Choice Hotels International, Inc. v.
AnnaValdieri
Claim Number: FA0607000758830
PARTIES
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle B. Markus, of Arent Fox PLLC, 1050 Connecticut Avenue, N.W., Washington, DC 20036-5339. Respondent is AnnaValdieri (“Respondent”), Box 245, Vienna 1130, AT.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choicehotels.org>,
registered with Bizcn.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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 26, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 27, 2006.
On August 3, 2006, Bizcn.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <choicehotels.org>
domain name is registered with Bizcn.com, Inc. and that the Respondent is the
current registrant of the name. Bizcn.com,
Inc. has verified that Respondent is bound by the Bizcn.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 August 4, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 24, 2006 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@choicehotels.org by e-mail.
A timely Response was received and determined to be complete on August
7, 2006.
On August 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the world’s largest lodging franchisors, with
over 5,200 hotels in countries and territories throughout the world. In the United States, Europe, and in other
countries and territories throughout the world, Complainant has continuously
used the mark CHOICE HOTELS since at least as early as November 1990. Complainant has invested substantial sums of
money in developing and marketing its CHOICE HOTELS mark. The CHOICE HOTELS mark has been and
continues to be widely publicized through advertising throughout the United
States, Europe, and other countries and territories. As a result, consumers have come to associate the CHOICE HOTELS
mark with Complainant’s high quality services.
Complainant owns and uses the domain names <choicehotels.com> and
<choicehotelseurope.com> to advertise its hotel services, to advertise
and facilitate its online hotel reservation services, and to promote its hotel
franchising services. Complainant uses
the CHOICE HOTEL mark extensively on its web sites, which represent an important
marketing channel for the company.
Complainant owns numerous registrations in the United States and around
the world for the CHOICE HOTELS word mark.
Registrations are present in the United States, Australia, Japan, the
European Community, Mexico and other countries.
Complainant has also established common law rights in its CHOICE HOTELS
mark.
Many years after Complainant adopted and first used its CHOICE HOTELS
mark, and long after the mark became famous, Respondent registered the domain
name <choicehotels.org>.
Without authorization from Complainant, Respondent registered the
disputed domain name on June 14, 2005.
Respondent’s domain name is identical to Complainant’s CHOICE HOTELS
mark and is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the subject domain
name. Respondent is not licensed or
authorized to use Complainant’s CHOICE HOTELS mark and is not named or commonly
known as CHOICE HOTELS.
Respondent commercially benefits from the disputed domain name by
redirecting Internet users to a commercial search engine. This does not constitute a bona fide
offering of goods or services.
Respondent registered and is using the <choicehotels.org> domain
name in bad faith. Respondent is
commercially benefiting from the disputed domain name by creating a likelihood
of confusion with Complainant’s mark and redirecting the unsuspecting to a
commercial search engine for financial gain.
B. Respondent
Respondent states that she registered the domain name in good faith
over one year ago as well as many other generic domains of various kinds
related to the travel industry and temporary parked them on a PPC page while
working offline. Respondent sees no
violation of Complainant’s trademark.
She is simply looking for generic and targeted keywords to use for her
own projects but under no circumstances will she ever violate other
people/companies rights. Respondent is
sure of her good faith.
FINDINGS
1.
Complainant is
one of the largest lodging franchisors in the world.
2.
Complainant
owns registrations for the mark, CHOICE HOTELS, in numerous countries,
including the United States (Registration No. 2,717,062); European Community
(Registration No. 2,272,466); Switzerland (Registration No. 500,481); Canada,
Mexico, Australia, and others.
3.
Complainant
owns and uses the domain names <choicehotels.com> and
<choicehotelseurope.com>.
4.
On June 14,
2005, Respondent registered the domain name <choicehotels.org> without
the permission or authorization of Complainant.
5.
Respondent’s
domain name resolves itself into a search engine offering reservation services
for hotels and other related services.
6.
Respondent’s
domain name <choicehotels.org> is identical to Complainant’s mark
CHOICE HOTELS.
7.
Respondent has
no rights or legitimate interests in the disputed domain name.
8.
Respondent
registered and used the disputed domain name in bad faith.
DISCUSSION
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.
Complainant must first establish rights in
the mark, CHOICE HOTELS, before it can proceed. Complainant does establish its rights in the mark by showing
registrations with trademark authorities.
