Sierra Suites Franchise, L.P. v. Steve Kerry d/b/a North West Enterprise, Inc
Claim Number: FA0608000778972
Complainant is Sierra Suites Franchise, L.P. (“Complainant”), represented by Megan E. Gray, of Roylance, Abrams, Berdo & Goodman, LLP, 1300 19th St., NW, Suite 600, Washington, DC 20036. Respondent is Steve Kerry d/b/a North West Enterprise, Inc (“Respondent”), 22915 Telegraph Rd, Santa Fe Springs, CA 90670.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sierrasuite.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2006.
On August 17, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <sierrasuite.net> domain name 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 August 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 6, 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@sierrasuite.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sierrasuite.net> domain name is confusingly similar to Complainant’s SIERRA SUITES mark.
2. Respondent does not have any rights or legitimate interests in the <sierrasuite.net> domain name.
3. Respondent registered and used the <sierrasuite.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the SIERRA SUITES mark since 1995 to refer to its hotel accommodations. Complainant’s main website is located at the <sierrasuites.com> domain name. Complainant has registered the SIERRA SUITES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,562,701 issued April 23, 2002).
Respondent registered the <sierrasuite.net> domain name on July 13, 2004. Respondent’s <sierrasuite.net> domain name resolves to a web page with links to Complainant’s competitors in the hotel accommodations industry.
Respondent has been involved in at least seven previous UDRP proceedings. Respondent did not submit a Response in any of these proceedings and in each instance, the panel transferred the disputed domain name to the complainant. See, e.g., Expedia, Inc. v. Kerry, FA 713698 (Nat. Arb. Forum July 13, 2006); Dell Inc. v. Kerry, FA 705267 (Nat. Arb. Forum June 21, 2006); Countrywide Home Loans, Inc. v. Kerry, 669549 (Nat. Arb. Forum May 15, 2006). Complainant’s Reverse WHOIS search also revealed that Respondent has registered over 662 domain names containing misspellings of other entities’ trademarks.
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’s federal trademark registration for the SIERRA SUITES mark demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The <sierrasuite.net> domain name contains
Complainant’s entire SIERRA SUITES mark except for the final letter “s.” In Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the respondent
registered the <compq.com> domain name, and the panel found it to be
confusingly similar to the complainant’s COMPAQ mark because a small change
that resulted in a misspelling of the mark did not diminish the confusing
similarity between the mark and the domain name. Likewise, Respondent’s <sierrasuite.net> domain name
differs from Complainant’s mark by only one letter, which is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v.
UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the
<utahwedding.com> domain name was confusingly similar to the
complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the
letter “s”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <sierrasuite.net> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <sierrasuite.net>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Steve
Kerry d/b/a North West Enterprise, Inc.,” and there is no other evidence in the
record suggesting that Respondent is commonly known by the <sierrasuite.net>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <sierrasuite.net>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also 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).
Additionally, Respondent is using the <sierrasuite.net>
domain name to redirect Internet users seeking information on Complainant’s
hotels to a commercial web directory displaying links to competing hotel
companies. In Expedia, Inc. v.
Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panel found the
respondent’s use of a domain name to divert consumers to other travel websites
that competed with the complainant was not a use in connection with 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). Because Respondent is using the disputed
domain name in a similar fashion and likely profiting from its diversion of
Internet users to a competing travel website, the Panel concludes that
Respondent does not have rights or legitimate interests in the <sierrasuite.net>
domain name pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent has been the subject of at least seven
previous UDRP proceedings, all of which required Respondent to transfer the
disputed domain name to the complainant, the Panel finds that Respondent has
demonstrated a pattern of registering domain names containing others’ marks in
order to prevent these parties from reflecting their marks in domain
names. Such conduct constitutes bad
faith registration and use under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov.
22, 2004) (“It is
found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because
Respondent registered the disputed domain names to prevent Complainant from
reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>,
<ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>,
<ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>,
<ayhoooshopping.com>, <ayhooo-uk.com>, and
<searchayhooo.com>] domain names herein constitutes a pattern of
registering trademark-related domain names in bad faith.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc.,
FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy
¶ 4(b)(ii) because the domain name prevented the complainant from reflecting
its mark in a domain name and the respondent had several adverse decisions
against it in previous UDRP proceedings, which established a pattern of
cybersquatting).
Respondent is using a domain name confusingly similar to
Complainant’s SIERRA SUITES mark to operate a commercial web directory
featuring links to other hotel companies providing competing services. The Panel finds such use to indicate bad
faith according to Policy ¶ 4(b)(iii), for it appears that Respondent has
registered and is using the <sierrasuite.net> domain name for the
primary purpose of disrupting Complainant’s business. See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding that the respondent registered the domain
name in question to disrupt the business of the complainant, a competitor of
the respondent); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites).
Respondent is using the <sierrasuite.net> domain name, which is confusingly similar to Complainant’s SIERRA SUITES mark, to redirect Internet users seeking Complainant’s hotel services to a commercial web directory featuring links to Complainant’s direct competitors and to unrelated content. The Panel infers that Respondent earns click-through fees for each consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s domain name and Complainant’s SIERRA SUITES mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
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 <sierrasuite.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 26, 2006
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