national arbitration forum

 

DECISION

 

Choice Hotels International, Inc. v. Sense Ads / Indusekar SK

Claim Number: FA1204001440620

 

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA.  Respondent is Sense Ads / Indusekar SK (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <comfortinnsandsuites.org> and <comfortinnsandsuites.net>, registered with Name.com, LLC.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.

 

On April 25, 2012, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names are registered with Name.com, LLC and that Respondent is the current registrant of the names.  Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@comfortinnsandsuites.org and postmaster@comfortinnsandsuites.net.  Also on April 27, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on May 16, 2012.

 

On May 17, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names, the domain names at issue, are confusingly similar to Complainant’s COMFORT INNS & SUITES mark.

 

Respondent does not have any rights or legitimate interests in the domain names at issue.

 

Respondent registered and used the domain names at issue in bad faith.

 

B.  Respondent filed a Response which basically denies that the domain names at issue are identical or confusingly similar to Complainant’s Mark, that he has rights and legitimate interests in the domains and that the registered and is using them in good faith.

 

C.  Additional Submission.  Complainant filed an additional submission which further dealt with trademark law issues and responded to allegations made by Respondent in the Response.  It was taken into consideration by the Panel.

 

FINDINGS

Complainant has rights in the COMFORT INN & SUITES mark which it uses in connection with hotel and motel services.  It has multiple registrations for the COMFORT INN & SUITES mark (e.g., Reg. No. 2,264,702 registered July 27, 1999) through the United States Patent and Trademark Office (“USPTO”).  Complainant also has registrations for the COMFORT INN & SUITES mark (e.g., Reg. No. 1,462,362 registered June 15, 2006) through the Office of the Controller General of Patents, Designs, and Trademarks (“OCGPDT”) in India.  The <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names are confusingly similar to the COMFORT INN & SUITES mark.  Respondent is not commonly known by the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names.  These domain names at issue contain click-through links to competing hotel reservation services as well as fictitious reviews of hotels and are disruptive to Complainant’s business. Respondent had constructive/actual knowledge of Complainant’s rights in the COMFORT INN & SUITES mark prior to its registration and use of the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names which were registered by Respondent on February 10, 2011.

 

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."

 

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 has rights in the COMFORT INN & SUITES mark which it uses in connection with hotel and motel services. Complainant has USPTO registrations for the COMFORT INN & SUITES mark (e.g., Reg. No. 2,264,702 registered June 15, 2006). Additionally, Complainant has registrations in India for the COMFORT INN & SUITES mark (e.g., Reg. No. 1,462,362 registered June 15, 2006) through the OCGPDT.  Registration of a mark with a trademark authority is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel may find that Complainant has rights in the COMFORT INN & SUITES mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <comfortinnsandsuites.org> and

<comfortinnsandsuites.net> domain names are confusingly similar to the COMFORT INN & SUITES mark. Respondent’s substitution of an ampersand with its equivalent term “and” does not negate a finding that the disputed domain names are identical or confusingly similar. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical or confusingly similar to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Metro Candy & Nut v. Domain Holdings c/o Keller, FA 1159820 (Nat. Arb. Forum April 28, 2008) (finding that the <metrocandyandnut.com> domain name is identical or confusingly similar to the METRO CANDY & NUT despite the respondent’s replacement of an ampersand in the mark with the word “and” in the disputed domain name). Respondent’s addition of the letter “s” within the mark fails to distinguish the disputed domain names from Complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark). Respondent’s deletion of spaces between words and addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) analysis. 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 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).”). The Panel finds that the domain names at issue are confusingly similar to Complainant’s COMFORT INN & SUITES mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent is not and has never been licensed or otherwise authorized by Complainant to use the COMFORT INN & SUITES mark. Additionally, Respondent is not the owner of any trademark or service mark that is identical, similar to, or in any way related to the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names.  The WHOIS record for the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names which list “Sense Ads / Indusekar SK” as the domain name registrant. The WHOIS record and the complainant’s contentions are strong evidence of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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). Therefore, Respondent is not commonly known by the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names under Policy ¶ 4(c)(ii).

 

Respondent’s use of the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent uses the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names to display links to competing hotel reservation services and attempts to hide the illegitimate nature of this use by displaying fictitious hotel reviews alongside the links. Respondent’s use of the domain names at issue 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. 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent’s intent in registering and using the disputed domain names was to divert customers to its own websites and away from Complainant’s website. Respondent has the disputed domain names resolve to websites which display fictitious reviews of hotels as well as links to hotel reservation services which directly compete with those that Complainant provides under the COMFORT INN & SUITES mark. Therefore, Respondent’s registration and use of the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names were done in bad faith because the disputed domain names are disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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).

 

Bad faith is further evident by Respondent’s intent to use the disputed domain names in order to attract, for commercial gain, Internet users to the websites associated with the domain names at issue by creating confusion as to the source, sponsorship, or affiliation of the disputed domain names. The domain names at issue resolve to websites which display links to competing hotel reservation services from which Respondent commercially benefits.  The websites also display fictitious hotel reviews in order to increase confusion as to whether the domain names at issue are affiliated with Complainant. Therefore, Respondent’s registration and use of the <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names to commercially gain from Internet users’ mistakes as to the source of the disputed domain names due to confusion created by Respondent is evidence of 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.’”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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 <comfortinnsandsuites.org> and <comfortinnsandsuites.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  May 23, 2012

 

 

 

 

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