national arbitration forum

 

DECISION

 

Choice Hotels International, Inc. v. Media International SA / Hector Ortega

Claim Number: FA1112001419845

 

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA.  Respondent is Media International SA / Hector Ortega (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qualitychoicehotels.com>, registered with Power Brand Center Corp.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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 14, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <qualitychoicehotels.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name.  Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@qualitychoicehotels.com.  Also on December 21, 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 19, 2012, 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.

 

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 <qualitychoicehotels.com> domain name is identical/confusingly similar to Complainant’s CHOICE HOTELS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <qualitychoicehotels.com> domain name.

 

3.    Respondent registered and used the <qualitychoicehotels.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Choice Hotels International, Inc., operates and franchises hotel properties under its CHOICE HOTELS mark.  Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CHOICE HOTELS mark (Reg. No. 2,717,062 registered May 20, 2003).  Complainant also holds multiple trademark registrations with the USPTO for its QUALITY mark (e.g., Reg. No. 886,881 registered February 24, 1970).

 

Respondent, Media International SA / Hector Ortega, registered the <qualitychoicehotels.com> domain name on March 16, 2007.  The disputed domain name resolves to a pay-per-click website that hosts hyperlinks 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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns rights in its CHOICE HOTELS and QUALITY marks.  Complainant presents the Panel with its trademark registrations with the USPTO for its CHOICE HOTELS (Reg. No. 2,717,062 registered May 20, 2003) and QUALITY marks (e.g., Reg. No. 886,881 registered February 24, 1970).  Previous panels found that a trademark registration with the USPTO demonstrates rights in a mark under Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks 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).  Complainant does not hold a trademark registration that predates the registration of the disputed domain name in Chile, where Respondent resides or operates. Past panels have determined, however, that the Policy does not require a mark be registered in the country in which the respondent operates as it is sufficient for a complainant to demonstrate rights in a mark in some jurisdiction.  See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  The Panel agrees with this precedent and holds that Complainant owns rights in its CHOICE HOTELS and QUALITY marks pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <qualitychoicehotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark.  Complainant contends that the disputed domain name consists of a combination of Complainant’s CHOICE HOTELS and QUALITY marks, along with the generic top-level domain (“gTLD”) “.com.”  Prior panels concluded that the combination of a complainant’s marks does not remove a disputed domain name from the realm of confusing similarity.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).  Past panels also held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Consequently, the Panel determines that Respondent’s <qualitychoicehotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel deems Policy ¶ 4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant alleged that Respondent does not have any rights or legitimate interests in any of the <qualitychoicehotels.com> domain name.  Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  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 Complainant made a sufficient prima facie case.  Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name.  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).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <qualitychoicehotels.com> domain name.  Complainant avers that Complainant never licensed or authorized Respondent to use Complainant’s CHOICE HOTELS and/or QUALITY marks.  Complainant references the WHOIS information, which lists “Media International SA / Hector Ortega” as the registrant of the <qualitychoicehotels.com> domain name, as further evidence that Respondent is not commonly known by the domain name.  Respondent did not respond to this case and, therefore, did not refute any of Complainant’s contentions.  In similar cases, the panels found that a respondent is not commonly known by a disputed domain name if the respondent was not authorized to register the domain name and the respondent failed to submit evidence that it is commonly known by the 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).  Thus, the Panel concludes that Respondent is not commonly known by the <qualitychoicehotels.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant further contends that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <qualitychoicehotels.com> domain name.  Complainant asserts that Respondent’s disputed domain name resolves to a pay-per-click website that features hyperlinks to Complainant’s competitors in the hotel industry.  Prior panels concluded that the hosting of competing hyperlinks evidences a respondent’s lack of rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii).  See 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).  Based on this precedent, the Panel determines that Respondent is not making 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) of the <qualitychoicehotels.com> domain name.

 

Additionally, Complainant claims that Respondent did not make an active use of the <qualitychoicehotels.com> domain name for three months.  Previous panels determined that a respondent’s failure to make an active use of a disputed domain name demonstrated a respondent’s lack of rights and legitimate interests in the domain name.  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 U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).  In accordance with this precedent, the Panel considers Respondent’s initial failure to make an active use of the <qualitychoicehotels.com> domain name as further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

 

The Panel deems Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered and uses the <qualitychoicehotels.com> domain name in bad faith under Policy ¶ 4(b)(iii).  Complainant contends that Respondent diverts potential customers from Complainant to Complainant’s competitors through Respondent’s registration and use of the disputed domain name to host a links page advertising Complainant’s competitors.  Complainant argues that this diversion of Complainant’s customers disrupts Complainant’s business.  Previous panels concluded that a respondent registered and uses a disputed domain name in bad faith under Policy ¶ 4(b)(iii) if the resolving website hosts competing hyperlinks.  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 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 the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).  Therefore, the Panel concludes that Respondent registered and uses the <qualitychoicehotels.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant also argues that Respondent registered and uses the <qualitychoicehotels.com> domain name in bad faith under Policy ¶ 4(b)(iv).  Complainant claims that Respondent registered the <qualitychoicehotels.com> domain name because of the confusing similarity between the disputed domain name and Complainant’s CHOICE HOTELS mark.  Complainant alleges that Respondent uses that similarity to create confusion as to Complainant’s affiliation with the disputed domain name.  Complainant contends that Respondent profits from that confusion by receiving a fee each time an Internet user clicks on one of the aforementioned hyperlinks.  Past panels held that the registration and use of a confusingly similar disputed domain name for the purpose of hosting competing hyperlinks in exchange for click-through fees is evidence of bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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).  Consequently, the Panel deems Respondent guilty of Policy ¶ 4(b)(iv) bad faith registration and use of the <qualitychoicehotels.com> domain name.

 

Moreover, Complainant argues that Respondent’s initial failure to make an active use of the <qualitychoicehotels.com> domain name for at least three months is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  Prior panels agreed with Complainant, holding that a respondent registered and uses a disputed domain name in bad faith if it fails to make an active use of the disputed domain name.  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also 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).  Therefore, the Panel again finds that Respondent registered and uses the <qualitychoicehotels.com> domain name in bad faith under Policy ¶ 4(a)(iii). 

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the CHOICE HOTELS and QUALITY marks.  While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, past panels concluded that a panel may nonetheless find that a respondent registered and is using a disputed domain name in bad faith under Policy ¶ 4(a)(iii) if a respondent is found to have had actual notice of a complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  Based on the competing hyperlinks found on the resolving website and the confusing similarity of the disputed domain name, the Panel determines Respondent had actual knowledge of Complainant’s CHOICE HOTELS and QUALITY marks.  Thus, the Panel finds Respondent registered and uses the <qualitychoicehotels.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel deems Policy ¶ 4(a)(iii) satisfied.

 

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 <qualitychoicehotels.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  January 20, 2012

 

 

 

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