Complainant shows registrations in the United States, the European
Community and other countries for the mark, CHOICE HOTELS. These registrations are sufficient to
establish rights in the mark pursuant to Policy¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum Aug. 4, 2004) (holding that through its holding of
numerous trademark registrations around the world, Google had established
rights in the mark); see also Honeywell Int’l Inc. v. r9.net, FA 445594
(Nat. Arb. Forum May 23, 2005). The
Policy does not require that the mark be registered in the country in which the
respondent operates. It is
sufficient that the Complainant can demonstrate a mark in some
jurisdiction. See Koninklijke KPN
N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). Furthermore, registrations, under United
States trademark law, hold a presumption that they are inherently distinctive
and have acquired secondary meaning. See
Men’s Warehouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002); see
also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Respondent’s domain name <choicehotels.org>
is identical to Complainant’s CHOICE HOTELS mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10,
2000) (finding that the domain name <microsoft.org> is identical to
complainant’s Microsoft mark); see also BMW AG v. Loophole, D2000-1156
(WIPO Nov. 13, 2001) (finding that there was “no doubt” that the domain name
<bmw.org> is identical to the complainant’s well-known and registered BMW
trademark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) (holding that top-level domains such as “com” are irrelevant
additions to domain names for the purposes of comparison with trademarks).
Respondent does not contend that the disputed
domain name is not identical to Complainant’s mark.
Complainant prevails under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy¶4(a)(ii), then the burden shifts to Respondent to show
she does have rights or legitimate interests. See Starwood Hotels &
Resorts Worldwide, Inc. v. Samjo CellTech. Ltd., FA406512 (Nat. Arb. Forum
Mar. 9, 2005) (holding that the threshold for making such a showing is low,
since it is difficult to produce evidence to support a negative statement).
Complainant shows that it gave no permission
or authorization to Respondent to use the CHOICE HOTELS mark and that
Respondent is not known by the name, CHOICE HOTELS. Under the facts and circumstances of this case, the Panel finds
that Complainant proves enough to shift the burden to Respondent to go forward
with the presentation of evidence.
Respondent counters by the simple assertion that the domain name <choicehotels.org>
consists of generic terms and that she “under no circumstances” will “ever
violate other people/companies rights.”
Complainant did not file a supplemental brief
to address the issue of the generic nature of CHOICE HOTELS. In the Complaint, it was argued that CHOICE
HOTELS is a famous mark and that registration carries a presumption that CHOICE
HOTELS is distinctive and has acquired secondary meaning.
At this point, the Panel must consider the
powers and responsibility of a panelist under the Policy. Rule 15(a) of the Rules for Uniform Domain
Dispute Resolution Policy, states that “A Panel shall decide a complaint on the
basis of the statements and documents submitted and in accordance with the
Policy, these Rules and any rules and principles of law that it deems
applicable.” Rule 10 requires the Panel
shall ensure that the Parties are treated with equality. What should the response of the Panel be if
certain circumstances are revealed in the research of domain name decisions
which impact the proceeding at hand, when these cases were neither cited nor
argued in either the Complaint or Response when such prior domain name
decisions tend to prove unfavorable inferences to one of the parties? The inferences raised by these decisions
were not argued and did not constitute any part of the “statements and documents”
submitted to this Panel.
Rule 10 instructs the Panel to “conduct the
administrative proceeding in such manner as it considers appropriate in
accordance with the Policy and these Rules.”
The Panel finds that it is permissible to consider prior decisions of
UDRP panels in the determination of a dispute even when such decisions are
neither recognized nor cited by either party, even when the content of such
decisions may cast an unfavorable light upon one of the parties and when the
content of such prior decisions assist the Panel in the proper resolution of
the proceedings at hand. The Panel
considers prior domain name dispute decisions as “principles of law” under Rule
15 which may be considered by a Panel.
Respondent contends that she innocently
registered a generic term as a domain name and never had any intent to violate
the trademark rights of others. The
Panel’s research suggests that Respondent’s explanation is not quite as
innocent as it seems. Respondent is no
stranger to domain name disputes. In New
Chapter, Inc. v. Anna Valdieri, D2006-0109 (WIPO Apr. 5, 2006), the domain
name <zyflamend.com> was transferred to complainant because this
Respondent was found to have registered a domain name identical to
complainant’s mark, had no rights or legitimate interests in the domain name
and that it had been registered and used in bad faith. The Decision in the New Chapter case
states as follows: “The Complainant
also cites, as further evidence of the Respondent’s bad faith, numerous other
websites which have been registered by the Respondent which incorporate
well-known marks of major companies, organizations and individuals, including,
for example: ‘www.eddiebauer.org’, ‘www.virginlottery.org’, and
‘www.departmentofjustice.org’. The
Complainant contends that this exemplifies a pattern of bad faith on the part
of the Respondent and that the use of its ZYFLAMEND mark by the Respondent is
therefore not an isolated incident…The Panel…considers that the numerous other
domain names which the Respondent has registered which incorporate famous organizations
and individuals and which are clearly unconnected with the Respondent, are
further evidence that the Respondent is acting in bad faith in using the
ZYFLAMEND mark.”
