Choice Hotels International, Inc. v. Domain Admin
Claim Number: FA1305001502567
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA. Respondent is Domain Admin (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choiceprivilege.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2013; the National Arbitration Forum received payment on May 30, 2013.
On May 31, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <choiceprivilege.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@choiceprivilege.com. Also on May 31, 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 June 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns the CHOICE PRIVILEGES mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,610,622 registered on August 20, 2002).
2. Complainant is one of the largest lodging franchisors, with over 6,200 hotels in countries and territories throughout the world.
3. Complainant has used the CHOICE PRIVILEGES mark in the United States since 2001.
4. Complainant uses the web page <choicepriveleges.com> to redirect users to Complainant’s official web page <choicehotels.com>, which advertises hotel services, the CHOICE PRIVILEGES VISA credit card and customer loyalty reward program, and facilitates the redemption of points earned through the program. The disputed domain name, <choiceprivilege.com>, is confusingly similar to Complainant’s CHOICE PRIVILEGES mark as it is comprised of Complainant’s mark with the deletion of the “s.”
5. Respondent is not commonly known by the disputed domain name as revealed by the WHOIS information. Further Complainant has not licensed or otherwise authorized Respondent to use the mark at issue.
6. Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name is currently inactive; however, it was previously connected with a pay-per-click website with links to websites offering lodging, travel reservation services, and credit card services that directly competed with Complainant’s services.
7. Respondent’s bad faith is demonstrated by a pattern of cybersquatting.
8. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting potential customers to third-party websites unaffiliated with Complainant.
9. Respondent attracts users to the disputed domain name by intentionally creating confusion with Complainant for commercial gain.
10. Respondent had constructive and/or actual knowledge of Complainant’s right in the mark.
11. Respondent’s bad faith is evidenced by the fact that he resolving page is currently inactive.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHOICE PRIVILEGES mark. Respondent’s domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <choiceprivilege.com> domain name, and that Respondent registered and uses 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 owns the CHOICE PRIVILEGES mark through its trademark registration with the USPTO (e.g., Reg. No. 2,610,622 registered on August 20, 2002). Complainant’s USPTO registration establishes its right in the CHOICE PRIVILEGES mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside of the United States. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends the <choiceprivilege.com> domain name is confusingly similar to the CHOICE PRIVILEGES mark. The disputed domain name consists of Complainant’s mark with the subtraction of one letter, specifically, the “s” at the end of the mark. Complainant contends that the addition of the top-level domain name “.com” does not affect the disputed domain name for the purposes of determining whether it is identical or confusingly similar. The Panel notes that the disputed domain name also removes the space between words in Complainant’s mark. The Panel finds that Respondent’s <choiceprivilege.com> domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent is not commonly known by the disputed domain name. Complainant argues that the WHOIS information does not suggest Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent in this case as “Domain Admin.” Further, Complainant asserts that it has not licensed or otherwise authorized Respondent to use the CHOICE PRIVILEGES mark. Therefore, the Panel finds that Respondent is not commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name is currently inactive; however, Complainant claims the resolving site was previously connected with a pay-per-click website with links to websites offering lodging, travel reservation services, and credit card services that directly competed with Complainant’s services. Respondent’s prior use of a pay-per-click site does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant contends <choiceprivilege.com> currently resolves to an inactive page. Complainant includes a screen shot of the resolving page which shows the browser “cannot display the webpage.” The Panel finds the resolving page is inactive and that such non-use demonstrates Respondent is not using the disputed domain name for 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s former use of the disputed domain name disrupts Complainant’s business by diverting potential customers to third-party websites unaffiliated with Complainant as well as links to websites offering lodging, travel reservation services, and credit card services that directly compete with Complainant’s services. Complainant contends Respondent knew or should have known that Complainant’s business would be disrupted as a result of Respondent’s registration and use of the disputed domain name. Because the Panel determines Respondent’s prior use to have competed with and disrupted Complianant’s business, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent’s bad faith registration is demonstrated by Respondent’s actual knowledge of Complainant’s right in the mark. Complainant contends that its CHOICE PRIVILEGES mark is well known and widely advertised in the United States and worldwide. Complainant argues that because the disputed domain name is so similar to the mark at issue, with the mere deletion of the letter “s,” this fact indicates Respondent had actual knowledge of Complainant’s mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant additionally contends the resolving page is currently inactive. Complainant includes a screen shot of the resolving page which shows the browser “cannot display the webpage.” The Panel finds the resolving page is inactive and that such non-use demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds 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 <choiceprivilege.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 3, 2013
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