DECISION

 

HotelEngine, Inc. v. MELISSA FARRUGGIA / My Store

Claim Number: FA2407002105758

 

PARTIES

Complainant is HotelEngine, Inc. ("Complainant"), represented by Evan P. Everist of Dorsey & Whitney LLP, Minnesota, USA. Respondent is MELISSA FARRUGGIA / My Store ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hotelesengines.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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 10, 2024; Forum received payment on July 10, 2024.

 

On July 12, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <hotelesengines.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 July 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2024 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@hotelesengines.com. Also on July 16, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the HOTEL ENGINE and HOTELENGINE.COM trademarks established by its ownership of the portfolio of registrations describes below, and by its use of the marks on its Internet platform to connect businesses and corporate travelers with discounted rates at over 700,000 lodging options worldwide.

 

The services provided by Complainant allow businesses to book, manage, and edit their corporate lodging reservations through Complainant's platform and have been provided to over 100,000 companies, and 1,000,000 users.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to the HOTEL ENGINE and HOTELENGINE.COM marks in which the Complainant has rights.

 

It is argued that disputed domain name contains the whole of the HOTEL ENGINE and HOTELENGINE.COM marks and differs only by the addition of the suffix "es" at the end of the HOTEL element, and the letter "s" at the end of the ENGINE element of the marks.

 

It is submitted that panels previously established under the Policy have found that the use of plurals does not negate a finding of confusing similarity. See Target Brands, Inc. v. GuoLi Guo, FA 2101434 (Forum July 5, 2024) (finding <anewdays.com> domain confusingly similar to A NEW DAY trademark).

 

Complainant adds that it is well established that the addition of a generic Top-Level Domain ("gTLD") extension, such as <.com> in the present Complaint, is not relevant when determining whether a domain name at issue is confusingly similar to a complainant's mark.

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that

·       due to Complainant's extensive use and promotion of the HOTEL ENGINE and HOTELENGINE.COM marks in connection with its services, the HOTEL ENGINE and HOTELENGINE.COM marks have become associated with Complainant as its trademarks;

·       the Whois records for the disputed domain name do not show that Respondent is using the wording HOTEL ENGINE as a part of its business or name; and where the registrant information does not show that a respondent is known by marks in a domain name at issue, panels have concluded that the respondent does not have legitimate rights or interests in the domain name, as in HotelEngine, Inc. v. Doan Nguyen / newtrendshop, FA 2093241 (Forum May 22, 2024) (no rights or legitimate interest where WHOIS information did not indicate respondent was commonly known by domain names);

·       the marks HOTEL ENGINE and HOTELENGINE.COM are distinctive and not merely descriptive or geographically significant words in which Respondent might have a claim to rights of use, see Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case D2000-1244 ("Merely registering [a] domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.").

·       Respondent is not a licensee or subsidiary of Complainant;

·       Respondent has never been authorized to use Complainant's HOTEL ENGINE and HOTELENGINE.COM marks, there is no conceivable right or legitimate interest Respondent could have in the disputed domain name;

·       previous panels established under the Policy have found no rights or legitimate interests where as in the present case (a) the respondent is not a licensee of the complainant; (b) the complainant's prior rights in the mark precede the respondent's registration of the domain name at issue; and (c) the respondent is not commonly known by the domain name in question, citing HotelEngine, Inc. v. Doan Nguyen / newtrendshop, FA 2093241 (Forum May 22, 2024) (no rights or legitimate interest where respondent was not commonly known by disputed domain names and was not a licensee of complainant);

·       the disputed domain name is currently inactive and given its similarity to Complainant's legitimate website at <www.hotelengine.com>, it is highly likely Respondent is using or intends to use the disputed domain name to engage in email phishing campaigns. 

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent clearly had actual or constructive knowledge of the mark at the time of registration, and previous panels established under the Policy have held that tegistration with actual or constructive knowledge of Complainant's mark is evidence of bad faith pursuant to Paragraph 4(b) of the Policy. See The Prudential Ins. Co. v. Bigxa Co., Ltd., FA 95487 (Forum Oct. 6, 2000) (finding bad faith registration and use where respondent knew or should have known of complainant's marks).

 

Complainant contends that its HOTEL ENGINE and HOTELENGINE.COM service mark registrations and its domain name <hotelengine.com> would have been revealed by even the most perfunctory trademark or domain name availability search.

 

Furthermore, because the disputed domain name is nearly identical to Complainant's legitimate, <hotelengine.com> domain name, there is little doubt that Respondent had actual knowledge of Complainant's rights in the HOTEL ENGINE and HOTELENGINE.COM marks. See Bank of America Corporation v. Yan Xiao Lin / Meng Dan Qian, FA 1969956 (Forum Dec. 13, 2021) (finding registration of numerous domain names containing complainant's marks evidence of bad faith).

