national arbitration forum

 

DECISION

 

Furnished Quarters, LLC v. internet marketing

Claim Number: FA1210001469120

 

PARTIES

Complainant is Furnished Quarters, LLC (“Complainant”), represented by Walter B. Welsh of Michaud-Kinney Group LLP, Connecticut, USA.  Respondent is internet marketing (“Respondent”), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <furnishedquartersworldwide.com>, registered with Network Solutions, 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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2012; the National Arbitration Forum received payment on October 25, 2012.

 

On October 25, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <furnishedquartersworldwide.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@furnishedquartersworldwide.com.  Also on October 31, 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.

 

A timely Response was received and determined to be complete on November 2, 2012.

 

On November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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

Complainant, Furnished Quarters, LLC, leases and sublets residential housing units to customers, including corporate clients.  Complainant was founded nearly 15 years ago and is the owner of U.S. Trademark Registration No. 3,401,818 for the mark FURNISHED QUARTERS, as used for leasing and subletting of apartments.  The registration issued on March 25, 2008. See Complaint, Exhibit A. Complainant also owns the domain name <www.furnishedquarters.com>.  See Complaint, Exhibit B. According to Complainant, its website is an integral and essential aspect of its business insofar as a majority of its clients interact with and secure the benefit of its services through the site.  Complainant spends approximately $50,000 a year on search engine optimization.

 

Complainant asserts that the disputed domain name, <furnishedquartersworldwide.com>, is confusingly similar to the distinctive and federally registered FURNISHED QUARTERS mark.  Complainant contends that the domain name merely adds the generic term “worldwide,” which “describes the geographic scope of Complainant’s business and clientele,” and that the added top-level domain “.com” has “no effect” on the confusingly similar analysis for purposes of the Policy.   Complainant further maintains that it has priority rights in its mark because such mark has been in use before June 2012, when the disputed domain name was registered.

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.  Complainant indicates that Respondent’s purported business is identical to that of Complainant, that Respondent’s website prominently displays, without Complainant’s permission or approval, Complainant’s registered FURNISHED QUARTERS mark.

 

Complainant notes that it sent “cease and desist” letters to Respondent on July 30 and 31, 2012, but that Respondent failed to reply.  See Complaint, Exhibits E, F, G, and H.  On August 17, 2012, Complainant called Respondent and was told by one of Respondent’s employees that Respondent was in the business of generating leads for companies in the business of corporate housing.   These companies include Complainant’s competitors.

 

With respect to the issue of “bad faith” registration and use, Complainant asserts that such is established in this case insofar as Respondent diverts internet users to sites maintained by Complainant’s competitors.  Complainant also maintains that “[a] respondent’s direct competition with a complainant and the giving of an impression of being affiliated with or sponsored by the complainant, qualifies as bad faith registration and use of a domain name,” as does “a respondent’s efforts to mislead a complainant’s potential customers so that the respondent can profit via leads….”

 

B. Respondent

Respondent, Internet Marketing, is a web design and marketing company located in Nashville, Tennessee.  However, according to the Response, the disputed website is owned by Thomas Wright, who may be reached c/o Furnished Quarters Worldwide, which is located in Dubai, UAE.

 

The Response contends that Complainant does not own a trademark for “furnished quarters worldwide,” that the FURNISHED QUARTERS mark is weak, and that “furnished quarters” is a descriptive phrase for all hotel and motel rooms in every country.  “It is a term commonly used in the country which Furnished Quarters Worldwide is registered (UAU, Dubai) to describe lodging that is furnished.”  The Response further points out that while Complainant’s mark is words and text only, “the mark for furnished quarters worldwide is a red and white wreath, with the letter `F’ embedded in the center and not confusingly similar to [Complainant’s registered mark].”  The Response also contends that the parties’ websites have a different look and feel, the properties shown on <furnishedpropertiesworldwide.com> are not located in the U.S., and Respondent is only a booking agent; it does not lease or sublet apartments.

 

The Response maintains that the domain name was not registered in bad faith because the evidence indicates that Complainant’s reputation is marred.  See Response, Exhibits O and P.  According to the Response, “[i]t is difficult to use [a] company’s name [in] `bad faith’ when the complainant itself has bad will publically [sic] cited all over the internet.”

 

The Response also asserts that no money has ever been requested by Respondent for transfer of the disputed domain name and that Complainant has failed to register the “furnishedquartersworldwide” domain name in top-level domains other than “.com.”

 

FINDINGS

The Panel finds that: (1) the disputed domain name is confusingly similar to a service mark in which Complainant has rights; (2) Respondent has rights or legitimate interests in the domain name; and (3) the domain name was not registered and is not being used in bad faith.

 

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

 

The Panel determines that the disputed domain name, <furnishedquartersworldwide.com>, is confusingly similar to the mark FURNISHED QUARTERS.  The addition of the descriptive term “worldwide” and of the generic top-level domain (“gTLD”) “.com” and the fact that the domain name does not include the space between the words “furnished” and “quarters” does not negate a finding of confusing similarity under the Policy.   See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding respondent’s <amextravel.com> domain name confusingly similar to AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity.); Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible [in a domain name] and a generic top-level domain … is required in domain names.”)

 

The Panel further determines that Complainant has rights in the FURNISHED QUARTERS mark, based on evidence relating to its use of such mark and the fact that such mark is the subject of a U.S. trademark registration. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding USPTO registration adequately establishes rights under the Policy).

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has not met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.  The Respondent’s website, as depicted in Exhibit D to the Complaint, shows use of the domain name in connection with a site that permits Internet users to obtain information regarding furnished quarters, including villas, homes, condos, and luxury apartments.  As such, in the view of the Panel, Respondent’s use of <furnishedquartersworldwide.com> as the domain name for such site should be viewed as a “fair use” under the Policy.  That is, Respondent is using the domain name merely to describe a quality, characteristic, or component of the service it provides.  There is no evidence that Respondent intends to misleadingly divert consumers, although some Internet users may, no doubt, be confused, or that Respondent intends to tarnish Complainant’s mark.  As noted by the Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, 543 U.S. 111 (2004), “some possibility of consumer confusion must be compatible with fair use.”

 

The Panel’s determination on the issue of fair use is reinforced by the fact that Complainant’s registration for FURNISHED QUARTERS, as used in connection with the leasing and subletting of apartments, was issued under Section 2(f) of the Lanham Act.  This constitutes recognition that the mark has descriptive qualities and became registrable only upon evidence that the mark had acquired distinctiveness.

 

Registration and Use in Bad Faith

 

In view of the Panel’s determination on the issue of rights or legitimate interests, the Panel further concludes that the disputed domain name was not registered and is not being used in bad faith. Indeed, a finding of “fair use” subsumes a determination of good faith on the part of Respondent.   Moreover, there is no evidence that Respondent registered the domain name with the intent of selling it to Complainant or to any third party. 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <furnishedquartersworldwide.com> domain name REMAIN WITH Respondent.

 

 

Jeffrey M. Samuels, Panelist

Dated:  November 26, 2012

 

 

 

 

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