Choice Hotels International,
Inc. v. Ajay Patel
Claim Number: FA0712001119805
PARTIES
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <comfortinnandsuites.com> and <sleepinnandsuites.com>,
registered with Register.com, Inc.
PANEL
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.
Hon. Charles A. Kuechenmeister (Ret.)
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 14, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 17, 2007.
On December 19, 2007, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <comfortinnandsuites.com> and <sleepinnandsuites.com>
domain names are registered with Register.com,
Inc. and that the Respondent is the current registrant of the names. Register.com,
Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 20, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 9, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to postmaster@comfortinnandsuites.com and
postmaster@sleepinnandsuites.com by e-mail.
A timely Response was received and determined to be complete on January 8, 2008.
A timely Additional Submission by Complainant conforming to Forum
Supplemental Rule 7 was received by the Forum on January 11, 2008 and was
considered by the Panel.
On January 16, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles A. Kuechenmeister (Retired)
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Choice
Hotels International, Inc. (“Complainant”) owns numerous trademark
registrations in the
2.
Complainant
has also established common law rights in its COMFORT INN, COMFORT SUITES,
COMFORT INN & SUITES, SLEEP INN, and SLEEP INN & SUITES marks. There are over 2,350 hotels operating under
these marks in countries and territories throughout the world.
3.
Complainant
has continuously used the mark COMFORT INN since at least as early as June 1981, COMFORT SUITES since at least
as early as October 1985, COMFORT INN & SUITES since at least as early as
December 1996, SLEEP INN since
at least as early as October 1987, and SLEEP INN & SUITES since at least as
early as May 2000.
4.
Complainant has invested substantial sums of money in
developing and marketing its COMFORT INN, COMFORT SUITES, COMFORT INN &
SUITES, SLEEP INN, and SLEEP INN & SUTIES marks. They have been and continue to be widely
advertised throughout the
5. Complainant owns and uses the domain names <comfortinn.com>, <comfortsuite.com>, <comfortsuites.com>, <sleepinn.com>, and <sleepinns.com>, among others, to: (i) redirect Internet users to Complainant's web pages at <choicehotels.com>; (ii) advertise its hotel services; (iii) advertise and facilitate its online hotel reservation services; and (iv) promote its hotel franchising services.
6. Complainant uses its marks extensively on its websites, which represent an important marketing channel for the company, to advertise its hotel services and facilitate its online hotel reservation services for its hotel properties.
7.
Ajay
Patel ("Respondent") registered the disputed domain name <comfortinnandsuites.com> on October 23, 1999 and <sleepinnandsuites.com> on October 25, 1999.
8.
Respondent's
domain names wholly incorporate Complainant's marks. Further, they are identical in sound,
connotation, and commercial impression to Complainant's registered and famous COMFORT INN &
SUITES and SLEEP INN & SUITES
marks. Respondent's use of the word
"and" rather than the ampersand symbol ("&") used in Complainant's
registered and famous COMFORT INN & SUITES and SLEEP INN & SUITES marks
does not negate the confusing similarity of Respondent's domain names. See Wright & Lado, Inc. v.
Epstein, D2000-0621 (WIPO Sept. 9, 2000) (finding that the
<wrightandlado.com> domain name is identical to the complainant's WRIGHT & LADO mark
because the ampersand symbol is not reproducible in a URL). Therefore, the disputed domain names are
identical and/or
confusingly similar to Complainant's marks under ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
9.
Respondent was not authorized by Complainant
to register either of the disputed domain names.
10.
At
the time Respondent registered <comfortinnandsuites.com>,
he was a licensee of Complainant with authorization to operate a COMFORT INN
hotel property in
11.
COMFORT
INN & SUITES, SLEEP INN, and SLEEP INN & SUITES are wholly separate
brands within Complainant’s hotel system, distinct from COMFORT INN, and
Respondent has never been authorized by Complainant to use any of these marks
in any manner.
12.