 

Complainant adds that Respondent registered the disputed domain name, which features Complainant's trademarks HOTEL ENGINE and HOTELENGINE.COM marks, nearly 10 years after Complainant began offering its services under the marks. This suggests that Respondent knew of Complainant's trademarks and registered the disputed domain name in bad faith intending to unfairly capitalize on Complainant's trademark rights.

 

Addressing the manner in which Respondent is using the disputed domain name, Complainant submits that because the disputed domain name does not resolve to an active website, the passive holding by Respondent constitutes use in bad faith as described in Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

 

Complainant adds that given how close in similarity the disputed domain name is to Complainant's legitimate <hotelengine.com> domain name, it is implausible the disputed domain name could be used in any manner, other than an attempt to improperly create an association with Complainant in violation of its rights. See Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) ("Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy.").

 

Furthermore Complainant contends that the disputed domain name causes initial interest confusion and its use would lead Internet users to believe it is connected with Complainant is initial interest confusion, which can be evidence of bad faith under Policy as found in Morgan Stanley v. Rodrigues, FA 1849227 (Forum July 23, 2019) (concluding initial interest confusion between respondent's MORGSTANLEY.COM domain name and complainant's MORGAN STANLEY mark and, thus, bad faith).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns an Internet accommodation booking platform which features the HOTEL ENGINE and HOTELENGINE.COM marks, for which it owns a portfolio of service mark registrations including the following:

·       United States registered service mark HOTEL ENGINE 4,545,476, registered on the Principal Register on June 3, 2014 for services in international classes 42 and 43;

·       United States registered service mark HOTELENGINE.COM 4,563,997, registered on the Principal Register on July 8, 2014 for services in international class 41;

·       European Union HOTEL ENGINE 018934480 April 26, 2024 for services in classes 42 and 43.

 

The disputed domain name was registered on April 27, 2024 and does not resolve to any active website.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested convincing evidence of its rights in the HOTEL ENGINE and HOTELENGINE.COM marks established by its ownership of the portfolio of registered service marks described above and its use of the mark on its Internet accommodation booking platform.

 

Both of Complainant's HOTEL ENGINE and HOTELENGINE.COM marks are clearly recognizable within the disputed domain name <hotelesengines.com> which differs only by the addition of the suffix "es" at the end of the HOTEL element and the addition of the letter "s" at the end of the ENGINE element in both marks.

 

It is well established that the gTLD extension within a domain name at issue may be ignored for the purposes of comparing it with the trademarks relied upon by a complainant because it would be considered by Internet users to be a necessary technical element for a domain name. In the present case that principle applies to the comparison with the HOTEL ENGINE mark.

 

Infrequently as in the present case, the mark relied upon by Complainant includes characters identical to the gTLD extension <.com>, and so compounds the similarity of the HOTELENGINE.COM mark and the disputed domain name.

 

This Panel finds therefore that the disputed domain name is identical to the HOTEL ENGINE and HOTELENGINE.COM marks in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant's United States service mark registration of the HOTEL ENGINE mark dates from June 3, 2014 and the HOTELENGINE.COM mark was registered on July 8, 2014. Additionally Complainant's <hotelengine.com> domain name was registered on July 8 in the same year. The disputed domain name was not registered until April 27, 2024.

 

Complainant avers that it has built a goodwill in an Internet platform that is used by 100,000 companies, and has 1,000,000 users. While Complainant has not provided any evidence of the extent of its users and reputation, it has provided a screen capture of its website at <www.hotelengine.com> in an annex to the Complaint and because its registered trademark rights date back 10 years, the averment is credible.

 

Both HOTEL ENGINE and HOTELENGINE.COM are distinctive marks, and the latter infers use of the mark on the Internet.

 

Respondent is not putting the disputed domain name to any active use, has availed of a privacy service to conceal her identity on the published WhoIs, and has not responded to this Complaint. Furthermore, there is no evidence on record that Respondent may have any rights or legitimate interests in the disputed domain name.

 

On the balance of probabilities therefore, the registrant of the disputed domain name was aware of Complainant and its Internet platform when the disputed domain name was chosen and registered; and the disputed domain name was in fact chosen and registered with Complainant's mark in mind intending to take predatory advantage of the goodwill and reputation that Complainant has established in the mark.

 

There is no other plausible reason for the registration and passive holding of the disputed domain name.

 

In these circumstances this Panel finds that on the balance of probabilities the passive holding of the disputed domain name by Respondent constitutes use in bad faith for the purposes of the Policy.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

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 <hotelesengines.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

______________________________________________

 

James Bridgeman SC, Panelist

Dated: August 7, 2024