Choice Hotels International, Inc. v. yuejuan mao
Claim Number: FA2101001927310
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is yuejuan mao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choiceprivilegesplanner.com>, registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2021; the Forum received payment on January 6, 2021.
On January 7, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <choiceprivilegesplanner.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2021 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@choiceprivilegesplanner.com. Also on January 12, 2021, 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 February 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <choiceprivilegesplanner.com> domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark.
2. Respondent does not have any rights or legitimate interests in the <choiceprivilegesplanner.com> domain name.
3. Respondent registered and uses the <choiceprivilegesplanner.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Choice Hotels International Inc., is in the business of hotel and motel services, including guest reward programs. Complainant holds a registration for the CHOICE PRIVILEGES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,610,622, registered Aug. 20, 2002).
Respondent registered the <choiceprivilegesplanner.com> domain name on November 10, 2020, and uses it to redirects users to an adult content website.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the CHOICE PRIVILEGES mark based on registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <choiceprivilegesplanner.com> domain name uses the CHOICE PRIVILEGES mark and simply adds the term “planner” and the “.com” gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <choiceprivilegesplanner.com> domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 that Respondent does not have rights or legitimate interests in the <choiceprivilegesplanner.com> domain name because Respondent is not commonly known by the name and is not licensed or authorized by Complainant to use the CHOICE PRIVILEGES mark. The WHOIS information of record identifies the registrant of the disputed domain name as “Yuejuan Mao.” Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also argues that Respondent fails to use the <choiceprivilegesplanner.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead redirects users to a page with adult-oriented content or to an incomplete website. Use of a disputed domain name to host adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Similarly, resolving to an inactive webpage is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant claims that the disputed domain name has, at times, resolved to a website containing adult oriented material and pornography, and other times has resolved to an unfinished website with stock images and dummy text. Complainant provides screenshots showing
Respondent’s use of the disputed domain name. The Panel finds that this use is a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used the <choiceprivilegesplanner.com> domain name in bad faith because Respondent uses the disputed domain name to display adult oriented content and an unfinished website. Hosting adult oriented material or an inactive webpage at a disputed domain can be evidence of bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); see also Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) ("Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website). Accordingly, the Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the CHOICE PRIVILEGES mark since the mark is well known and widely advertised and Respondent included it in its entirety in the disputed domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel finds that complainant has satisfied 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 <choiceprivilegesplanner.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 8, 2021
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