At
no time was Respondent authorized by Complainant to operate a COMFORT INN & SUITES, SLEEP INN, or SLEEP INN
& SUITES hotel property, use any of these marks in any manner, or register
domain names incorporating any of these marks.
13.
Respondent
has no rights or legitimate interests of his own in the disputed domain names
under ICANN Rule
3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii), or ¶¶ 4(c)(i)-(iii)). 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 names, or that Respondent is commonly known by either of the disputed
domain names. Any rights he may have had
while a franchisee of Complainant for the COMFORT INN hotel property in Carmel
Church, VA terminated upon termination of his franchise, and he has no
continuing right to use the mark COMFORT INN based thereon. See
Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 94392 (Nat. Arb. Forum
May 5, 2000) ("Once a license has expired, use of a formerly licensed trademark
constitutes infringement."). Respondent
cannot make any good
faith claim that he (as an individual business or other organization) has ever
been named or commonly known as COMFORT INN & SUITES and/or the domain name
<comfortinnandsuites.com>.
14.
The
disputed domain names were registered and are being used in bad faith. See ICANN Rule 3(b)(ix)(3); ICANN Policy ¶¶ 4(a)(i) and (iii), and ¶ 4(b).
15.
As
a franchisee of Complainant's, Respondent was undoubtedly aware of Complainant's
many hotel brands. Further, Respondent
was only authorized to operate
a COMFORT INN hotel property, yet he registered the disputed domain names without authorization
from Complainant to use its COMFORT INN & SUITES or SLEEP INN & SUITES marks.
16.
Respondent
does not currently use the disputed domain names for any legitimate purpose. The disputed domain names both resolve to a web site where Respondent
is offering to sell them
for $300,000 each or $500,000 for both. These amounts are well in excess of Respondent's out-of-pocket costs
directly related to such domain names. An offer to sell domain names in excess
of the direct out-of-pocket expenses related to the registration of a domain name is
evidence of bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA180704 (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."); see also Morgan
Stanley v. Guerilla Freedom Fighter c/o
17.
Respondent’s
bad faith is further evidenced by the fact that he posted his offers to sell
the disputed domain names after
receiving a letter from
Complainant demanding that he cease-and-desist from using them.
B. Respondent
1. Respondent
has been contacted by representatives of Complainant concerning their interest
in acquiring the websites Respondent obtained in 1999. Respondent has asked Complainant to make an
offer but Complainant has not done so.
2. Respondent
is willing to negotiate based upon prices other than those posted on his
website.
3. Respondent
has not misrepresented or used any trademark items claimed by Complainant.
4. Respondent
obtained <comfortinnandsuites.com>
prior to the articles that were amended, <sleepinnandsuites.com>
afterward. Respondent was not aware that
he was in violation of legal ownership of these sites and will turn them over
upon being presented by the legal information.
C. Additional Submission by Complainant
1.
Complainant’s
mark COMFORT INN & SUITES is separate and distinct from its mark COMFORT
INN, which applied to the hotel Respondent operated as a franchisee. Its mark SLEEP INN & SUITES is separate
and distinct from both of the COMFORT marks.
Respondent’s status as a franchisee never gave him any rights or
interest in either COMFORT INN & SUITES or SLEEP INN & SUITES, which
are incorporated into the disputed domain names.
2.
The
Response only underscores Respondent’s bad faith by reaffirming his
“willingness” to negotiate transferring the disputed domain names to
Complainant for amounts based upon the offer displayed at his websites
($300,000 each or $500,000 for both).
These amounts are grossly disproportionate to the actual costs generally
incurred by a registrant for registering and maintaining two domain names.
3.
Respondent
states that Complainant has not offered in good faith to purchase the disputed
domain names, but in fact, notwithstanding repeated efforts, Complainant has
been unable to contact Respondent at all, for any purpose.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel makes the findings and determinations set forth below with
respect to the matters at issue between the parties.
Respondent did not deny any
of the material allegations in the Complaint, and the Panel has for the most
part taken those allegations as proven.
