Choice Hotels International, Inc. v. Domains By Proxy - Niche Proxy Account Domain Proxy Manager a/k/a Virtual Services Corporation Domains By Proxy - VSC Proxy Account
Claim Number: FA1112001420050
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Domains By Proxy - Niche Proxy Account Domain Proxy Manager a/k/a Virtual Services Corporation Domains By Proxy - VSC Proxy Account (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <choiceprivilegeshotels.com>, <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, <ecomolodge.com>, <comortsuites.com>, and <confortinnandsuites.com>, registered with Fabulous.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2011; the National Arbitration Forum received payment on December 14, 2011.
On December 14, 2011, Fabulous confirmed by e-mail to the National Arbitration Forum that the <choiceprivilegeshotels.com>, <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, <ecomolodge.com>, <comortsuites.com>, and <confortinnandsuites.com> domain names are registered with Fabulous and that Respondent is the current registrant of the names. Fabulous has verified that Respondent is bound by the Fabulous 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@choiceprivilegeshotels.com, postmaster@comfortinnsnearnorth.com, postmaster@comfortsuiteshagerstown.com, postmaster@comfortsuitesnorth.com, postmaster@comfortsuitesstevenspoint.com, postmaster@qualityinnfargo.com, postmaster@choicehotal.com, postmaster@choiceprivieges.com, postmaster@comfortsuiteshotel.com, postmaster@comfortsuiteswoodstock.com, postmaster@econolodgebarstow.com, postmaster@econolodgelincoln.com, postmaster@econylodge.com, postmaster@ecomolodge.com, postmaster@comortsuites.com, and postmaster@confortinnandsuites.com. Also on December 20, 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 18, 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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that the entities involved are one in the same and as a result will proceed in accordance with that finding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <choiceprivilegeshotels.com>, <choicehotal.com>, and <choiceprivieges.com> domain names are confusingly similar to Complainant’s CHOICE HOTELS mark.
Respondent’s <comfortinnsnearnorth.com>, <comortsuites.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <comfortsuiteshotel.com>, <confortinnandsuites.com>, and <comfortsuiteswoodstock.com> domain names are confusingly similar to Complainant’s COMFORT INN & SUITES mark.
Respondent’s <qualityinnfargo.com> domain name is confusingly similar to Complainant’s QUALITY INN mark.
Respondent’s <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, and <ecomolodge.com> domain names are confusingly similar to Complainant’s ECONO LODGE mark.
2. Respondent does not have any rights or legitimate interests in the <choiceprivilegeshotels.com>, <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, <ecomolodge.com>, <comortsuites.com>, and <confortinnandsuites.com> domain names.
3. Respondent registered and used the <choiceprivilegeshotels.com>, <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, <ecomolodge.com>, <comortsuites.com>, and <confortinnandsuites.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., is a large global provider of hotel and lodging services. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks:
COMFORT INN & SUITES Reg. No. 2,264,702 registered July 27, 1999.
CHOICE HOTELS Reg. No. 2,717,062 registered May 20, 2003.
QUALITY INN Reg. No. 1,183,294 registered December 22, 1981.
ECONO LODGE Reg. No. 813,642 registered August 23, 1966.
Complainant uses the marks to brand different hotel, motel, inn, and lodging services all over the world. Complainant also licenses the marks to its franchisees to promote their own hotels and lodging services.
Respondent, Domains By Proxy - Niche Proxy Account Domain Proxy Manager a/k/a Virtual Services Corporation Domains By Proxy - VSC Proxy, registered the disputed domain names no earlier than January 10, 2004. The <choiceprivilegeshotels.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <ecomolodge.com>, and <confortinnandsuites.com> domain names resolve to websites offering links to Complainant’s competitors in the lodging industry. The <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, and <comortsuites.com> domain names resolve to websites soliciting the personal information of Internet users that arrive there, a classic phishing scheme.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has provided sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant contends that it has established its rights in the following marks by registering them with the USPTO:
COMFORT INN & SUITES Reg. No. 2,264,702 registered July 27, 1999;
CHOICE HOTELS Reg. No. 2,717,062 registered May 20, 2003;
QUALITY INN Reg. No. 1,183,294 registered December 22, 1981; &
ECONO LODGE Reg. No. 813,642 registered August 23, 1966.
