Choice Hotels International, Inc. v. Victor Zverev
Claim Number: FA1207001455914
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Michael D. Brinton of Arent Fox LLP, Washington D.C., USA. Respondent is Victor Zverev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cambriasuitesmaplegrove.com>, registered with NEUDOMAIN LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2012; the National Arbitration Forum received payment on July 30, 2012.
On August 1, 2012, NEUDOMAIN LLC confirmed by e-mail to the National Arbitration Forum that the <cambriasuitesmaplegrove.com> domain name is registered with NEUDOMAIN LLC and that Respondent is the current registrant of the name. NEUDOMAIN LLC has verified that Respondent is bound by the NEUDOMAIN 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 August 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@cambriasuitesmaplegrove.com. Also on August 6, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant alleges:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CAMBRIA SUITES mark.
2. Respondent’s <cambriasuitesmaplegrove.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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:
(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.”).
Complainant alleges rights in the CAMBRIA SUITES mark. Complainant contends that it uses the mark in connection with its hotel business, including Complainant’s CAMBRIA SUITES hotel in Maple Grove, Minnesota. See Complainant’s Annex C. According to Complainant, Complainant owns numerous trademark registrations with the USPTO for the CAMBRIA SUITES mark (e.g., Reg. No. 3,319,603 registered October 23, 2007). See Complainant’s Annex A. Complainant also claims that Complainant owns a wide variety of international trademark registrations for the CAMBRIA SUITES mark. See Complainant’s Annex B. The Panel notes that Complainant’s Annex B contains a table of Complainant’s alleged international trademark registrations, including an alleged trademark registration with the Russian Federation’s Federal Service for Intellectual Property (“RFFSIP”) (Reg. No. 323,486 registered March 30, 2007). The Panel finds that Complainant’s trademark registrations with the USPTO and RFFSIP sufficiently demonstrate Complainant’s rights in the CAMBRIA SUITES mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <cambriasuitesmaplegrove.com> domain name is confusingly similar to Complainant’s CAMBRIA SUITES mark. Complainant claims that the additions of the geographic terms “maple grove” and the gTLD does not prevent the Panel from finding that the disputed domain name is confusingly similar to Complainant’s mark. The Panel also notes that the disputed domain name removes the space from between the terms of the mark. The Panel agrees and holds that Respondent’s alterations to Complainant’s CAMBRIA SUITES mark do not remove the <cambriasuitesmaplegrove.com> domain name from the realm of confusing similarity pursuant to Policy ¶ 4(a)(i). 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 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)).
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.”).
Complainant avers that Respondent is not authorized to use Complainant’s CAMBRIA SUITES mark. Complainant further claims that nothing on the website resolving from the <cambriasuitesmaplegrove.com> domain name or in the WHOIS information, which lists “Victor Zverev” as the registrant of the domain name, indicates that Respondent is commonly known by the <cambriasuitesmaplegrove.com> domain name. The Panel notes that Respondent does not rebut any of these allegations because Respondent did not submit a Response. Therefore, the Panel accepts Complainant’s allegations as true and finds that Respondent is not commonly known by the <cambriasuitesmaplegrove.com> domain name under Policy ¶ 4(c)(ii). See 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).
Complainant contends that the <cambriasuitesmaplegrove.com> domain name resolves to a website that contains hyperlinks to various competitors of Complainant that offer online hotel-reservation services. See Complainant’s Annex E. Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks. Complainant argues that this use is evidence that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cambriasuitesmaplegrove.com> domain name. The Panel agrees and finds accordingly under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant claims that Respondent lists the <cambriasuitesmaplegrove.com> domain name for sale on an online auction service located at <sedo.com>. See Complainant’s Annex F. Complainant contends that Respondent’s general offer to sell the disputed domain name is evidence Respondent’s bad faith. The Panel finds that Respondent is offering to sell the <cambriasuitesmaplegrove.com> domain name. The Panel concludes that Respondent registered and uses the domain name in bad faith according to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant further asserts that Respondent registered and uses the disputed domain name for the purpose of hosting competing hyperlinks in order to receive pay-per-click fees. Complainant claims that the pay-per-click fees are evidence that Respondent is attempting to commercially benefit from the resolving website. Complainant also contends that Respondent’s inclusion of the CAMBRIA SUITES mark in the disputed domain name is evidence that Respondent is attempting to create consumer confusion as to Complainant’s sponsorship of, affiliation with , and/or endorsement of the disputed domain name. The Panel determines that Respondent is attempting to commercially benefit from Internet user confusion. The Panel holds that Respondent registered and uses the <cambriasuitesmaplegrove.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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).
According to Complainant, Respondent registered the <cambriasuitesmaplegrove.com> domain name with knowledge of Complainant’s CAMBRIA SUITES mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cambriasuitesmaplegrove.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 11, 2012
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