The series of cases that follow are equally
instructive. In each of the cases, this
Respondent registered domain names using the “.org” designation, which were
identical or confusingly similar to the complainant’s marks. In each case the disputed domain name
resolved to a search engine to other commercial websites for which a referral
or click-through fee was presumably collected by this Respondent. See LTD Commodities LLC v. Anne Vildieri,
FA 558338 (Nat. Arb. Forum Nov. 11, 2005) (transferring
<ltdcommodities.org> to LTDCommodities LLC and stating “…Respondent is
using the disputed domain name to divert Internet traffic to a portal website
that provides connections to websites offering a variety of goods and
services. The Respondent’s use of a
confusingly similar domain name as the Complainant’s registered marks to divert
users it not a use in connection with a bona fide offering of goods or services
pursuant to Policy¶4 (c)(i); additionally, Respondent’s use is not a legitimate
noncommercial or fair use pursuant to Policy ¶4 (c)(ii).”); see also Disney
Enterprises, Inc. v. Miss Anna Valdieri, FA 586947 (Nat. Arb. Forum Dec. 7,
2005) (transferring <disneystore.org> to Disney Enterprises, Inc. and
stating “The Panel finds that, absent any other evidence relating to use,
appropriating Complainant’s mark in a domain name to link to related and
unrelated sites does not demonstrate rights or legitimate interests because it
is not a bona fide offering pursuant to Policy ¶4 (c)(i) and is not a
legitimate noncommercial or fair use pursuant to Policy ¶4 (c)(iii)…”); see
also Hewlett Packard Company and Hewlett Packard Development Company v. Anna
Valdieri, FA 705158 (Nat. Arb. Forum June 20, 2006) (transferring <snapfish.org>
which was complainant’s registered trademark to complainant and stating
“Complainant contends that Respondent is using the identical
<snapfish.org> domain name to operate a website that features links to
various unrelated commercial websites from which Respondent presumably receives
referral fees. The Panel finds that
such use for Respondent’s own commercial gain is neither a bona fide offering
of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate
non-commercial or fair use pursuant to Policy ¶4 (c)(iii).”).
The last three cases are practically
identical to this case. In each case
Respondent appropriated another’s trademark, added “.org” to the trademark, and
used the domain name to resolve to a search engine, which offered click-through
ability to websites either competing directly with the trademark holder, or to
other commercial websites. Respondent
seems to be an originator of search engines that earn click-through fees by
directing Internet users to websites offering goods and services identical to
those offered by the trademark holder or to other commercial websites offering
other kinds of goods and services.
In this case the website at <choicehotels.org> presents the Internet user with click- through categories such as “Hotel Reservations,” “Hotels,” “Airline tickets,” “Car rental” and a number of other categories, which appear to compete with Complainant’s business.
Respondent’s use of the disputed domain name for commercial gain in the form of a commercial search engine 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy¶ (c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent’s contention that she innocently registered a generic domain
name with no intention to violate Complainant’s trademark rights is not proved
either by evidence or suggested by the facts and circumstances of this case. Respondent’s prior experience with search
engines using the trademark of others to attract Internet users to the sites
raises the inference that Respondent was aware of Complainant’s mark and
intentionally used it for commercial gain.
Complainant prevails under Policy¶ 4(a)(ii).
Complainant contends that Respondent’s <choicehotels.org>
domain name resolves to a commercial search engine displaying various links to
third-party websites. The Panel infers
that Respondent is receiving “click-through” fees for diverting Internet users
through these links and is taking advantage of the confusing similarity between
the disputed domain name and Complainant’s CHOICE HOTELS mark in order to
profit from the goodwill associated with the mark. Such registration and use represents bad faith pursuant to
Policy¶ 4(b)(iv). See Bank of
American Fork v. Shen, FA 699645 (Nat. Arb. Forum Jun. 11, 2006) (holding
that the respondent’s previous use of the <bankofamericanfork.com> domain
name to maintain a web directory was evidence of bad faith because the
respondent presumably commercially benefited by receiving click-through fees
for diverting Internet users to third-party websites); see also G.D. Searle
& Co v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also LTD Commodities, LLC v. Anna Valdieri, supra; Disney Enterprises,
Inv. v. Miss Anna Valdieri, supra; Hewlett-Packard Company and
Hewlett-Packard Development Company v. Anna Valdieri, supra.
Complainant prevails under Policy¶ 4(a)(iii).
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 <choicehotels.org>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 23, 2006
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