DECISION

 

G6 Hospitality IP LLC v. Kishan Patel / Atlas Hotel Management Company

Claim Number: FA1709001748738

PARTIES

Complainant is G6 Hospitality IP LLC (“Complainant”), represented by CSC Digital Brand Services, Texas, USA.  Respondent is Kishan Patel / Atlas Hotel Management Company (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The disputed domain names are <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 13, 2017; the Forum received payment on September 13, 2017.

 

On September 14, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names.  Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 September 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@motel6studio6.com, postmaster@studio6motel6.com, postmaster@motel6studio6phoenix.com.  Also on September 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.

 

A timely Response was received and determined to be complete on October 20, 2017.

 

An untimely Additional Submission was received from Complainant on October 27, 2017. Nonetheless, it will be taken into account in the decision, as it refers and contains the Franchise Agreement mentioned but not filed by Repondent in its Response.

 

On October 27, 2017, pursuant to Respondent’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

a.    Complainant, G6 Hospitality IP LLC, has rights in the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY based upon registration with the United States Patent and Trademark Office (“USPTO”) (MOTEL 6—Reg. No. 1,816,233, registered Jan. 11, 1994; STUDIO 6—Reg. No. 2,320,420, registered Feb. 22, 2000; STUDIO 6 EXTENDED STAY—Reg. No. 2,495,770, registered Oct. 9, 2001) and the Canadian Intellectual Property Office (“CIPO”) (MOTEL 6—Reg. No. TMA275651, registered Jan. 14, 1983; STUDIO 6—Reg. No. TMA574604, registered Jan. 29, 2003) (Exhibit A to the Complaint).

 

b.    Under the MOTEL 6 and STUDIO 6 Marks, Complainant offers a wide range of products and services related to lodging services.

 

c.    Both “MOTEL 6” and “STUDIO 6” are distinctive and well-known marks used by Complainant in connection with lodging services since 1962 and 1999 respectively.

 

d.    In 2015, Complainant ranked one of top ten hotel companies in 2015 by Hotel Management Survey (Exhibit G to the Complaint).

 

e.    The disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> are confusingly similar to Complainant’s MOTEL 6 and STUDIO 6 marks.

 

f.     Respondent lacks rights and legitimate interests in the disputed domain names.

 

g.    Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of the MOTEL 6 and STUDIO 6 marks.

 

h.    Prior to receiving Complainant’s cease and desist letter, Respondent had been using the Disputed Domain Name to resolve to a website that prominently featured Complainant’s MOTEL6 and STUDIO 6 EXTENDED STAY marks and logos.

 

i.      After Respondent’s reception of a cease and desist letter from Complainant, the disputed domain names fail to resolve to active websites.

 

j.      Respondent registered and uses the <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> domain names in bad faith.

 

k.    Respondent exhibited a pattern of bad faith registration through the registration of three domain names containing Complainant’s marks.

 

l.      Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website through the creation of a likelihood of confusion with Complainant’s mark.

 

m.   Respondent had actual knowledge of Complainant’s rights in the MOTEL 6 and STUDIO 6 marks prior to registration of the disputed domain names.

 

B.   Respondent

a.    Respondent asserts the disputed domain names are not intentionally confusingly similar as they relate to an affiliate of Complainant.

 

b.    Respondent asserts he uses the disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> in connection with a bona fide offer of goods and services and for a legitimate noncommercial or otherwise fair use as Respondent is in a franchise agreement with Complainant’s parent company.

 

c.    Respondent contends he has not registered or used the disputed domain names in bad faith as they are marketing tools for a legitimate business.

 

C.   Complainant’s Additional Submission

a.    After the cease and desist letter, Respondent concealed his identity making Complainant believe the disputed domain name <motel6studio6.com>, was not longer of his property.

 

b.    Respondent registered <studio6motel6.com> and <motel6studio6phoenix.com> under the same privacy protection service that concealed his identity as owner of those disputed domain names.

 

c.    The Franchise Agreements mentioned by Respondent, prohibit franchisees from owning or registering any domain names containing Complainant’s trademarks.

 

FINDINGS

1.    Complainant owns the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY in the United States of America and Canada, since before the disputed domain names were registered by Respondent.

 

2.    Complainant’s marks are well-known and Respondent was aware of the Complainant’s rights in the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY, yet he incorporated them in the disputed domain names.

 

3.    Respondent was well aware that he was not entitled or legitimized to use Complainant’s marks within any domain name.

 

4.    Thus, Respondent used the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY to create a likelihood of confusion.

 

5.    Respondent has never been commonly known by the disputed domain name or Complainant’s marks.

 

6.    Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use Complainant’s marks.

 

7.    Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.

 

DISCUSSION

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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY in the United States of America and Canada, which have been continuously used since 1962 to identify lodging services.

 

a)     Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY in the United States of America and Canada, by means of Exhibit A to the Complaint, which include among others, the registrations with the United States Patent and Trademark Office (“USPTO”) (MOTEL 6—Reg. No. 1,816,233, registered Jan. 11, 1994; STUDIO 6—Reg. No. 2,320,420, registered Feb. 22, 2000; STUDIO 6 EXTENDED STAY—Reg. No. 2,495,770, registered Oct. 9, 2001) and the Canadian Intellectual Property Office (“CIPO”) (MOTEL 6—Reg. No. TMA275651, registered Jan. 14, 1983; STUDIO 6—Reg. No. TMA574604, registered Jan. 29, 2003).

