hotel 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 contends that it has rights in the HAWTHORN SUITES mark. Complainant has provided the Panel with evidence of its registrations of the HAWTHORN SUITES mark in countries throughout the world. A short list of these registrations are as follows:
Country Reg. No. Reg. Date
United States of America 1,531,365 March 21, 1989
Canada TMA473572 March 25, 1997
United Kingdom 2219155 November 24, 2000
European Community 2761617 September 10, 2003
Therefore, the Panel finds that Complainant has established rights in the HAWTHORN SUITES mark under 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 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).
Complainant also argues that Respondent’s <hawthornsuites.com> domain name is identical to its mark. Respondent makes no changes beyond the elimination of the space between words and the addition of the generic top-level domain (“gTLD”) “.com.” Cases, such as Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000), and Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006), provide that the elimination of spaces and the addition of a gTLD, both requirements of all domain names, fails to distinguish the contested domain name from the complainant’s mark incorporated within it. As a result, the Panel finds that Respondent’s <hawthornsuites.com> domain name is identical to Complainant’s HAWTHORN SUITES mark.
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant alleges that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this claim. Previous panels have found that once a complainant makes a supporting prima facie case that the burden shifts to the respondent to prove otherwise. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”); see also 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)). However, the Panel is without the benefit of a response from Respondent, and thus must make all reasonable inferences from the information available on the record. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will review the record going forward to determine if Respondent has rights or legitimate interests in the <hawthornsuites.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not, and has never been, commonly known by the <hawthornsuites.com> domain name. Respondent, Complainant argues, has never been a licensee, franchisee, or affiliate for Complainant or any of its related companies. Additionally, the WHOIS record for the <hawthornsuites.com> domain name lists “Jinsoo, Yoon” as the domain name registrant. Therefore, the Panel finds no evidence that Respondent is associated with the <hawthornsuites.com> domain name beyond the registration of the domain name, and thus that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); 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).
Complainant next alleges that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The <hawthornsuites.com> domain name resolves to a website which displays links under headings such as “Best Hotel Rates” and “Last Minute Hotel Deals” to third-party websites which directly compete with Complainant in the business of providing hotel services. Panels in the past have found that the display of links to websites which compete with the complainant does not amount to either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also 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)). Therefore, the Panel finds that Respondent’s use of the <hawthornsuites.com> domain name fails to constitute a use which is protected by Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant alleges also that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business. Complainant uses its HAWTHORN SUITES mark to provide a variety of services in the hotel industry including reservation, bar, and management services. Respondent’s <hawthornsuites.com> domain name provides links to third-parties who offer similar services under the guise of a domain name which is identical to Complainant’s mark. In cases, such as Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), past panels have found that the registration and use of an identical or confusingly similar domain name which displays competing links is disruptive to the complainant whose mark is being infringed upon. Given that the natural flow of business will be diverted from Complainant’s website to Respondent’s given that the <hawthornsuites.com> domain name is identical to Complainant’s HAWTHORN SUITES mark, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive and in bad faith pursuant to Policy ¶ 4(b)(iii).
Lastly, Complainant asserts that the registration and use of the disputed domain name was prompted by the potential to commercially gain off of Internet users’ confusion. Previous panels have found that websites, resolving from disputed domain names which are confusingly similar or identical and thus confusing Internet users, which offer compensation to the respondent are evidence of an attraction for commercial gain. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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). Respondent’s <hawthornsuites.com> domain name is entirely composed of Complainant’s mark, only altered by the elimination of a space and a required gTLD. Internet users who search for Complainant may very easily instead reach Respondent’s disputed domain name. The similarity of the domain name to Complainant’s mark is sure to confuse these users as to whether Respondent’s domain name is in some way affiliated with Complainant. Once at the <hawthornsuites.com> domain name, the display of links to website offering services Internet users were intending to find, but of different, unwanted vendors, is certain to increase this confusion. Many of these Internet users will, acting off of the goodwill that Complainant has established in connection with its HAWTHORN SUITES mark, click through the displayed links. The Panel infers that Respondent is receiving compensation for the display of these thinks and the users it diverts through them. Therefore, the Panel finds that Respondent’s registration and use of the <hawthornsuites.com> domain name was done as a result of the attraction for commercial gain and in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <hawthornsuites.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 6, 2011
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