Choice Hotels International, Inc. v. EasyAnt Software Solutions / Anthony Ivins
Claim Number: FA1212001477085
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA. Respondent is EasyAnt Software Solutions / Anthony Ivins (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bookchoicehotels.com> and <bookchoicehotels.info>, registered with GoDaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2012; the National Arbitration Forum received payment on December 21, 2012.
On December 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bookchoicehotels.com> and <bookchoicehotels.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 January 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2013 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@bookchoicehotels.com and postmaster@bookchoicehotels.info. Also on January 3, 2013, 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 January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. Complainant has rights in the CHOICE HOTELS mark.
a. The mark is used in connection with hotel and motel services worldwide.
b. Complainant is the owner of the registration for the CHOICE HOTELS mark (Reg. No. 2,717,062 registered May 20, 2003) with the United States Patent and Trademark Office (“USPTO”). See Annex A.
2. The <bookchoicehotels.com> and <bookchoicehotels.info> domain names are confusingly similar to the CHOICE HOTELS mark.
a. The domain names incorporate Complainant’s mark, but for the space between words, and merely add the generic term “book” and a generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <bookchoicehotels.com> and <bookchoicehotels.info> domain names.
a. Respondent is not commonly known by the disputed domain names, evidenced by the content displayed on the WHOIS records for the domains and Respondent’s lack of authorization to use the CHOICE HOTELS mark.
b. The disputed domain names previously resolved to websites where pay-per-click links were displayed to websites offering hotel-reservation services in competition with those that Complainant provides.
c. The disputed domain names currently redirect Internet users to Complainant’s <choicehotels.com> domain name.
4. The <bookchoicehotels.com> and <bookchoicehotels.info> domain names were registered and are being used in bad faith.
a. Respondent’s registration and prior use of the <bookchoicehotels.com> and <bookchoicehotels.info> domain names is disruptive to Complainant’s business. Rather than reaching Complainant’s website, as the Internet users diverted to the disputed domain names would be expecting on their search for Complainant, Internet users were brought to websites featuring links to websites that offered services that competed with those that Complainant provides. Inevitably, many of these Internet users would use these alternate services, thus depriving Complainant of business.
b. Respondent’s previous use of the disputed domain name, displaying links to competitive products, demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). Respondent attempted to create confusion as to whether Complainant was the origin or sponsor of the disputed domain names in order to commercially gain.
c. Respondent’s current redirection of Internet users from the disputed domain names to Complainant’s <choicehotels.com> domain name is evidence of bad faith. Presumably, Respondent is profiting from the diversion. Respondent has capitalized on the confusion created by the Disputed Domain Names’ similarities to Complainant’s Marks to reach Internet users who might not otherwise have found Respondent’s website for its own commercial gain.
d. Respondent registered the disputed domain names with constructive and actual knowledge of Complainant’s rights in the CHOICE HOTELS mark. The mark is widely advertised and well-known worldwide.
Respondent failed to submit a Response in this proceeding.
1. Respondent’s <bookchoicehotels.com> and <bookchoicehotels.info> domain names are confusingly similar to Complainant’s CHOICE HOTELS mark.
2. Respondent does not have any rights or legitimate interests in the <bookchoicehotels.com> and <bookchoicehotels.info> domain names.
