Sierra Suites Franchise, L.P. v. International Marketing
Claim Number: FA0608000783218
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 International Marketing (“Respondent”), PO Box 1142, Windermere, FL 34786.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sierrasuites.net> and <sierrasuitesusa.com>, registered with Bulkregister, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2006.
On August 24, 2006, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <sierrasuites.net> and <sierrasuitesusa.com> domain names are registered with Bulkregister, LLC. and that Respondent is the current registrant of the names. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 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@sierrasuites.net and postmaster@sierrasuitesusa.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 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is in the hotel lodging business and has continuously used the SIERRA SUITES mark since 1995 to refer to its hotel lodging services.
Complainant registered the <sierrasuites.com> domain name on August 21, 1998 and uses it to provide information on its hotel services.
Complainant also holds a trademark registration for 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 <sierrasuites.net> and <sierrasuitesusa.com> domain names on May 10, 2004.
Respondent is not using the disputed domain names for any purpose and both currently resolve to “error” pages.
Respondent’s <sierrasuites.net> domain name is identical to Complainant’s SIERRA SUITES mark and the <sierrasuitesusa.com> domain name is confusingly similar to the mark.
Respondent does not have any rights or legitimate interests in the <sierrasuites.net> and <sierrasuitesusa.com> domain names.
Respondent registered and uses the <sierrasuites.net> and <sierrasuitesusa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the <sierrasuites.net> domain name registered by Respondent is identical to a trademark in which Complainant has rights, and the <sierrasuitesusa.com> domain name is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of these domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registration for the SIERRA SUITES mark demonstrates its rights in the mark for purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that complainants established rights in marks because the marks were registered with a trademark authority).
With respect to the <sierrasuitesusa.com>
domain name, Respondent has simply added the common descriptive “usa” to
Complainant’s SIERRA SUITES mark. This
modification of Complainant’s mark is insufficient to distinguish the disputed
domain name from the mark. Therefore,
the <sierrasuitesusa.com> domain name is confusingly similar to
the SIERRA SUITES mark pursuant to Policy ¶ 4(a)(i). See MFI UK Ltd. v.
Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com>
domain name confusingly similar to a complainant’s MFI mark because the
addition of the letters “UK” were merely a common designation for the United
Kingdom); see also VeriSign, Inc.
v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between a complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where a
respondent added the word “India” to the complainant’s mark).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make out a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it has 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 in this proceeding
raises a presumption that Respondent has no rights or legitimate interests in
the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that a respondents’ failure to respond can be construed
as an admission that it have no legitimate interest in a domain name); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that a respondent has no rights or legitimate interests in a domain
name because that respondent never submitted a response or provided the panel
with evidence to suggest otherwise). The Panel will nonetheless examine the record to determine
if there is any basis for concluding that Respondent has rights or legitimate
interests under Policy ¶ 4(c).
We first note that Respondent has registered the domain
names here in question under the name “International Marketing,” and that there
is no other evidence in the record suggesting that Respondent is commonly known
by the disputed domain names.
Accordingly, Respondent has not established rights or legitimate
interests in the <sierrasuites.net> and <sierrasuitesusa.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that a respondent does not have rights in a domain name when
that respondent is not known by the mark); see also Coppertown
Drive-Thru Systems, LLC v. Snowden, FA
715089 (Nat. Arb. Forum Jul. 17, 2006).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges, and Respondent does not deny, that Respondent registered the <sierrasuites.net> and <sierrasuitesusa.com> domain names on May 10, 2004, that Respondent has not made any active use of the disputed domain names at any time in the intervening two years, and that the domains each currently resolve to a page with an “error” message. On these uncontested facts, we have no difficulty in concluding that Respondent has engaged in bad faith registration and use of the challenged domains within the meaning of Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that a respondent’s failure to develop a website in a two year period raises an inference of bad faith).
We are mindful in this connection that Policy ¶ 4(a)(iii) requires that, for a complainant to prevail in this proceeding, it must demonstrate that a respondent’s domain “is being used in bad faith”. However, that Respondent has never actively used the subject domain name does not defeat this element of Complainant’s cause. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000): “[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), finding that a respondent made no use of a domain name or website that connects with a domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000).
To this may be added the fact that it appears from the
record before us that Respondent registered the contested domain names with
either actual or constructive knowledge of Complainant’s rights in the SIERRA SUITES
mark by virtue of Complainant’s prior registration of that mark with the
pertinent national authorities.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge, without more, evidences bad faith registration within
the meaning of Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), and Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <sierrasuites.net> and <sierrasuitesusa.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 3, 2006
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