Inndeavors, Inc. dba The Salem Inn v. Sean Macdonald / Po Box 15208
Claim Number: FA1804001781351
Complainant is Inndeavors, Inc. dba The Salem Inn (“Complainant”), represented by Andrea J. Mealey of FisherBroyles LLP, Massachusetts, USA. Respondent is Sean Macdonald / Po Box 15208 (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saleminn.com>, registered with GoDaddy.com, LLC.
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 April 11, 2018; the Forum received payment on April 11, 2018.
On April 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <saleminn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2018 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@saleminn.com. Also on April 12, 2018, 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 May 14, 2018, 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, Inndeavors, Inc., d/b/a The Salem Inn, operates “The Salem Inn” hotel, which has over 40 guest rooms across three buildings. Complainant has rights in the THE SALEM INN mark through its trademark application with the United States Patent and Trademark Office (“USPTO”) (App. No. 87,613,157, filed Sep. 18, 2017). See Compl. Annex E. In addition, Complainant also has common law rights in the THE SALEM INN mark. Respondent’s disputed domain name is identical and/or confusingly similar to Complainant’s mark because Respondent deletes the term “the” and adds a “.com” generic top level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed, authorized, or permitted to use Complainant’s THE SALEM INN mark. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to direct consumers to competing inn and lodging websites. See Compl. Annexes K, L, M, N, and O.
iii) Respondent registered and is using the disputed domain name as Respondent attempts to attract internet users to a website which advertises and promotes competing third party websites offering inn and lodging services. Additionally, Respondent’s renewals of the disputed domain name are equivalent to registering the domain name in bad faith. Even if Respondent’s renewals of the registration of the disputed domain name are not considered bad faith, Respondent’s registration of the disputed domain name for speculative purposes to someday exploit the trademark rights of another constitutes bad faith. Lastly, the Respondent had actual knowledge of Complainant’s rights in its THE SALEM INN prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The disputed domain name was registered on December 30, 1999.
2. Complainant’s pending USPTO application fails to establish its rights in the THE SALEM INN mark.
3. Complainant has demonstrated common law rights in its mark ‘THE SALEM INN.’
4. The disputed domain name resolves to a website which advertises and promotes competing third party websites offering inn and lodging 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."
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.”).
In addition, Complainant claims common law rights in the THE SALEM INN mark. Common law rights may be demonstrated through evidence of secondary meaning under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant argues and provides the following evidence in furtherance of establishing secondary meaning in its mark:
· Complainant has continuously and exclusively used its THE SALEM INN mark since 1983.
· Complainant has spent substantial amounts of time and money in advertising and promoting its lodging services offered under its mark.
· Complainant’s, The Salem Inn has a national reputation because of its historic significance, with the West House and Peabody House being on the National Register of Historic Places. See Compl. Annex D.
· Complainant, since 1998, and its principals have operated a website at the address <saleminnma.com>. See Compl. Annex G.
Accordingly, the Panel finds Complainant has demonstrated common law rights in its mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <saleminn.com> domain name is confusingly similar and/or identical to Complainant’s mark as Respondent deletes the term “the” from THE SALEM INN mark and merely adds the “.com” gTLD. Such changes to a disputed domain name do not typically distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel notes that the disputed domain name does not entirely incorporate Complainant’s THE SALEM INN mark; however, the Panel finds Respondent’s domain name is identical and/or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <saleminn.com> domain name. Complainant claims that Respondent is not authorized, licensed, or otherwise permitted to use Complainant’s THE SALEM INN mark. A lack of license from a complainant for the use of its mark can evince a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes the WHOIS information of record lists registrant as “Sean Macdonald.” See Compl. Annex I. Therefore, the Panel finds Respondent is not commonly known by the domain name at issue per Policy ¶ 4(c)(ii).
Additionally, Complainant contends Respondent does not use the <saleminn.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Complainant avers, Respondent uses the disputed domain name to direct consumers to competing inn and lodging websites. See Compl. Annexes K, L, M, N, and O. Redirecting users to third-party, competing websites through hyperlinks is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) and (iii). See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use); see also 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).”). Consequently, the Panel finds Respondent’s use of the domain name at issue is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 asserts Respondent registered and is using the disputed domain name in bad faith as Respondent attracts users to the disputed domain name’s resolving website, which advertises and promotes competing hyperlinks. Featuring competing hyperlinks at a disputed domain name may indicate bad faith under Policy ¶ 4(b)(iv). See 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).”); see also 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). Complainant provides screenshots of the disputed domain name’s resolving website which features a picture of a hotel in connection with hyperlinks related to Complainant’s hotel business. See Compl. Annex N. Accordingly, the Panel finds Respondent registered and used the disputed domain name in bad faith under the Policy.
Next, Complainant contends Respondent had actual knowledge of Complainant’s rights in its THE SALEM INN mark prior to registering the <saleminn.com> domain name. The Panel notes that while constructive knowledge is insufficient to support a finding of bad faith, actual knowledge is sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues Respondent’s disputed domain name resolves to a website, which advertises and promotes competing inn and lodging services, and Respondent’s disputed domain name is effectively identical to Complainant’s THE SALEM INN mark. Consequently, the Panel infers Respondent had actual knowledge of Complainant’s rights to the THE SALEM INN mark prior to registering the disputed domain name per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saleminn.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 17, 2018
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