Choice Hotels International, Inc. v. QTK
Internet (Name Proxy)
Claim Number: FA0501000401826
Complainant is Choice Hotels International, Inc. (“Complainant”),
represented by N. Christopher Norton,
of Arent Fox PLLC, 1050 Connecticut
Avenue, N.W., Washinton, DC 20036-5339.
Respondent is QTK Internet (Name
Proxy) (“Respondent”), BCM Box
1768, London, England WC1N 3XX.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <econolodgelasvegas.com>
and <comfortinn‑bellingham.com>,
registered with Go Daddy Software, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 14, 2005.
On
January 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <econolodgelasvegas.com>and
<comfortinn‑bellingham.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, 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
January 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 2005 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@econolodgelasvegas.com
and postmaster@comfortinn-bellingham.com by e‑mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 17, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Judge Harold Kalina (Ret.)
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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <econolodgelasvegas.com> domain name is confusingly similar
to Complainant’s ECONO LODGE mark, and Respondent’s <comfortinn‑bellingham.com> domain name is confusingly
similar to Complainant’s COMFORT INN mark.
2. Respondent does not have any rights or
legitimate interests in the <econolodgelasvegas.com>
and <comfortinn-bellingham.com>
domain names.
3. Respondent registered and used the <econolodgelasvegas.com> and <comfortinn-bellingham.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Choice Hotels International, Inc., is a large hotel franchiser, with nearly
5,000 hotels in 44 countries and territories.
Complainant holds the registration for the ECONO LODGE and COMFORT INN
marks.
Complainant
registered the ECONO LODGE mark (Reg. No. 2,178,518) with the U.S. Patent and
Trademark Office (“USPTO”) on August 4, 1998.
Complainant also registered the ECONO LODGE design mark (Reg. No.
1,799,814) on October 19, 1993.
Complainant
registered the COMFORT INN mark (Reg. No. 1,315,180) with the USPTO on January
15, 1985. Complainant also registered
COMFORT INNS (Reg. No. 1,265,290) on January 24, 1984, COMFORT INN design mark
(Reg. No. 1,316,274) on January 22, 1985, COMFORT INN design mark (Reg. No.
1,516,053) on December 6, 1988, COMFORT INN & SUITS (Reg. No. 2,264,702) on
July 27, 1999.
Respondent, QTK
Internet (Name Proxy), registered the <econolodgelasvegas.com>
domain name on June 1, 2001. Respondent
registered the <comfortinn‑bellingham.com>
domain name on August 7, 2001. Both
domain names redirect the Internet user to the <roomsusa.com> domain
name, which provides a hotel search and booking service at the resultant
website.
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."
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.
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.
The Panel finds
that Complainant has rights in the ECONO LODGE mark and the COMFORT INN mark as
evidenced by its registration of the marks with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive, and Respondent has the burden of refuting this
assumption).
Generally
speaking, creating a domain name by taking another’s mark, removing the space
between words, and adding the Top-Level Domain (gTLD) “.com” does not
significantly distinguish a domain name from a mark. See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical
to Complainant’s mark because the generic top-level domain (gTLD) “.com” after
the name POMELLATO is not relevant); see
also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
The Panel finds
that Respondent’s <econolodgelasvegas.com>
domain name is confusingly similar to Complainant’s ECONO LODGE mark because
the only difference is the addition of the geographic term “Las Vegas,” which
does not significantly distinguish the domain name from the mark. See
VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between Complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where
Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000)
(finding that the domain name <cmgiasia.com> is confusingly similar to
Complainant’s CMGI mark).
The Panel finds
that Respondent’s <comfortinn‑bellingham.com>
domain name is confusingly similar to Complainant’s COMFORT INN mark
because the only difference is the addition of the hyphen and the geographic
term “Bellingham,” which does not significantly distinguish the domain name
from the mark. InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The
domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.
The addition of a hyphen and .com are not distinguishing features”); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly similar to
Complainant’s mark because "the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar").
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. Therefore, the
Panel accepts any reasonable assertion by Complainant as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the Complaint to be
deemed true); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
appropriating Complainant’s marks to redirect Complainant’s customers to a
competing hotel locator service. The
Panel finds that appropriating one’s mark to provide a competing service to the
mark holder’s customers is not a bona fide offering of a goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
There is nothing
in the record, including the WHOIS domain name registration information, which
indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the domain names pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s ECONO LODGE and COMFORT INN marks to offer
competing services. The Panel finds
that no matter what service Respondent may offer at the <roomsusa.com>
domain name, its services cease to be a good faith offering once it
appropriates the marks of hoteliers in its domain names. The Panel finds that this is a clear case of
Respondent trying to ride on the coat tails of Complainant’s goodwill, and,
therefore, bad faith pursuant to Policy ¶ 4(b)(iii). See Gen. Media Communications,
Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad
faith where a competitor of Complainant registered and used a domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic
website); see also Lubbock Radio Paging
v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area).
The Panel also
infers that Respondent is generating revenues by booking reservations with its
“RoomsUSA.com” service. Using a domain
name that is confusingly similar to another’s mark to generate revenues is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally attract users to a direct competitor of Complainant); see also AltaVista v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where
Respondent linked the domain name to a website that offers a number of web
services).
The Panel finds
that Complainant has established 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 <econolodgelasvegas.com>
and <comfortinn‑bellingham.com>
domain names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 3, 2005
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