Choice Hotels International, Inc. v. WWW Enterprise, Inc.
Claim Number: FA0609000797520
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 WWW Enterprise, Inc. c/o Steve Kerry c/o North West Enterprises, Inc (“Respondent”), P.O Box 118, 5850 W. 3rd Street, Los Angeles, CA.
The domain names at issue are <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org>, registered with OnlineNIC Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2006.
On September 20, 2006, OnlineNIC Inc. confirmed by e-mail to the National Arbitration Forum that the <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names are registered with OnlineNIC Inc. and that Respondent is the current registrant of the names. 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 September 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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@clarionhotels.org, postmaster@comfortinnhotels.org, postmaster@comfortinns.org and postmaster@hotelchoice.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names are confusingly similar to Complainant’s CLARION HOTELS, CHOICE HOTELS and COMFORT INN marks.
2. Respondent does not have any rights or legitimate interests in the <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names.
3. Respondent registered and used the <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., is an international corporation offering hotel services, hotel reservation services, and hotel related goods and services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the CHOICE HOTELS (Reg. No. 2,717,062 issued May 20, 2003), CLARION HOTELS (Reg. No. 1,703,941 issued July 28, 1992) and COMFORT INN (Reg. No. 1,315,180 issued January 15, 1985) marks. Complainant utilizes these marks in connection with its hotel related business. Complainant also holds registrations of the <clarionhotel.com>, comfortinn.com> and <choicehotels.com> domain names which it uses to offer online customers information about its hotel services, as well as access to Complainant’s online hotel reservation services.
Respondent registered the <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names on July 13, 2004. Respondent is using the disputed domain names to redirect Internet users to a website featuring generic commercial Internet search engine services. Additionally, Respondent’s website includes numerous links to third-party websites, many of which offer hotel goods and services in direct competition with Complainant.
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 CLARION HOTELS,
CHOICE HOTELS and COMFORT INN marks through registration with the USPTO. The Panel finds that Complainant’s
registration of the marks establishes rights 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 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.”).
Respondent’s <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names are confusingly similar to Complainant’s CLARION HOTELS, CHOICE HOTELS and COMFORT INN marks. Respondent’s <clarionhotels.org> domain name incorporates Complainant’s mark in its entirety, merely adding the generic top-level domain “.org,” which does not differentiate the domain name from the mark because generic top-level domains are required for all domain names. Respondent’s <comfortinnhotels.org> domain name includes Complainant’s mark in its entirety adding the decriptive term “hotels,” which is an obvious reference to Complainant’s business and does not distinguish the domain name from Complainant’s mark. Respondent’s <comfortinns.org> domain name adds the letter “s” to Complainant’s mark, which does not overcome the confusing simularity between the disputed domain name and Complainant’s mark. Finally, Respondent’s <hotelchoice.org> domain name inverts the terms “choice” and “hotel” from Complainant’s mark, which does not create a distinct domain name. The Panel finds that the disputed domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See 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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s 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); see also NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <clarionhotels.org>, <comfortinnhotels.org>,
<comfortinns.org> and <hotelchoice.org> 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 <clarionhotels.org>,
<comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org>
domain names to operate a generic Internet search engine and to post links
to third-party commercial websites in direct competition with Complainant. The Panel finds that such use 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 TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see
also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale,
FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use).
There is no evidence that Respondent is commonly known by
the disputed domain names. Respondent’s
WHOIS information identifies Respondent as “WWW Enterprise, Inc.,” 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 is using the <clarionhotels.org>, <comfortinnhotels.org>,
<comfortinns.org> and <hotelchoice.org> domain names
to redirect Internet users to Respondent’s websites which feature links to
third-party websites offering hotel goods and services in competition with
Complainant. Internet users seeking
Complainant’s genuine websites may instead find themselves at Respondent’s
websites, and may follow the links on the website to do business with
Complainant’s competitors instead of with Complainant. The Panel finds that such use disrupts
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s 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 <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names are 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 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 <clarionhotels.org>, <comfortinnhotels.org>, <comfortinns.org> and <hotelchoice.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 2, 2006
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