Complainant has provided sufficient documentary evidence in the form of trademark certificates to verify that the marks are duly registered and that it is the owner of record. Complainant also submitted documentary evidence of many other trademark registrations for marks that the Panel characterizes as analogous or similar marks. The specific marks listed above were included in detail because of their close relationship with the disputed domain names listed in this dispute. Although Complainant stated that it holds trademark registrations in Switzerland, it failed to provide evidence to verify or support those registrations and as a result, the Panel must ignore the claimed rights due to the lack of verification. However, based upon the registrations provided, the Panel finds that Complainant has established its rights in the COMFORT INN & SUITES, CHOICE HOTELS, QUALITY INN, and ECONO LODGE marks under Policy ¶ 4(a)(i). See 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.”); 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). The Panel also holds that these USPTO trademark registrations suffice to establish Complainant’s rights in the marks, despite that Respondent lives or operates in Switzerland and not the U.S. 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).
Complainant claims that Respondent’s <choiceprivilegeshotels.com>, <choicehotal.com>, and <choiceprivieges.com> domain names are confusingly similar to its CHOICE HOTELS mark. The disputed domain names all include elements of the CHOICE HOTELS mark that lead this Panel to find that they are confusingly similar to the mark. Each disputed domain name removes the space between terms and adds the generic top-level domain “.com.” The <choiceprivilegeshotels.com> domain name includes the entire mark, merely adding the term “privileges,” which is descriptive of Complainant’s business because it uses that term to describe its services. Respondent’s <choicehotal.com> domain name includes the entire distinctive portion of the mark, merely changing the “e” in hotel to an “a” and removing the letter “s.” Finally, the <choiceprivieges.com> domain name retains the distinctive portion of the mark, while removing the term “hotels” and adding a misspelling of a term that describes Complainant’s business, “privieges.” The Panel finds that Respondent’s <choiceprivilegeshotels.com>, <choicehotal.com>, and <choiceprivieges.com> domain names are confusingly similar to Complainant’s CHOICE HOTELS mark under Policy ¶ 4(a)(i) because none of the changes sufficiently differentiates the disputed domain names from the mark. 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 Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) (“The Panel finds that the mere elimination, misspelling and addition of terms to Complainant’s mark in the <yokahamatires.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the Y YOKOHAMA mark, especially because the disputed domain name remains phonetically similar to the mark.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
Complainant also claims that Respondent’s <comfortinnsnearnorth.com>, <comortsuites.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <comfortsuiteshotel.com>, <confortinnandsuites.com>, and <comfortsuiteswoodstock.com> domain names are confusingly similar to its COMFORT INN & SUITES mark. The disputed domain names all include the COMFORT INN & SUITES mark and make one or more of the following changes to Complainant’s mark: delete one or more terms; add, remove, or exchange a letter; add one or more geographic or descriptive terms; delete the spaces between terms; replace the ampersand with the term “and”; and/or attach the gTLD “.com.” The Panel finds that none of the changes made to Complainant’s mark by Respondent to form the disputed domain names sufficiently differentiates the mark from the disputed domain names. Therefore, Respondent’s <comfortinnsnearnorth.com>, <comortsuites.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <comfortsuiteshotel.com>, <confortinnandsuites.com>, and <comfortsuiteswoodstock.com> domain names are confusingly similar to Complainant’s COMFORT INN & SUITES mark under Policy ¶ 4(a)(i). 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 Skype Ltd. & 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.”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
Complainant asserts that Respondent’s <qualityinnfargo.com> domain name is confusingly similar to Complainant’s QUALITY INN mark. Respondent’s disputed domain name includes the entire mark, while merely adding the gTLD “.com” and the geographic identifier “fargo.” The disputed domain name also removes the spaces between the terms of the mark. The Panel finds that Complainant’s QUALITY INN mark is confusingly similar to Respondent’s <qualityinnfargo.com> domain name under Policy ¶ 4(a)(i) because the changes made fail to sufficiently differentiate the two. See 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).”); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").
