Choice Hotels International, Inc. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1304001497209
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, District of Columbia, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coicehotels.com>, registered with MONIKER.
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 April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.
On April 29, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <coicehotels.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@coicehotels.com. Also on May 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 May 31, 2012, 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 name be transferred from Respondent to Complainant.
i. No content displayed on the website associated with the disputed domain name or in the corresponding WHOIS record indicates that Respondent claims to be named or is commonly known by the business name CHOICE HOTELS or the domain name <coicehotels.com>.
ii. The disputed domain name currently resolves to a website that includes links to sites advertising hotel services by third-party competitors of Complainant.
i. Respondent has engaged in pattern cybersquatting as evidenced by multiple adverse UDRP decisions against it.
ii. By using the disputed domain name to direct Internet traffic to websites other than those owned or otherwise approved by Complainant, Respondent is trading on the value of the CHOICE HOTELS mark established by Complainant.
iii. The CHOICE HOTELS mark has become well known to customers.
Respondent registered the <coicehotels.com> domain name on August 8, 2003.
1. Respondent’s <coicehotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark.
2. Respondent does not have any rights or legitimate interests in the <coicehotels.com > domain name.
3. Respondent registered or used the <coicehotels.com> 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, Choice Hotels International, Inc., argues that it is one of the world’s largest lodging franchisors, with over 6,000 hotels in countries and territories throughout the world. Complainant alleges that it owns a federal registration with the USPTO for the CHOICE HOTELS mark (Reg. No. 2,717,062, registered May 20, 2003). See Annex A. Complainant contends that it also owns a registration with the IPONZ for the CHOICE HOTELS mark (Reg. No. 802,628, registered October 8, 2009). See Annex A. The Panel notes that Respondent appears to reside in New Zealand. Thus, the Panel holds that Complainant’s registration of the CHOICE HOTELS mark with the IPONZ and USPTO demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant alleges that Respondent’s disputed domain name <coicehotels.com> wholly incorporates Complainant’s CHOICE HOTELS mark, and only deviates from Complainant’s registered mark through the omission of the letter “h” in the word CHOICE. The Panel finds that the removal of a letter in a mark does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant claims that the addition of the generic top-level domain (“gTLD”) “.com” to a mark is unimportant to the likelihood of confusion analysis. The Panel notes that Respondent removes the space in Complainant’s CHOICE HOTELS mark. The Panel determines that Respondent’s addition of the gTLD “.com” and removal of a space is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See 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)). Consequently, the Panel finds that Respondent’s <coicehotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark pursuant to 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 alleges that no content displayed on the website associated with the disputed domain name or in the corresponding WHOIS record indicates that Respondent claims to be named or is commonly known by the business name CHOICE HOTELS or the domain name <coicehotels.com>. The Panel notes that the WHOIS record lists “Domain Admin / Taranga Services Pty Ltd” as the registrant of the domain name. See Annex C. Complainant argues that there is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the disputed domain name. Complainant claims that Respondent is not now, and has never been, licensed or authorized to use Complainant’s CHOICE HOTELS mark, nor to register or use any domain name incorporating the CHOICE HOTELS mark. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that the disputed domain name currently resolves to a website that includes links to sites advertising hotel services by third-party competitors of Complainant. The Panel notes that Respondent’s domain name resolves to a website hosting links to Complainant’s competitors, such as “BOOKING.COM – HOTELS,” “FAIRFIELD INN & SUITES,” “SANDALS ALL INCLUSIVE,” and others. See Annex C. Complainant claims that previous panels have concluded that using a third party’s trademark to attract and redirect Internet traffic to a website that promotes competitive services does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Panel agrees that Respondent’s hosting of competitive hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
Complainant contends that Respondent has engaged in pattern cybersquatting as evidenced by multiple adverse UDRP decisions against it. See Allstate Insurance Company v. Domain Admin Taranga Services Pty Ltd, Case. No. D-2011-0177 (WIPO, April 11, 2011); WestJet Airlines Ltd. v. Taranga Services Pty Ltd., Case. No. D-2010-1814 (WIPO, Dec. 16, 2010); Cricket Communications, Inc., v. Domain Admin / Taranga Services Pty Ltd., Case No. FA1336335 (Nat. Arb. Forum, Sept. 1, 2010). The Panel holds that Respondent’s prior UDRP proceedings resulting in bad faith findings evidences bad faith use and registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant argues that by using the disputed domain name to direct Internet traffic to websites other than those owned or otherwise approved by Complainant, Respondent is trading on the value of the CHOICE HOTELS mark established by Complainant. The Panel notes that Respondent’s disputed domain name resolves to a hyperlink directory which provides links to Complainant’s competitors, such as “BOOKING.COM – HOTELS,” “FAIRFIELD INN & SUITES,” “SANDALS ALL INCLUSIVE,” and others. See Annex C. The Panel finds that Respondent’s use of the domain name to provide competing hyperlinks demonstrates bad faith use and registration 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).
Complainant argues that the CHOICE HOTELS mark has become well known to customers. Complainant asserts that it widely advertises its CHOICE HOTELS mark in the United States, New Zealand, and around the world in a variety of media, including on the Internet. Complainant contends that Respondent registered the <coicehotels.com> on August 8, 2003, many years after Complainant began using its CHOICE HOTELS mark in 1990, after it registered the CHOICE HOTELS mark in the United States, and many years after this mark became famous and well-known to consumers. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The 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."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coicehotels.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 12, 2013
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