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]

 

Thus, Complainant established its rights in the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY.[3]

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY for purposes of Paragraph 4(a)(i) of the Policy.

 

b)     Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that the disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> incorporate Complainant’s trademarks, the latter adding only the geographical descriptive term “phoenix”. According to Complainant, the disputed domain names create a likelihood of confusion with the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY.

 

In the first place, before establishing whether or not the disputed domain names are confusingly similar to the Complainant’s marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[5].

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Furthermore, the Panel considers that the reproduction of the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY, by the disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com>, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark[6]. Especially since the disputed domain names reproduce entirely Complainant’s marks without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain names is Complainant.

 

In addition, the Panel agrees with Complainant on the conclusion that including the term “phoenix” at the end of the latter disputed domain name is not sufficient to make the disputed domain name different from the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY.

 

In fact, “phoenix” is the name of a city, thus it is a geographical indication. Taking into account Complainant’s presence in Phoenix, Arizona, the disputed domain name is likely to be understood by consumers as a division of Complainant’s business. Respondent merely adds a descriptive expression “phoenix” to the distinctive marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the same. Hence, the disputed domain names should be deemed as confusingly similar to the registered trademark[7].

 

In consequence, as per this rationale, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s marks and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[8].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[9].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain names  because of the following: i) Respondent has not been authorized by Complainant to use the marks MOTEL 6, STUDIO 6, and STUDIO 6 EXTENDED STAY in any manner; ii) Respondent is not commonly known by the Disputed Domain Names; iii) Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name; iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services; and v) Prior to receiving Complainant’s cease and desist letter, Respondent had been using the Disputed Domain Name to resolve to a website that prominently featured Complainant’s MOTEL6 and STUDIO 6 EXTENDED STAY trademarks and logos.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of proof to Respondent.

 

b)  Respondent’s rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent stated that he has legitimate interest in the disputed domain names, based on a franchise agreement with a parent company of Complainant. Nonetheless, Respondent did not produce the alleged franchise agreement to support his claim.

 

In fact, Respondent did not produce any evidence regarding the specific circumstances of paragraph 4(c) of the Policy, to support his claims of legitimate interests in the disputed domain names.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names. Simply stating to be part of a franchise agreement, is not evidence of Respondent’s rights or legitimate interest in the disputed domain names.

 

Moreover, Complainant filed the Franchise Agreement with the Additional Submission (Exhibit L to the Additional Submission), in which it is clear that Respondent was forbidden to: “use the Proprietary Marks and Design Patents or any abbreviation of variation thereof as part of its corporate or other legal name nor shall franchisee use the Proprietary Marks and Design Patents as part of its domain name”.

 

Thus, based on the aforementioned facts and evidence, this Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names, specially since:

 

(i)         There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. 

 

(ii)        There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use any domain name incorporating the Complainant’s marks.

 

(iii)       There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names.

 

(iv)       There has been no evidence adduced to show that Respondent has any registered mark rights with respect to the disputed domain names.

 

(v)        The disputed domain name is confusingly similar to Complainant’s marks.

 

(vi)       There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

 

(vii)      Respondent has not provided evidence of legitimate use of the disputed domain names or reasons to justify the choice of the words ” MOTEL 6, STUDIO 6” in its business operation.

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Respondent asserts that he acquired the disputed domain names as a marketing tool and that the current inactive state of the disputed domain names respond to cooperation with Complainant.

 

This Panel deems that the mere fact of knowingly incorporating a third-party’s well-known trademark in a domain name constitutes registration in bad faith[10].  See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

 

Indeed, Complainant’s marks are well-known, as shown in Exhibits F and G to the Complaint, in which it is clear that, in over fifty years in the market, Complainant has managed to obtain recognition for the services provided, as well as for the advertisement of those services. Moreover, Complainant was in the Top 10 of the TOP HOTEL COMPANIES in 2014 and 2015, along with Hilton and Marriott.

 

Furthermore, given the agreement of Respondent with a parent company of Complainant, there is no doubt that Respondent knew of Complainant’s marks. Additionally, Respondent knew that it was forbidden for any third party to acquire a domain name including Complainant’s marks.

 

Hence, the registration of the disputed domain names knowingly incorporating a third-party’s well-known trademark and despite the prohibition in the franchise agreement leads the Panel to conclude that it was done primarily for the purpose of disrupting the business of Complainant’s business.

 

As stated by the panel in State Farm Mut. Auto. Ins. Co. v. Sotelo, the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain names is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[11].

 

The passive holding of the disputed domain names in sum with Respondent’s registration of multiple domain names incorporating Complainant’s marks, establishes a pattern of bad faith registration. 

 

In addition, Respondent’s response to the cease and desist letter, was to conceal his ownership of one of the disputed domain names and to request with a private service the remaining disputed domain names.

 

Consequently, the disputed domain names incorporating Complainant’s trademarks, being currently inactive and the possible disruption of Complainant’s business, evidence bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the disputed domain names <motel6studio6.com>, <studio6motel6.com>, and <motel6studio6phoenix.com> be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq., Panelist

Dated:  October 31, 2017