3. Respondent registered and used the <bookchoicehotels.com> and <bookchoicehotels.info> domain names 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 contends that it has rights in the CHOICE HOTELS mark. Complainant notes that the mark is used in connection with hotel and motel services worldwide. Complainant provides the Panel with evidence that it is the owner of the registration for the CHOICE HOTELS mark (Reg. No. 2,717,062 registered May 20, 2003) with the USPTO. See Annex A. Panels have found that, regardless of the location of the parties, the registration of a mark establishes rights in a 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). Therefore, the Panel finds that Complainant has rights in the CHOICE HOTELS mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <bookchoicehotels.com> and <bookchoicehotels.info> domain names are confusingly similar to the CHOICE HOTELS mark. According to Complainant, the domain names incorporate Complainant’s mark, but for the space between words, and merely add the generic term “book” and a gTLD. The panel in Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), found that the addition of a generic term fails to create a distinction between a domain name and the mark within it. Additionally, the panel in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), held that the deletion of spaces in a mark and the addition of a gTLD do not substantively alter the dominant portion of the domain name and therefore do not prevent a finding of confusing similarity. Therefore, the Panel finds that the <bookchoicehotels.com> and <bookchoicehotels.info> domain names are confusingly similar to the CHOICE HOTELS 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 names 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 contends that Respondent does not have rights or legitimate interests in the <bookchoicehotels.com> and <bookchoicehotels.info> domain names. Complainant argues that Respondent is not commonly known by the disputed domain names, evidenced by the content displayed on the WHOIS records for the domains and Respondent’s lack of authorization to use the CHOICE HOTELS mark. The Panel notes that the WHOIS records for the disputed domain names list “EasyAnt Software Solutions / Anthony Ivins” as the domain name registrant. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), determined that the WHOIS record and lack of authorization to use a mark are strong indicators of whether a respondent is known by a mark. Therefore, the Panel finds that Respondent is not commonly known by the <bookchoicehotels.com> and <bookchoicehotels.info> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant makes the argument that Respondent’s previous use of the <bookchoicehotels.com> and <bookchoicehotels.info> domain names to link to pay-per-click websites offering hotel reservation services in competition with Complainant’s services was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Annex F. The panel in H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), stated that the respondent’s disputed domain names resolved to a website displaying advertising links to third parties, some of which offered services competing with those offered under Complainant’s mark, and determined that the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel similarly concludes that Respondent did not make 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) of the <bookchoicehotels.com> and <bookchoicehotels.info> domain names because it used the resolving websites to offer hyperlinks to businesses in competition with Complainant.
Complainant alleges that Respondent currently uses the <bookchoicehotels.com> and <bookchoicehotels.info> domain names to redirect to Complainant’s own website at the <choicehotels.com> domain name. See Annex E. Complainant argues that Respondent has no authorization to redirect Internet traffic to Complainant’s website, and contends that unauthorized redirection of a non-affiliated domain name is evidence of non-legitimate use. The Panel concludes that Respondent does not make 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) due to its use of the domain names to lead Internet users to Complainant’s website. See Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Complainant asserts that Respondent registered and previously used the <bookchoicehotels.com> and <bookchoicehotels.info> domain names in bad faith, as shown by its intentional disruption of Complainant’s business by misleading traffic to its website and offering hyperlinks to Complainant’s competitors. Complainant argues that Internet users may be unaware that they had reached a site other than Complainant’s and make hotel reservations with one of Complainant’s competitors, thereby depriving Complainant of business. The Panel determines that Respondent’s prior use of the <bookchoicehotels.com> and <bookchoicehotels.info> domain names demonstrates Respondent’s bad faith registration and use 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).
Complainant also contends that Respondent violates Policy ¶ 4(b)(iv) due to its previous use of the domain name to create confusion as to Complainant’s affiliation with the disputed domain name and attract Internet users to its website in order to profit. Complainant argues that Respondent’s capitalization on Complainant’s CHOICE HOTELS mark by collecting click-through fees at the previously resolving website demonstrates bad faith. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), stated that the respondent’s previous use of the disputed domain name was evidence of bad faith because the domain name provided links to the complainant’s competitors, from which the respondent commercially benefited. The Panel likewise finds that Respondent registered and used the <bookchoicehotels.com> and <bookchoicehotels.info> domain names in bad faith under Policy ¶ 4(b)(iv) due to its prior use of the domain names to provide hyperlinks that provide competing services to Complainant’s business.
Complainant alleges that Respondent’s current use of the <bookchoicehotels.com> and <bookchoicehotels.info> domain names to redirect Internet users to Complainant’s website is evidence of bad faith registration and use. Complainant argues that Respondent presumably profits when each Internet user types in one of the disputed domain names and is redirected to Complainant’s website. The panel in MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007), held that the respondent used the domain name to link to the complainant’s website, which was evidence of bad faith because the respondent had control of the re-direction of Internet users to any website, whether or not is was associated with the complainant. The Panel determines that Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii) is demonstrated by its use of the disputed domain names to redirect Internet users to Complainant’s own website.
Complainant makes the claim that Respondent had actual and constructive knowledge of its CHOICE HOTELS mark due to the fame associated with Complainant’s mark, as well as its trademark registrations. Complainant contends that Respondent has the duty to determine that its domain names do not infringe on another’s trademark rights. The Panel determines that Respondent’s constructive knowledge of Complainant’s mark, as shown through Complainant’s USPTO trademark registration, does not satisfy Policy ¶ 4(a)(iii) in order to find bad faith registration. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). The Panel finds, however, that Respondent had actual notice of Complainant’s rights in its mark, demonstrated by Respondent’s redirection of the domain names to Complainant’s website, and determines that such actual notice is proof of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bookchoicehotels.com> and <bookchoicehotels.info> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 8, 2013
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