Choice Hotels International, Inc. v. Private Whois Service
Claim Number: FA1112001419954
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Private Whois Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sleep-inn-puglia.com>, registered with Fabulous.com Pty Ltd.
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 14, 2011; the National Arbitration Forum received payment on December 13, 2011.
On December 14, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <sleep-inn-puglia.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@sleep-inn-puglia.com. Also on December 15, 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 is one of the world’s largest lodging franchisors.
Complainant owns registrations for the SLEEP INN service mark, on file with United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,690,604, registered June 2, 1992).
Complainant licenses the mark to its franchisees to help them promote and market hotels.
Respondent registered the disputed domain name on April 4, 2007.
The disputed domain name previously resolved to a website offering links to the websites of Complainant’s competitors in the lodging services industry.
Respondent’s domain name currently directs Internet users to the website <surveyend.com>, which asks for their e-mail and mailing addresses so that they may receive a “prize.”
Respondent’s <sleep-inn-puglia.com> domain name is confusingly similar to Complainant’s SLEEP INN mark.
Respondent is not commonly known by the disputed domain name.
Respondent has never been authorized to use Complainant’s SLEEP INN mark, or to register or use a domain name incorporating this mark.
Respondent does not have any rights to or legitimate interests in the <sleep-inn-puglia.com> domain name.
Respondent both registered and uses the <sleep-inn-puglia.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 SLEEP INN service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding registration with the USPTO was adequate to establish trademark rights pursuant to Policy ¶ 4(a)(i)).
Complainant need not possess a trademark registration in the country of Respondent’s residence in order to establish rights in its mark under Policy ¶ 4(a)(i). 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 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 a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <sleep-inn-puglia.com> domain name is confusingly similar to Complainant’s SLEEP INN service mark under Policy ¶ 4(a)(i). The disputed domain name includes the entire mark, merely adding the generic top-level domain (“gTLD”) “.com,” plus two hyphens and the geographic identifier “puglia.” These alterations of the mark in forming the domain name fail to distinguish the domain from the mark under the standards of the Policy. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
See also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that inserting a hyphen between the terms of a complainant’s mark in creating a domain name does not a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel therefore finds that Complainant has met the proof requirements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name, thereby shifting the burden of proof under this provision to Respondent. 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.
Complainant has met its prima facie burden under this head of the Policy. Therefore, and because Respondent has failed to submit a response to the allegations of the Complaint filed in this proceeding, we may accept as true all of Complainant’s claims. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the 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 is not commonly known by the disputed domain name, and that Respondent has never been authorized to use Complainant’s SLEEP INN mark, or to register or use a domain name incorporating this mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Private Whois Service,” 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 established that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com>, and so had no rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant also alleges, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain, in that Respondent previously used the disputed domain name to resolve to a links directory website which featured links to websites offering hotel services in competition with the business of Complainant. This previous use, presumably for financial gain, 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, for example, ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent used the domain to operate a website containing links to various websites competing with business of a complainant, which the panel found not 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the use of the <expediate.com> domain name by a respondent to redirect Internet users to a website featuring links to websites offering travel services that competed with the business of a complainant 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)).
Further, Complainant submits evidence showing, again without objection from Respondent, that Respondent’s current use of the disputed domain name involves asking Internet users for their e-mail and postal addresses so that they may receive a “prize.” Respondent’s use of the domain name in this manner constitutes a phishing scheme meant to gain knowledge of Internet users’ personal information. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); to the same effect, see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent previously used the disputed <sleep-inn-puglia.com> domain name, which is confusingly similar to Complainant’s SLEEP INN mark, to host links to the websites of hotel accommodation providers operating in competition with the business of Complainant. This use of the domain name operated to disrupt Complainant’s business. It therefore stands as evidence that Respondent registered and used the disputed domain name 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 domain name which was 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 represented bad faith registration and use of the domain 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 search engine with links to the websites of a complainant’s commercial competitors).
Respondent’s current use of the disputed domain name, as alleged in the Complaint, to acquire personal information from Internet users, commonly known as phishing, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See, for example, Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004):
The domain name … was registered and used in bad faith by using the name for fraudulent purposes.
See also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where a respondent was using the <wellsbankupdate.com> domain name in order fraudulently to acquire the personal and financial information of a complainant’s customers).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <sleep-inn-puglia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 27, 2012
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