Choice Hotels International, Inc. v. Domain for Sale or Lease c/o EFT Everlasting Friendship Trus
Claim Number: FA0608000767096
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle B. Markus, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Domain for Sale or Lease c/o EFT Everlasting Friendship Trus (“Respondent”), 22 Greenville Street, St. Helier, Jersey JE48PX, GB.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <comfortresort.com> and <comfortsuitesairport.com>, registered with Aaaq.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 2, 2006.
On August 2, 2006, Aaaq.com confirmed by e-mail to the National Arbitration Forum that the <comfortresort.com> and <comfortsuitesairport.com> domain names are registered with Aaaq.com and that Respondent is the current registrant of the names. Aaaq.com has verified that Respondent is bound by the Aaaq.com 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 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@comfortresort.com and postmaster@comfortsuitesairport.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <comfortresort.com> domain name is identical to Complainant’s COMFORT RESORT mark and Respondent’s <comfortsuitesairport.com> domain name is confusingly similar to Complainant’s COMFORT and COMFORT SUITS marks.
2. Respondent does not have any rights or legitimate interests in the <comfortresort.com> and <comfortsuitesairport.com> domain names.
3. Respondent registered and used the <comfortresort.com> and <comfortsuitesairport.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., holds registrations for the COMFORT (Reg. No. 1,788,671 issued August 17, 1993), COMFORT RESORT (Reg. No. 3,050,877 issued January 24, 2006) and COMFORT SUITES (Reg. No. 1,712, 482 issued September 1, 1992) marks with the United States Patent and Trademark Office (“USPTO”). Complainant utilizes its registered marks in connection with offering hotel services, online hotel reservation services and hotel franchising opportunities. Complainant has registered the <comfortsuites.com> domain name, including the COMFORT and COMFORT SUITES marks, in order to operate a website providing its online hotel reservation services.
Respondent registered the <comfortresort.com> domain name on October 10, 2003 and registered the <comfortsuitesairport.com> domain name on October 6, 2003. Respondent is using the <comfortsuitesairport.com> domain name to redirect Internet users to Respondent’s commercial website which promotes a competing hotel service called “Airport Suites, Bangkok, Thailand.” Respondent’s website includes links for “rates & location” and “enquiry & reservation.” Currently, Respondent’s <comfortresort.com> domain name does not resolve to any content. There is no evidence that Respondent is engaged in any demonstrable preparations to use the <comfortresort.com> domain name.
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. 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.”).
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 established rights in the COMFORT and COMFORT SUITES marks through registration of those marks with the USPTO well before Respondent’s registration of the disputed domain name. Complainant’s COMFORT RESORT mark was registered with the USPTO after Respondent registered the disputed domain names. However, the Complainant filed for registration of the COMFORT RESORT mark on June 1, 2005 and the registration acknowledges that Respondent had used the mark in commerce since April 16, 1992, establishing that Complainant’s rights in the mark predate the filing of the registration application based on long and continuous use. Thus, the Panel finds that Complainant has established rights in the COMFORT, COMFORT SUITES and COMFORT RESORT marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <comfortresort.com> domain name is
identical to Complainant’s COMFORT RESORT mark. The disputed domain name merely adds the top-level domain “.com”
to Complainant’s mark, which does not create a distinct domain name. Respondent’s <comfortsuitesairport.com>
domain name is also confusingly similar to Complainant’s COMFORT and
COMFORT SUITES marks. The disputed
domain name includes Complainant’s marks in their entirety, adding the term
“airport,” which is also descriptive of Complainant’s business, as it may refer
to hotels located near airports. Thus,
the Panel finds that Respondent’s domain names are identical and confusingly
similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <comfortresort.com> and <comfortsuitesairport.com>
domain names. Complainant’s
assertion constitutes a prima facie case for purposes of the Policy,
shifting the burden to Respondent to demonstrate that it does have rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). Respondent had an opportunity
to present the panel with evidence or arguments in support of its rights or
legitimate interests in the disputed domain names by submitting a
Response. The Panel views Respondent’s
failure to do so as suggesting that Respondent lacks those rights or legitimate
interests. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The Panel will evaluate the available evidence to determine whether
Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the <comfortsuitesairport.com> domain
name to attract Internet users to Respondent’s commercial website offering
hotel services in direct competition with Complainant. Respondent’s website claims repersent
“Airport Suites, Bangkok, Thailand” and includes links for “rates &
location” and “enquiry & reservation.”
