G6 Hospitality IP LLC v. MARVIN SULLIVAN
Claim Number: FA1705001732753
Complainant is G6 Hospitality IP LLC (“Complainant”), Texas, USA. Respondent is MARVIN SULLIVAN (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <studio6.com>, registered with Uniregistrar Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 22, 2017.
On May 23, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <studio6.com> domain names is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@studio6.com. Also on May 30, 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 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant uses the STUDIO6 mark in connection with various hotel and motel brands and franchise locations. Complainant registered the STUDIO6 mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,320,420, registered May 21, 1998). See Compl., at Attached Ex. A. Respondent’s <studio6.com> is confusingly similar to Complainant’s mark because it incorporates the STUDIO6 mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com,” which does not meaningfully distinguish the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <studio6.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the STUDIO6 mark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, because the domain name resolves to an inactive site that lacks any content. See Compl., at Attached Ex. C.
Respondent registered and continues to use <studio6.com> in bad faith. Respondent’s use of the disputed domain involves attracting Internet users to its site using Complainant’s notoriety—when in reality no affiliation exists between Complainant and Respondent—for what can only be inferred as commercial gain. Additionally, the domain name’s resolving site is entirely inactive, which also provides evidence of bad faith registration. See Compl., at Attached Ex. C. Further, Respondent should have had constructive notice of Complainant’s rights in the STUDIO6 mark because of its widespread trademark registrations, and must have had actual or constructive notice of these rights because of the mark’s widespread notoriety; therefore, there is no good faith explanation for Respondent’s registration of a domain name virtually identical to Complainant’s registered mark. Finally, Respondent utilized a privacy shield to conceal his or her identity, which provides further evidence of bad faith registration and use of <studio6.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company. Founded in 1962 as Motel 6 in Santa Barbara, California, Complainant owns, operates and franchises more than 1,400 economy lodging locations under the iconic Motel 6 brand and the STUDIO 6 brand.
2. Complainant registered the STUDIO6 mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,320,420, registered May 21, 1998).
3. Respondent registered the <studio6.com> domain name on December 17, 1999.
4. The disputed domain name resolves to an inactive site that lacks any content.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant submits that it registered the STUDIO6 mark—used in its economy lodging business—with the USPTO as early as 1998 (e.g., Reg. No. 2,320,420, registered May 21, 1998), which it contends demonstrates its longstanding rights in the marks. The Panel agrees. See Compl., at Attached Ex. A. Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its trademark rights in or to the STUDIO6 mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’ STUDIO6 mark. The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its STUDIO6 mark because it is composed entirely of the mark, with only one minor addition: the appendage of the gTLD “.com.” Complainant argues that this addition does not sufficiently distinguish the disputed domain name from its STUDIO6 mark. The mere addition of the “.com” gTLD is insufficient to preclude a finding of identical or confusing similarity. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Although the Complainant in this proceeding argues that the addition of the “.com” gTLD to its registered STUDIO6 mark renders a domain name that is confusingly similar, the Panel notes that domain names of this nature can be considered identical for purposes of the policy. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). By either measure, therefore, the Panel finds that the addition made to Complainant’s STUDIO6 mark in <studio6.com> does not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STUDIO6 mark and to
use it in its domain name in its entirety;
(b) Respondent registered the disputed domain name on December 17, 1999;
(c) The disputed domain name resolves to an inactive site that lacks any content;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <studio6.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the STUDIO6 mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the most recent WHOIS information concerning the <studio6.com> domain name identifies “Marvin Sullivan” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. See Compl., at Attached Ex. B. The Panel also notes that historic WHOIS information for the disputed domain name listed a privacy shield—“Uniregistrar Corp.”—as registrant. Id. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <studio6.com> domain name pursuant to Policy ¶ 4(c)(ii);
(f) Additionally, Complainant submits that the domain name’s resolving site is entirely blank, lacking any substantive content. See Compl., at Attached Ex. C. This kind of inactive holding of a domain name—although not a ‘use’ in the colloquial sense of the word—constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). Furthermore, inactive holding does not qualify as a legitimate noncommercial or fair use of any kind. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Complainant has sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant makes an argument that falls within the articulated provisions of Policy ¶ 4(b): that Respondent’s “attempt to create confusion” among Internet users using the disputed domain name has no legitimate purpose and, as such, can only be inferred to be for the purpose of commercial gain as articulated in Policy ¶ 4(b)(iv). See Compl., at 7 (arguing that, because Respondent likely had actual notice of Complainant’s trademark, there is no possible explanation for Respondent’s registration of the disputed domain name other than bad faith as articulated in Policy ¶ 4(b)). The Panel agrees with this contention; however, in analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant asserts that Respondent’s inactive domain holding itself is evidence of Respondent’s bad faith. For lack of use of a disputed domain name to constitute bad faith, no active ‘use’ is required. See Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by the respondent in bad faith). Therefore, the Panel concludes that Complainant has provided sufficient evidence of Respondent’s bad faith use of the disputed domain name.
Secondly, Complainant argues that Respondent registered the disputed domain name despite both actual and constructive notice of Complainant’s rights in the STUDIO6 mark, which provides clear evidence of bad faith. Although Panels have held that constructive notice alone is insufficient for a finding of bad faith, this Panel finds that Complainant’s evidence of actual notice—based on the widespread notoriety of Complainant’s STUDIO6 mark—sufficiently constitutes bad faith registration and use of the <studio6.com> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the STUDIO6 mark and registered the <studio6.com> domain name in bad faith.
Thirdly, the Panel notes that Respondent originally engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use, although it may with other factors. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). The totality of the circumstances which surround a respondent’s engagement of a privacy service may accordingly give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STUDIO6 mark and in view of its conduct since registering the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <studio6.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 23, 2017
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