Choice Hotels International, Inc. v. AA7 Group Ltd. / Mr Charlie Kalopungi
Claim Number: FA1207001451588
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Eva J. Pulliam of Arent Fox LLP, Washington, D.C., USA. Respondent is AA7 Group Ltd. / Mr Charlie Kalopungi (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com>, registered with Key-Systems GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2012; the National Arbitration Forum received payment on July 2, 2012.
On July 10, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 July 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@choicepriviledgesvisa.com, postmaster@choiceprivelegesvisa.com. Also on July 11, 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 August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names are confusingly similar to Complainant’s CHOICE PRIVILEGES mark.
2. Respondent does not have any rights or legitimate interests in the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names.
3. Respondent registered and used the<choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CHOICE PRIVILEGES mark, which it uses in connection with hotel services for preferred customers, as well as a CHOICE PRIVILEGES VISA credit card. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the CHOICE PRIVILEGES mark (Reg. No. 2,610,626 filed March 7, 2001, registered August 20, 2002).
Respondent registered the <choicepriviledgesvisa.com> domain name on July 20, 2010, and the <choiceprivelegesvisa.com> domain name on January 25, 2001, and uses them to resolve to websites that contain links to various competitors of Complainant’s.
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.
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.”).
The Panel finds that Complainant has rights in the CHOICE PRIVILEGE mark dating back to March 7, 2001 pursuant to Policy ¶ 4(a)(i). Prior panels have held that the registration of a mark, regardless of the location of the parties, is evidence of rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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). Previous panels have also found that USPTO trademark registrations confer rights dating back to the filing date of the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also has common law rights in the CHOICE PRIVILEGE mark since it has been continuously using the CHOICE PRIVILEGES mark in commerce since August 2001. Complainant has spent a substantial amount of money developing and marketing the CHOICE PRIVILEGES mark, which continues to be widely advertised throughout the world. Complainant states that consumers have come to associate this mark with Complainant’s high-quality services. Therefore, the Panel finds that Complainant has common law rights in the CHOICE PRIVILEGES mark dating back to August 2001 in accordance with Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names are confusingly similar to the CHOICE PRIVILEGES mark; they simply misspell the mark by one letter, add the descriptive term “visa,” delete the space in the mark, and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the misspelling of a mark by one letter does not distinguish the disputed domain names from the 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 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”). The addition of a descriptive term fails to differentiate the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names from the CHOICE PRIVILEGES mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Finally, the removal of spaces and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names are confusingly similar to the CHOICE PRIVILEGE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent lacks rights and legitimate interests in the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names. Complainant did not authorize Respondent to register domain names incorporating the CHOICE PRIVILEGE mark. The WHOIS record for the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names lists “AA7 Group Ltd. / Mr Charlie Kalopungi” as the domain name registrant. Prior panels have found that the authorization, or lack thereof, and the WHOIS record are illustrative of whether a Respondent is commonly known by a disputed domain name. 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). The Panel finds that Respondent is not commonly known by the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names does not give Respondent rights or legitimate interests. The <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names resolve to websites that display links to Complainant’s competitors who offer hotel reservation and credit card services. The Panel notes that the screenshots of the disputed domain names display these links under headings such as “Apply Visa Card” and “Hotels.” Therefore, the Panel finds that Respondent’s use of the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names is 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 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has developed a pattern of bad faith registration of domain names and has been a respondent in previous UDRP proceedings. See FG Wilson (Engineering) Ltd. v. Charlie Kalopungi / AA7 GROUP LTD, FA 1336834 (Nat. Arb. Forum Nov. 7, 2010); see also Diners Club Int’l Ltd. v. AA7 GROUP LTD / Charlie Kalopungi, FA 1353407 (Nat. Arb Forum Dec. 1, 2010); see also Five Star JV LLC v. Charlie Kalopungi / AA7 GROUP LTD, FA 1357736 (Nat. Arb. Forum Dec. 20, 2010). The Panel finds that Respondent registered and is using the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names in bad faith under Policy ¶ 4(b)(ii), based on Respondent’s history of bad faith registration and use. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names were registered in order to benefit financially by creating a likelihood of confusion with Complainant’s mark. Respondent no doubt profits from the links to competing hotel reservation services and credit card services by way of trading off of the CHOICE PRIVILEGES mark. The Panel thus finds that Respondent registered and is using the <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names in bad faith in order to take commercial advantage of Internet users’ mistakes 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).
Complainant contends that the CHOICE PRIVILEGES mark is well-known throughout the world as one of the world’s largest lodging franchisors and is registered with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith by itself, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied 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 <choicepriviledgesvisa.com> and <choiceprivelegesvisa.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 14, 2012
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