Because Respondent is using a confusingly similar domain name to
redirect Internet users to its website, this use is not a bona fide
offering of goods or services as contemplated by Policy ¶ 4(c)(i). Further, because Respondent presumably
profits from its commercial website, this use is also not a legitimate
noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent lacks
rights or legitimate interests in the <comfortsuitesairport.com> domain
name pursuant to Policy ¶¶ 4(c)(i) and (iii).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the
parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site).
Respondent’s <comfortresort.com> domain name currently does not resolve to any content. There is no available evidence that Respondent is engaged in any demonstrable preparations to use the disputed domain name. The Panel finds that Respondent’s non-use of the disputed domain name for almost three years indicates that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name).
There is no evidence that Respondent is commonly known by
the disputed domain names. Respondent’s
WHOIS information identifies Respondent as “Domain for Sale or Lease,” an
identification unrelated to the disputed domain names. Further, Complainant asserts without
contradiction that Respondent is not affiliated with Complainant and does not
have permission from Complainant to reflect Complainant’s marks in a domain
name. The Panel finds that Respondent
is not commonly known by the disputed domain names and thus, lacks rights or
legitimate interests as contemplated by 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s WHOIS information, available to anyone doing a WHOIS search for either of the disputed domain names, identifies Respondent as “Domain for Sale or Lease.” The implication from this identification is that the disputed domain names are indeed available for sale or lease. The Panel finds that the available evidence suggests that Respondent is attempting to sell or lease the disputed domain names, and finds such use to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (holding that the respondent’s manner of identifying itself conveyed its intention to sell the disputed domain name); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale.”).
This is not the first time that Respondent has been involved in an UDRP domain name dispute. In four previous disputes, the panels found bad faith on the part of Respondent in registering domain names reflecting the marks of others. See Société des Hôtels Méridien v. EFT, D2004-0995 (WIPO Jan. 21, 2005); see also Accor v. Everlasting Friendship Trust, D2005-0288 (WIPO May, 23 2005); see also Hilton Group Plc v. EFT, D2005-0682 (WIPO Sept. 27, 2005); see also ACCOR v. GBT D2005-0809 (WIPO Oct. 5, 2005). Respondent’s repeated registration of domain names reflecting the marks of others and in which Respondent lacks rights or legitimate interests, indicates a pattern of behavior. Respondent’s pattern of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Respondent’s <comfortsuitesairport.com> domain name redirects Internet users to Respondent’s website. Internet users seeking Complainant’s genuine website at the <comfortsuites.com> domain name may add the descriptive term “airport” to their search and thus, find themselves redirected to Respondent’s website. Once at Respondent’s website, Internet users may use Respondent’s hotel services instead of Complainant’s hotel services disrupting Complainant’s business. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <comfortsuitesairport.com> domain name is confusingly similar to Complainant’s marks. Internet users seeking Complainant’s genuine website using Complainant’s mark may easily be redirected to Respondent’s website. Because of the confusing similarity between the disputed domain name and Complainant’s marks, Internet users may mistakenly believe that Respondent’s website is affiliated with Complainant. The fact that Respondent’s website offers hotel services in competition with Complainant further reinforces this confusion. Respondent is presumably profiting from this confusion when Internet users purchase its hotel services. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); 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).
The Panel is not limited to the circumstances highlighted in
Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).
Respondent’s failure to demonstrate any preparations for use of the <comfortresort.com>
domain name almost three years after registering the domain name implies
that Respondent does not have a good faith use for the disputed domain
name. The Panel finds that Respondent’s
lack of demonstrable preparations for use of the disputed domain name is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); see also Mondich v. Brown, D2000-0004 (WIPO Feb.
16, 2000) (holding that the respondent’s failure to develop its website in a
two year period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comfortresort.com> and <comfortsuitesairport.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 21, 2006
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