Complainant also asserts that Respondent’s <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, and <ecomolodge.com> domain names are confusingly similar to Complainant’s ECONO LODGE mark. Similar to the disputed domain names listed prior, these disputed domain names include the ECONO LODGE mark, varying only slightly from the mark itself, either by adding a geographic identifier or merely changing a single letter of the mark. Respondent’s disputed domain names also removed the spaces between the terms of the ECONO LODGE mark and added the gTLD “.com.” The Panel again finds that none of the changes differentiates the disputed domain names from Complainant’s mark in a manner sufficient to remove them from the realm of confusing similarity. 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.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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)).
The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(i).
The Panel finds that Complainant has shifted the burden of proof to Respondent under Policy ¶ 4(a)(i) by making a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. See 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)). Respondent has failed to file a response in this matter, which allows the Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, before making any such assumptions, the Panel will examine the entire record and address Respondent’s rights or legitimate interests in the disputed domain names within the guidelines provided by Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain names. Respondent has not provided evidence to show that it is commonly known by the disputed domain names. The WHOIS information for the disputed domain names does not reflect any association between Respondent and the disputed domain names. Based upon the evidence submitted, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> 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 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 contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <choiceprivilegeshotels.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <ecomolodge.com>, and <confortinnandsuites.com> domain names. The disputed domain names listed above resolve to websites offering links to Complainant’s competitors in the lodging industry. The screenshots provided by Complainant verify that the resolving websites do include links to competing entities, like Marriot and Ramada. Previous panels have determined that this use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Thus, the Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, and <comortsuites.com> domain names. The disputed domain names included in this paragraph redirect to other domain names that advertise prizes and solicit personal information in a classic phishing format from the Internet users that are diverted to the site. Complainant has submitted screenshots which verify that Respondent is attempting to procure information from Internet users that are diverted to its website. The Panel finds that using disputed domain names to phish for the personal information of Internet users does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking 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)); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(ii).
Complainant contends that the <choiceprivilegeshotels.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <ecomolodge.com>, and <confortinnandsuites.com> domain names disrupt its business indicating bad faith registration and use by Respondent. These disputed domain names resolve to websites offering links to Complainant’s competitors in the lodging industry, like Sheraton, Marriott, and the like. Internet users may arrive at one of the websites advertising competing hyperlinks and then book a hotel with that company rather than Complainant. The Panel finds that this use disrupts Complainant’s business by facilitating competition with Complainant, demonstrating Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See 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); 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).
Complainant argues that Respondent infringes upon Complainant’s mark in the <choiceprivilegeshotels.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <ecomolodge.com>, and <confortinnandsuites.com> domain names in order to attract consumers and trade upon the widespread consumer recognition of Complainant’s marks. Complainant asserts that Respondent uses Complainant’s mark in these disputed domain names in order to create confusion as to Complainant’s sponsorship, affiliation or endorsement with the disputed domain names. Complainant continues to allege that Respondent has attempted to profit from its registration of these disputed domain names by using the disputed domain names to host a collection of pay-per-click links that generate click-through fees for Respondent. Accordingly, the Panel concludes that Respondent’s registration and use of the <choiceprivilegeshotels.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <ecomolodge.com>, and <confortinnandsuites.com> domain names indicates bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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.’”).
Complainant also contends that Respondent is using the <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, and <comortsuites.com> domain names to phish for the personal information of Internet users demonstrating bad faith registration and use. Previous panels have found that this use alone is sufficient to find bad faith registration and use. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). However, because Respondent also presumably is attempting to gain commercially by selling the information collected, the Panel also finds that Respondent has registered and is using these disputed domain names in bad faith under Policy ¶ 4(b)(iv), as well as under Policy ¶ 4(a)(iii) generally. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <choiceprivilegeshotels.com>, <comfortinnsnearnorth.com>, <comfortsuiteshagerstown.com>, <comfortsuitesnorth.com>, <comfortsuitesstevenspoint.com>, <qualityinnfargo.com>, <choicehotal.com>, <choiceprivieges.com>, <comfortsuiteshotel.com>, <comfortsuiteswoodstock.com>, <econolodgebarstow.com>, <econolodgelincoln.com>, <econylodge.com>, <ecomolodge.com>, <comortsuites.com>, and <confortinnandsuites.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 19, 2012
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