Complainant registered its
COMFORT INN & SUITES mark (Reg. No. 2,264,702 issued July 27, 1999) and the
SLEEP INN & SUITES mark (Reg. No. 2,456,170 issued May 29, 2001) with the
United States Patent and Trademark Office (“USPTO”). See
Complaint, Annex A. Although the registration date for the SLEEP INN &
SUITES mark does not predate Respondent’s registration of the <sleepinnandsuites.com>
domain name on October 25, 1999, the relevant date of
Complainant’s rights in this mark is the filing date, June 17, 1999. See
Annex A, Registration No. 2,456,170.
Thus, these registrations sufficiently establish Complainant’s rights in
the marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding
that the effective date of Complainant’s trademark rights date back to the
application’s filing date); see also Thompson v. Zimmer, FA 190625
(Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was
subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date.”).
Complainant
has continuously used the mark COMFORT INN & SUITES since at least as
early as December 1996, and SLEEP INN & SUITES since at least as
early as May 2000. It has invested substantial sums of money in
developing and marketing its COMFORT INN & SUITES and SLEEP INN &
SUTIES marks. They have been and
continue to be widely advertised throughout the
Complainant uses its marks extensively
on its web sites, which represent an important marketing channel for the
company, to advertise its hotel services and
facilitate its online hotel reservation services for its hotel properties.
Ajay Patel ("Respondent") registered <comfortinnandsuites.com> on October 23, 1999 and <sleepinnandsuites.com> on October 25, 1999.
Respondent's domain names wholly incorporate Complainant's COMFORT INN & SUITES and SLEEP INN & SUITES marks. They are identical in sound, connotation, and commercial impression to those marks. Respondent's use of the word "and" rather than the ampersand used in Complainant's COMFORT INN & SUITES and SLEEP INN & SUITES marks does not negate the confusing similarity of Respondent's domain names. See Wright & Lado, Inc. v. Epstein, D2000-0621 (WIPO Sept. 9, 2000) (finding that the <wrightandlado.com> domain name is identical to the complainant's WRIGHT & LADO mark because the ampersand symbol is not reproducible in a URL); see also EarthSky Commc’ns, Inc. v. eCommerce Adver., FA 944811 (Nat. Arb. Forum Apr. 26, 2007) (finding that the <earthandsky.org> domain name is confusingly similar to the EARTH & SKY mark because “the mere substitution of the ampersand with the word ‘and’ does not sufficiently distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i), particularly since an ampersand cannot be reproduced in a URL.”); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).
Furthermore, since a top-level domain is required of all domain names, the Respondent’s addition of the generic top-level domain “.com” to the disputed domain names is irrelevant under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
For the foregoing
reasons, the Panel finds and determines that the domain names are identical or
confusingly similar to the COMFORT INN & SUITES and SLEEP INN & SUITES
trademarks, in which the Complainant has substantial and demonstrated rights.
Complainant asserts and has presented
evidence that Respondent has not used and is not using either of the disputed
domain names in connection with a bona fide offering of goods or services, and
that he is not making a legitimate noncommercial or fair use of it, within the
meaning of Policy ¶¶ 4(c)(i) and
(iii). Complainant further asserts and has presented
evidence that the Respondent has no trademark or other intellectual property
right in either of said names, and that that Respondent has never been known by
the name COMFORT INN & SUITES or SLEEP INN & SUITES, <comfortinnandsuites.com>, or <sleepinnandsuites.com>.
At the time Respondent registered the
disputed domain names he was a licensee of Complainant with authorization to
operate a COMFORT INN hotel property in
Complainants having thus made a prima facie case in support of its claim
that Respondent has no right or legitimate interest in respect of either domain
name, the burden shifts to Respondent to show that he does possess rights or
legitimate interests pursuant to Policy ¶ 4(c).
See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this information
is “uniquely within the knowledge and control of the respondent”); see also 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 Policy ¶ 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.”).
Respondent has utterly failed to produce
evidence supporting any rights or legitimate interest he may have in respect of
either disputed domain name. He demands
that Complainant be put to its proof, apparently relying upon his registration of
the names to support his rights.
