Summerfield Hotel Company, L.P. v. WWW
Enterprise, Inc.
Claim
Number: FA0501000411803
Complainant is Summerfield Hotel Company, L.P. (“Complainant”),
represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP,
1601 Elm Street, Suite 3000, Dallas, TX 75201.
Respondent is WWW Enterprise,
Inc. (“Respondent”), Post Office Box 118, 5850 West Third Street, Los
Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <summerfieldsuite.net>, registered with OnlineNIC,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 31, 2005, OnlineNIC, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <summerfieldsuite.net> is
registered with OnlineNIC, Inc. and that Respondent is the current registrant
of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC,
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
February 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 28, 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@summerfieldsuite.net 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
March 5, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <summerfieldsuite.net>
domain name is confusingly similar to Complainant’s SUMMERFIELD SUITES mark.
2. Respondent does not have any rights or
legitimate interests in the <summerfieldsuite.net> domain name.
3. Respondent registered and used the <summerfieldsuite.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Summerfield Hotel Company, L.P., is an affiliate company of Wyndham
International, Inc., and offers spacious one and two bedroom suites, which are
for extended stays, business, leisure, training, vacations, temporary housing
and relocation. Complainant offers
these accommodations in Arizona, California, Colorado, Florida, Maryland,
Massachusetts, New Jersey, New York, North Carolina, Pennsylvania, Texas,
Washington, and Grand Cayman.
Complainant has
continuously used the SUMMERFIELD SUITES mark since 1989 for hotel services. Complainant holds a registration for the
mark through the United States Patent and Trademark Office (Reg. No. 1,605,108
issued July 3, 1990).
Complainant’s
main website is operated at the <summerfieldsuites.com> domain name.
Respondent
registered the <summerfieldsuite.net> domain name on July 13,
2004. Respondent is using the domain
name to redirect Internet users to a website entitled, “What you need, when you
need it.” In addition, the website
provides various links for travel and hotel-related services that are in
competition with Complainant’s services.
Respondent presumably commercially benefits from the diversion of
Internet users to the disputed domain name by receiving pay-per-click fees from
advertisers when Internet users follow the links on the 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.
Complainant has
provided extrinsic evidence that it holds a trademark registration with the
United States Patent and Trademark Office for the SUMMERFIELD SUITES mark. In addition, Complainant established that is
has rights in the mark through continued use of its mark in commerce over the
last sixteen years. 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. Respondent has the burden
of refuting this assumption.); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require complainant to demonstrate ‘exclusive rights,’ but only that
complainant has a bona fide basis for making the Complaint in the first place).
Respondent’s
domain name is confusingly similar to Complainant’s SUMMERFIELD SUITES mark
because the domain name incorporates the mark and simply adds the generic
top-level domain (“gTLD”) “.net” and deletes the letter “s” from SUITES. The addition of a gTLD and the deletion of
the letter “s” do not distinguish Respondent’s domain name from Complainant’s
mark. Thus, the Panel finds that
Respondent’s minor alterations to Complainant’s mark are not sufficient to
differentiate Respondent’s domain name from Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July
13, 2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see also Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from 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 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).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Respondent has
not submitted a response in this proceeding.
Thus, the Panel chooses to view the Complaint in the light most
favorable to Complainant and accepts as true all assertions made by
Complainant. Accordingly, the Panel
presumes that Respondent lacks rights and legitimate interests in the <summerfieldsuite.net>
domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
complainant has asserted that respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by complainant that respondent has no rights
or legitimate interests is sufficient to shift the burden of proof to
respondent to demonstrate that such rights or legitimate interests do exist); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
In the WHOIS
contact information, Respondent lists its name as “WWW Enterprise, Inc.” However, since Respondent failed to respond
to the Complaint, there has not been any affirmative evidence provided to the
Panel showing that Respondent was ever commonly known by the disputed domain
name. Moreover, Complainant’s first use
of the SUMMERFIELD SUITES mark in commerce and its registration of the mark
predates Respondent’s registration of the domain name. Furthermore, Respondent has not been
authorized by Complainant to use the SUMMERFIELD SUITES mark in its domain
name. Thus, the Panel concludes that
Respondent has not been commonly known by the domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc.
v. 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name).
Respondent’s use
of the infringing <summerfieldsuite.net> domain name to offer and
advertise hotel and travel related services, which are similar to services that
Complainant offers at its website, is not 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). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that because respondent is using the infringing domain name to sell
prescription drugs it can be inferred that respondent is opportunistically
using complainant’s mark in order to attract Internet users to its website); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services”); see also
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002) (finding that respondent’s diversionary use of complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of complainant, was not a bona fide offering of
goods or services).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and deviates only with the deletion of the letter “s,”
suggests that Respondent knew of Complainant’s rights in the SUMMERFIELD SUITES
mark. Moreover, the Panel infers that
Respondent had actual knowledge of Complainant’s rights in the mark due to the
obvious connection between the content advertised on Respondent’s website and
Complainant’s business. Furthermore,
Respondent registered the domain name with constructive knowledge due to
Complainant’s registration of the mark with the USPTO. Thus, the Panel finds that Respondent
registered and used <summerfieldsuite.net> domain name in bad
faith pursuant to 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse"); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Furthermore,
Respondent is using the <summerfieldsuite.net> domain name, which
features a confusingly similar variation of Complainant’s SUMMERFIELD SUITES,
to operate a website that features links to competing travel and hotel-related
services. Such use constitutes
disruption and is evidence that Respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iii).
See EthnicGrocer.com, Inc.
v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to the
various competing websites. It is
likely that Internet users will be confused by the services offered at
Respondent’s website since the services are similar to services offered by
Complainant, and the domain name hosting Respondent’s website incorporates
Complainant’s mark. Thus, the Panel
concludes that Respondent is using the domain name in bad faith pursuant to Policy
¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr.
22, 2000) (finding bad faith where respondent attempted to attract customers to
its website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as complainant); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if respondent profits from
its diversionary use of complainant's mark when the domain name resolves to
commercial websites and respondent fails to contest the Complaint, it may be
concluded that respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where respondent attracted users to a website sponsored by respondent and
created confusion with complainant’s mark as to the source, sponsorship, or
affiliation of that website).
The Panel finds
that Complainant 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 <summerfieldsuite.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 21, 2005
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