Choice Hotels International, Inc. v. Bernd Gerlich
Claim Number: FA0609000787271
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <comfort-hotel.com>, registered with Cronon Ag
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 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 1, 2006.
On September
7, 2006, Cronon Ag Berlin, Niederlassung
Regensburg confirmed by e-mail to the National Arbitration Forum that
the <comfort-hotel.com>
domain name is registered with Cronon Ag Berlin,
Niederlassung Regensburg and that Respondent is the current registrant
of the name. Cronon Ag
On September 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 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@comfort-hotel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 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 <comfort-hotel.com> domain name is identical to Complainant’s COMFORT HOTEL mark.
2. Respondent does not have any rights or legitimate interests in the <comfort-hotel.com> domain name.
3. Respondent registered and used the <comfort-hotel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., is a lodging franchisor that operates over 5,200 hotels in countries and territories around the world. In connection with its lodging business, Complainant holds numerous trademark and service mark registrations around the world, including the registration for the COMFORT HOTEL trademark with the German Patent and Trademark Office (“DPMA”) (Reg. No. 2,082,221 issued October 24, 2004) and the COMFORT HOTEL service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,712,481 issued September 1 1992).
Respondent registered the <comfort-hotel.com> domain name on April 6, 2005. The disputed domain name resolves to a website that promotes competing hotel services.
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 HOTEL mark through registration of the mark with the USPTO and the DPMA. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <comfort-hotel.com> domain name is identical to the COMFORT HOTEL mark. The disputed domain name contains Complainant’s mark in its entirety and merely adds a hyphen between the terms. For the purposes of Policy ¶ 4(a)(i), the Panel finds that the addition of a hyphen to an otherwise unmodified rendition of Complainant’s mark does nothing to distinguish the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the disputed domain name to be identical to Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant successfully makes such a showing, the burden shifts to Respondent prove that it does have rights or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). The Panel finds that Complainant successfully made a prima facie showing through its uncontested assertions and evidentiary submissions.
Respondent’s failure to submit a Response in this proceeding creates a presumption that it lacks rights and legitimate interests in the disputed domain name. See 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.”); see also 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). The Panel, however, shall evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the disputed domain name. According
to the WHOIS database, the registrant of the disputed domain name is “Bernd
Gerlich” of
Complainant also contends that Respondent is not using the
disputed domain name to make a bona fide offering of goods or services
or for a legitimate noncommercial use.
The disputed domain name resolves to a website that promotes competing
hotel services. The Panel finds that
Respondent’s use of a domain name that is identical to Complainant’s mark to
promote services that are in direct competition with the Complainant does not
qualify as a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶
4(c)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith. The registration and use of an identical domain name to promote goods or services that directly compete with the holder of the trademark or service mark registration qualifies as disruption and evidences bad faith pursuant to Policy ¶ 4(b)(iii). Accordingly, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii) in its registration and use of the disputed domain name. 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)).
Moreover, the Panel reasonably infers that Respondent has commercially benefited from the registration and use of the identical domain name to resolve to a website that promotes its own competing lodging services. The Panel finds a likelihood of confusion to exist when Respondent uses a domain name that is identical to Complainant’s mark to promote its own competing services. Accordingly, the Panel finds the Respondent to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
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 <comfort-hotel.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 17, 2006
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