The mere registration of a domain name does
not, in and of itself, confer upon the registrant any rights in the name for
the purposes of Policy ¶ 4(a)(ii). Respondent has the burden to show his right
or legitimate interest in the domain names. (See authority cited above.) This necessarily implies that Respondent’s
rights or legitimate interests must come from a source beyond just the
registration of a domain name, since, if a Respondent could demonstrate rights
in a domain name by simply registering it, the UDRP would be superfluous. Self-serving assertions of rights or
legitimate interests in the domain name fails to satisfy Policy ¶
4(a)(ii). See Franzus Co. v. Cotner,
FA 125365 (Nat. Arb. Forum Nov. 7, 2002) (after the inactive use of the
disputed domain name for five years, Respondent’s “unsupported, self-serving
allegations alone are insufficient to establish that Respondent has rights or
legitimate interests in respect of the domain name at issue.”). Ways in which a Respondent can show rights or
legitimate interests include but are not limited to: use or preparations to use
the domain name in connection with a bona fide offering of goods or services prior
to notice of any dispute (Policy ¶ 4(c)(i)); the Respondent has been commonly
known by the disputed domain name (Policy ¶ 4(c)(ii)); and Respondent is making
a legitimate noncommercial or fair use of the domain name (Policy ¶ 4(c)(iii)). Respondent must submit evidence of something
other than a domain name registration in order to establish rights or
legitimate interests in that domain name.
He has submitted nothing.
Respondent’s <comfortinnandsuites.com> and <sleepinnandsuites.com> domain names resolve to a website indicating that the disputed domain names are for sale: $300,000 for one, or $500,000 for both. See Complaint, Annex D. This offer of the disputed domain names for sale does not constitute either 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), and further indicates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Accordingly, the Panel finds and determines
that the Respondent has no rights or legitimate interests in respect of either
domain name.
At the time Respondent registered both disputed domain names, Complainant’s COMFORT INN & SUITES mark was already both registered with the USPTO and generally known as representing Complainant’s hotels and hotel services, and Complainant’s SLEEP INN & SUITES mark was, at least, the subject of a pending trademark application that was ultimately approved. Additionally, Respondent was a franchisee of Complainant at the time he made the registrations, and would have been intimately aware of Complainant’s interest in those marks. The Panel finds that he had both actual and constructive knowledge of Complainant’s rights in the COMFORT INN & SUITES and SLEEP INN & SUITES marks. His registration of <comfortinnandsuites.com> and <sleepinnandsuites.com> in the face of such knowledge is clear evidence of bad faith within the meaning of Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Respondent’s <comfortinnandsuites.com>
and <sleepinnandsuites.com> domain
names resolve to a website offering to sell the disputed domain names for
amounts ($300,000 for one, or $500,000
for both)
clearly in excess of the out-of-pocket costs directly related to them. See
Complaint, Annex D. Such offering
constitutes use in bad faith within the meaning of Policy ¶4(a)(iii). See Bank of America Corp. v. Northwest. 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).”); see also World Wrestling Fed’n Entm’t, Inc. v. Bosman, D99-0001 (WIPO Jan.
14, 2000) (finding that the respondent used the domain name in bad faith
because he offered to sell the domain name for valuable consideration in excess
of any out-of-pocket costs); see also Morgan
Stanley v. Guerilla Freedom Fighter c/o
Respondent’s registration of two domain names
incorporating trademarks that he knew belonged to Complainant, and his
subsequent offering of them for sale at the prices quoted are precisely the
circumstances evidencing bad faith registration and use expressed in Policy ¶ 4(b)(i), i.e.,
“you have acquired the domain name primarily for the purpose of selling . . .
the domain name registration to the complainant who is the owner of the
trademark . . . for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name.” Accordingly, the Panel finds and determines
that Respondent registered and is using the disputed domain names in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comfortinnandsuites.com> and <sleepinnandsuites.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: January 29, 2008