Choice Hotels International, Inc. v. Nadeem Qadir
Claim Number: FA1112001419698
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA. Respondent is Nadeem Qadir (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <econolodges.com>, registered with eNom.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2011; the National Arbitration Forum received payment on December 13, 2011.
On December 13, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <econolodges.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@econolodges.com. Also on December 14, 2011, the 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 January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant operates more than 850 hotels worldwide under the ECONO LODGE mark.
Complainant owns registrations for the ECONO LODGE service mark, on file with the United States Patent and Trademark Office ("USPTO"), including Reg. No. 813,642, registered August 23, 1966.
Respondent registered the disputed <econolodges.com> domain name on August 15, 2001.
Respondent’s domain name redirects to the <usseek.com> website that offers commercial search engine services and third-party links to the websites of various competitors of Complainant offering online hotel reservation services.
Respondent has been a respondent is several prior UDRP cases in which it was ordered to transfer its registered domain names to the respective complainants.
Respondent’s <econolodges.com> domain name is confusingly similar to Complainant’s ECONO LODGE mark.
Respondent has never been licensed or otherwise authorized to use Complainant’s ECONO LODGE service mark or to register or use a domain name incorporating that mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <econolodges.com>.
Respondent both registered and uses the <econolodges.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the ECONO LODGE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations). This is true despite the fact that Complainant’s rights in its mark arise from registration in a jurisdiction other than that of Respondent’s residence or base of operations. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
The <econolodges.com> domain name is confusingly similar to Complainant’s ECONO LODGE mark because the domain name merely deletes the space between the terms of the mark, inserts the letter “s” and adds the generic top-level domain (“gTLD”) “.com.” Such alterations of the mark of another in forming a domain name are insufficient to render the domain name distinct from the mark under the standards of the Policy. 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 to the mark of another in creating a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant is required to produce a prima facie case to support its allegations that Respondent does not have rights to or legitimate interests in the domain name at issue. See, for example, TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002):
In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.
Once this is done, the burden shifts to Respondent to establish its rights or legitimate interests in the domain name. 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.
In the case before us, Complainant has presented a prima facie case that Respondent lacks both rights to and legitimate interests in the contested <econolodges.com> domain name, thereby shifting the burden to Respondent. Therefore, and because Respondent has failed to submit a response to the allegations of the Complaint filed in this matter, we may presume that Complainant’s allegations are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has never been authorized to use Complainant’s ECONO LODGE mark or to register or use a domain name incorporating that mark, and that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant only as “Nadeem Qadir,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had failed to establish that it had rights to or legitimate interests in it, where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where that complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also observe that Complainant contends, without objection from Respondent, that Respondent uses the disputed domain name to resolve to the <usseek.com> website, which contains third-party links to websites competing with the business of Complainant for online hotel reservations. In the circumstances here presented, we may comfortably presume that Respondent receives profits in the form of click-through fees from the visits of Internet users to the websites resolving from these links. Such use of the contested domain does 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website accessed via a domain name which was confusingly similar to the mark of another 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the named respondent is several other UDRP cases in which domain names were ordered to be transferred to various complainants. See LTD Commodities, LLC v. Qadir, FA 636445 (Nat. Arb. Forum March 10, 2006); see also Target Brands, Inc. v. Qadir, FA 1290087 (Nat. Arb. Forum Nov. 25, 2009); further see Morningstar, Inc. v. Qadir, FA 1303922 (Nat. Arb. Forum March 3, 2010); and see Nature’s Sunshine Prods. v. Qadir, FA 1314890 (Nat. Arb. Forum April 30, 2010). This pattern of behavior on the part of Respondent establishes under Policy ¶ 4(b)(ii) that Respondent has registered and uses the contested domain name in bad faith in the present matter. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to UDRP proceedings in which administrative panels ordered the transfer of disputed domain names containing the trademarks of various complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
In addition, we have determined that Respondent’s <econolodges.com> domain name, which is confusingly similar to Complainant’s ECONO LODGE mark, resolves to a website displaying links to the websites of companies competing with the business of Complainant. This stands as separate evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii), because Respondent is thus diverting Internet users seeking the website of Complainant to those of its competitors, thereby disrupting Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a website featuring a search engine with links to the websites of a complainant’s commercial competitors).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <econolodges.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 27, 2012
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