Choice Hotels International, Inc. v. Direct Privacy ID 74B30 / Domain Name Proxy Service, Inc
Claim Number: FA1206001450655
PARTIES
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Eva J. Pulliam of Arent Fox LLP, Washington, D.C., USA. Respondent is Direct Privacy ID 74B30 / Domain Name Proxy Service, Inc (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choicehotelz.com>, registered with DirectNIC 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 electron-ically on June 26, 2012; the National Arbitration Forum received payment on June 26, 2012.
On June 27, 2012, DirectNIC LTD confirmed by e-mail to the National Arbitration Forum that the <choicehotelz.com> domain name is registered with DirectNIC LTD and that Respondent is the current registrant of the name. DirectNIC LTD has verified that Respondent is bound by the DirectNIC LTD registration agree-ment 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 June 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2012 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and bil-ling contacts, and to postmaster@choicehotelz.com. Also on June 28, 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 tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 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 Not-ices, 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
Complainant employs the CHOICE HOTELS mark in connection with the market-ing of more than 6,000 hotels throughout the world.
Complainant holds a registration, on file with the United States Patent and Trade-mark Office (“USPTO”), for its CHOICE HOTELS service mark (Registry No. 2,717,062, registered May 20, 2003).
Complainant also owns the <choicehotels.com> domain name, which it employs to operate its official website.
Respondent registered the <choicehotelz.com> domain name on July 2, 2007.
Respondent’s <choicehotelz.com> domain name is confusingly similar to Com-plainant’s CHOICE HOTELS mark.
Respondent has not been commonly known by the contested domain name <choicehotelz.com>.
Respondent does not own any trademark or service mark rights relating to the CHOICE HOTELS mark or the <choicehotelz.com> domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s CHOICE HOTELS mark.
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the <choicehotelz.com> domain name.
The <choicehotelz.com> domain name resolves to a website featuring scantily clad women and provides hyperlinks to websites containing adult-oriented content.
Respondent benefits financially from its operation of the website resolving from the disputed domain name by receiving click-through fees from the adult-oriented websites featured on that website.
Respondent registered the <choicehotelz.com> domain name in bad faith and with knowledge of Complainant’s rights in the CHOICE HOTELS mark.
B. Respondent
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."
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 alle-gations of the Complaint.”
Complainant has rights in the CHOICE HOTELS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel there holding that the registration of a mark with the USPTO was sufficient to establish rights under the UDRP for purposes of Policy ¶ 4(a)(i).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <choicehotelz.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark within the contemplation of Policy¶ 4(a)(i). The domain name contains entire mark but for the substitution of the letter “z” for the letter “s” and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creat-ing the contested domain name, are insufficient to distinguish the domain name from the mark under the standards of the Policy. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel there finding that replacing one letter in a complainant’s mark with a different letter was insufficient to remove a disputed domain name from the realm of confusing similarity. See also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), finding that the addition of a gTLD to the mark of another in forming a domain name was irrelevant to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Re-spondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 has not been commonly known by the <choicehotelz.com> domain name, that Respondent does not own any trademark or service mark rights relating to the CHOICE HOTELS mark or the <choicehotelz.com> domain name, and that Respondent is not licensed or authorized to use Complainant’s CHOICE HOTELS mark. Moreover, the pertinent WHOIS information identifies the registrant of the <choicehotelz.com> domain name only as “Direct Privacy ID 74B30 / Domain Name Proxy Service, Inc.” which does not resemble the disput-ed domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii). See, for example, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel there determining that a respondent was not com-monly known by a disputed domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information, the lack of authorization to use a complainant’s mark, and other evidence in the record.
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <choicehotelz.com> domain name, in that the domain name resolves to a website featuring scantily clad women and provides hyperlinks to websites containing adult-oriented content, and that Re-spondent benefits commercially from the visits of Internet users to these hyper-links in the form of click-through fees. We concur that this employment of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial nor a fair use under Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel there finding that the use of a domain name which was confusingly similar to the mark of another to provide adult-oriented material is not evidence of a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the domain. Similarly, in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), a panel concluded that the use of a disputed domain name to provide click-through hyperlinks unrelated to a complainant’s business did not satisfy Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence presented that Respondent registered and uses the <choicehotelz.com> domain name in bad faith under Policy ¶ 4(b)(iv), in that Respondent creates confusion among Internet users by employing a domain name which is confusingly similar to Complainant’s CHOICE HOTELS service mark to divert users to the resolving website, and that Respondent benefits com-mercially from that confusion by receiving click-through fees from the adult-oriented websites link to which are featured on Respondent’s website. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel there finding that hosting unrelated hyperlinks on a website resolving from a do-main name confusingly similar to the mark of another was evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004), finding that a respond-ent’s use of the <googlesex.info> domain name to attract Internet users to a web-site featuring adult-oriented content constituted bad faith registration and use of the domain under Policy ¶ 4(b)(iv).
Finally, we are also convinced from the record that Respondent registered the <choicehotelz.com> domain name with knowledge of Complainant’s rights in the CHOICE HOTELS mark. This stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See, for example, Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008), finding that a re-spondent’s actual knowledge of a complainant’s mark at the time of registration of a domain name which is confusingly similar to that mark is itself evidence of bad faith registration.
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 <choicehotelz.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 8, 2012
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