Choice Hotels International, Inc. v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1705001730863
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comfortsuitesorlando.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2017; the Forum received payment on May 9, 2017.
After numerous requests, the Registrar, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com, has not confirmed to the Forum that the <comfortsuitesorlando.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@comfortsuitesorlando.com. Also on May 25, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
i) Complainant, Choice Hotels International, Inc., is a world leading lodging franchise provider with headquarters located in Rockville, Maryland, USA. In connection with this business, Complainant uses the COMFORT SUITES mark to promote its goods and services. Complainant has rights in the COMFORT SUITES mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,712,482, registered Sept. 1, 1992). Respondent’s <comfortsuitesorlando.com> is confusingly similar as it wholly contains the COMFORT SUITES mark, minus the space, and appends the geographic term “orlando” as well as the generic top-level-domain (“gTLD”) “.com.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to register a domain name reflecting the COMFORT SUITES mark. Further, Respondent failed to use <comfortsuitesorlando.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, <comfortsuitesorlando.com> is offered for sale and resolves to a page that redirects Internet users to a third-party competitor’s website.
iii) Respondent registered and uses <comfortsuitesorlando.com> in bad faith. Respondent offers to sell <comfortsuitesorlando.com> in excess of the registration expenses. Respondent trades on the goodwill associated with Complainant’s mark and offers hotel-reservation services in competition with Complainant. Respondent had actual or constructive notice of Complainant’s rights in the COMFORT SUITES mark prior to registration of <comfortsuitesorlando.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <comfortsuitesorlando.com> was registered May 30, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
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.
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(f), 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 (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.”).
Complainant asserts rights in the COMFORT SUITES mark based upon registration with the USPTO (Reg. No. 1,712,482, registered Sept. 1, 1992). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the COMFORT SUITES mark.
Next, Complainant argues Respondent’s domain name is confusingly similar as it wholly contains the COMFORT SUITES mark and appends the geographic term “orlando” as well as the gTLD “.com.” The addition of geographic terms to a mark does not remove the resulting domain name from the realm of confusing similarity; likewise, the removal of spacing from a mark and the addition of a gTLD do not adequately differentiate between a mark and a domain name per Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel therefore finds Respondent’s domain name to be confusingly similar to Complainant’s COMFORT SUITES mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues Respondent lacks rights and legitimate interests in <comfortsuitesorlando.com> as Respondent is not commonly known by the disputed domain name and Complainant did not authorize Respondent to register a domain name reflecting its mark. Absent information in the record to the contrary, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name; similarly, use of a WHOIS privacy service with no evidence to the contrary evinces a finding of not commonly known by the disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information of record names “Domain Admin / Whois protection, this company does not own this domain name s.r.o” as the registrant. The Panel therefore finds Respondent is not commonly known by the disputed domain name.
Next, Complainant argues Respondent failed to use <comfortsuitesorlando.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Use of a disputed domain name to promote links in competition with a complainant’s goods or services demonstrates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Respondent uses <comfortsuitesorlando.com> to divert Internet users seeking Complainant to a third-party competitors website. The Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends Respondent offers <comfortsuitesorlando.com> for sale in excess of the registration costs. Offer of a disputed domain name for sale in excess of out-of-pocket costs is further evidence of a respondent’s lack of rights and legitimate interests in a disputed domain name. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Here, Respondent offers <comfortsuitesorlando.com> for sale for $4,750.00. The Panel agrees with Complainant and finds additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses <comfortsuitesorlando.com> in bad faith. Complainant contends Respondent offers to sell <comfortsuitesorlando.com> in excess of the registration expenses. Offer of a domain name for sale to the public may indicate bad faith registration and use if Respondent primarily intended to receive that offer when registering the domain name. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel recalls that Respondent seeks $4,750 for the disputed domain name. The Panel finds that Respondent intended to receive this offer when registering a domain name reflecting Complainant’s mark and finds evidence of Respondent’s bad faith registration and use per Policy ¶ 4(b)(i).
Next, Complainant argues Respondent trades on the goodwill associated with Complainant’s mark and offers hotel-reservation services in competition with Complainant. Use of a confusingly similar domain name to confuse Internet users as to the affiliation of a disputed domain name for a respondent’s commercial gain evinces a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel notes that <comfortsuitesorlando.com> offers competing lodging services. The Panel therefore finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Last, Complainant argues Respondent had actual or constructive notice of Complainant’s rights in the COMFORT SUITES mark prior to registration of <comfortsuitesorlando.com>. Actual notice is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii) and is derived from the use made of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Here, Complainant contends Respondent wholly appropriates Complainant’s mark to register a domain name that resolves to a website offering lodging services in competition with Complainant. The Panel agrees and finds further additional evidence of Respondent’s bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comfortsuitesorlando.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 26, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page