Motel 6 Operating L.P. v. Santiago Holdings Ltd / Juan DIego Alvarez
Claim Number: FA1201001425891
Complainant is Motel 6 Operating L.P. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Santiago Holdings Ltd / Juan DIego Alvarez (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <montel6.com>, <mtel6.com>, and <motal6.com>, registered with Power Brand Center Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 24, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <montel6.com>, <mtel6.com>, and <motal6.com> domain names are registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. 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 February 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@montel6.com, postmaster@mtel6.com, and postmaster@motal6.com. Also on February 13, 2012, 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 March 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <montel6.com>, <mtel6.com>, and <motal6.com> domain names are confusingly similar to Complainant’s MOTEL 6 mark.
2. Respondent does not have any rights or legitimate interests in the <montel6.com>, <mtel6.com>, and <motal6.com> domain names.
3. Respondent registered and used the <montel6.com>, <mtel6.com>, and <motal6.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Motel 6 Operating L.P., is an economy motel chain in North America and operates more than 1,000 budget motels throughout the United States and Canada. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MOTEL 6 &Design mark (e.g., Reg. No. 822,563 registered January 17, 1967).
Respondent, Santiago Holdings Ltd / Juan DIego Alvarez, registered the <montel6.com>, <mtel6.com>, and <motal6.com> domain names no earlier than August 22, 2000. The disputed domain names resolve to websites that host generic hyperlinks to third-party websites, some of which directly compete with Complainant’s motel business.
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.
In order to satisfy its burden to demonstrate rights in a mark under Policy ¶ 4(a)(i), Complainant presents the Panel with its USPTO trademark registrations for its MOTEL 6 & Design mark (e.g., Reg. No. 822,563 registered January 17, 1967). The Panel determines that the inclusion of a design element in the mark is not important when conducting its analysis under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”); see also Commerce LLC v. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002) (“Moreover, the design elements of Complainant’s mark cannot be captured in a domain name and thus are considered irrelevant for the purposes of this analysis.”). Respondent does not reside or operate in the United States, where Complainant has registered its mark. However, the Panel finds that Complainant’s registration of the MOTEL 6 & Design mark with the USPTO is sufficient under Policy ¶ 4(a)(i) because Complainant is not required to register the mark within the country Respondent operates or resides. 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); 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).
After comparing Complainant’s MOTEL 6 mark with the <montel6.com>, <mtel6.com>, and <motal6.com> domain names, the Panel determines that the disputed domain names are comprised of common misspellings of Complainant’s mark and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the types of common misspellings found in the disputed domain names, the addition of a letter, the removal of a letter, and the exchange of one letter for another, do not sufficiently distinguish a disputed domain name from a complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); 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”). Moreover, the Panel concludes that the addition of the gTLD “.com” does not remove a disputed domain name from the realm of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel holds that Respondent’s <montel6.com>, <mtel6.com>, and <motal6.com> domain names are confusingly similar to Complainant’s MOTEL 6 mark pursuant to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <montel6.com>, <mtel6.com>, and <motal6.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when 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. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <montel6.com>, <mtel6.com>, and <motal6.com> domain names. 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 names under Policy ¶ 4(c).
Respondent’s failure to respond to this case ensures that the Panel will not receive any allegations or evidence from Respondent indicating that Respondent is commonly known by the disputed domain names. Instead, the Panel is left with Complainant’s contentions that Respondent is not authorized to use Complainant’s mark and the WHOIS information. The WHOIS information identifies “Santiago Holdings Ltd / Juan DIego Alvarez” as the registrant of the disputed domain names, which the Panel must find is not similar to any of the disputed domain names and does not indicate that Respondent is commonly known by the domain names. In light of these arguments and evidence in the absence of a Response, the Panel concludes that Respondent is not commonly known by the <montel6.com>, <mtel6.com>, and <motal6.com> domain names for the purposes of Policy ¶ 4(c)(ii). 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).
According to Complainant’s arguments and screen shots of the disputed domain names, Respondent uses the <montel6.com>, <mtel6.com>, and <motal6.com> domain names to resolve to websites hosting hyperlinks that resolve to the websites of Complainant’s competitors. Complainant asserts that Respondent receives commercial benefit from the disputed domain names by receiving pay-per-click fees. The Panel presumes as much and determines that such a use is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <montel6.com>, <mtel6.com>, and <motal6.com> domain names. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> 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).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the 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)).
As noted under Policy ¶ 4(a)(i), Respondent’s <montel6.com>, <mtel6.com>, and <motal6.com> domain names contain common misspellings of Complainant’s MOTEL 6 mark that differ from Complainant’s mark by one letter. The Panel finds that Respondent’s registration of domain names containing these common misspellings is evidence of typosquatting. Thus, the Panel concludes that Respondent’s typosquatting further establishes Respondent’s lack of rights and legitimate interests in the <montel6.com>, <mtel6.com>, and <motal6.com> domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
The Panel previously found that Respondent’s <montel6.com>, <mtel6.com>, and <motal6.com> domain names are confusingly similar to Complainant’s MOTEL 6 mark. The Panel infers that Respondent registered these domain names because of the potential confusion they would cause as to Complainant’s affiliation with the resolving websites. The Panel agrees with Complainant that Respondent commercially benefits when Internet users click on one of the competing hyperlinks displayed at the resolving websites. Therefore, the Panel finds that Respondent registered and uses the <montel6.com>, <mtel6.com>, and <motal6.com> domain names in bad faith pursuant to 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).
Under Policy ¶ 4(a)(ii), the Panel found Respondent guilty of typosquatting. Under Policy ¶ 4(a)(iii), typosquatting is also considered evidence of bad faith registration and use. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Consequently, the Panel deems Respondent’s typosquatting as evidence that Respondent registered and uses the <montel6.com>, <mtel6.com>, and <motal6.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <montel6.com>, <mtel6.com>, and <motal6.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 23, 2012
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