DECISION

 

Club Quarters Franchise Network, LLC v. Mathew Schuster

Claim Number: FA2407002109101

 

PARTIES

Complainant is Club Quarters Franchise Network, LLC ("Complainant"), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is Mathew Schuster ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clubquarterss.com>, registered with GoDaddy.com, LLC.

 

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 31, 2024; Forum received payment on July 31, 2024.

 

On July 31, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <clubquarterss.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 August 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@clubquarterss.com. Also on August 6, 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 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       The Complainant is a United States company engaged in the provision of hotel services and related goods and services.

2.       The Complainant provides its goods and services under the trademark for CLUB QUARTERS. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the CLUB QUARTERS trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4201591, registered on September 4, 2012 and other national and international trademarks for CLUB QUARTERS and derivatives (collectively "the CLUB QUARTERS trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

3.       The CLUB QUARTERS trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.       As well as its trademark, Complainant registered the domain name <clubquartershotels.com> on March 24, 2015 and other domain names that it uses in its business and in particular for its website at www.clubquartershotels.com where it markets its services under the CLUB QUARTERS trademark and brand.

5.       The Respondent registered the <clubquarterss.com> domain name on April 24, 2024 ("the disputed domain name").

6.       The disputed domain name embodies, without the consent of the Complainant, the CLUB QUARTERS trademark with the addition of the letter "s" and the generic Top Level Domain ".com".

7.       The addition of the letter "s", known as typosquatting, and the generic Top Level Domain ".com" cannot negate a finding that a domain name is confusingly similar to a trademark and the disputed domain name is therefore confusingly similar to the CLUB QUARTERS trademark.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)        the Complainant's registration and use of the CLUB QUARTERS trademark pre-dates the Respondent's registration and use of the disputed domain name, thereby establishing the Complainant's extensive rights in its brand;

(b)        the Respondent has no trademark or intellectual property rights in the domain name, the CLUB QUARTERS trademark or any similar expression;

(c)        the Respondent has caused the disputed domain name to resolve to a website which is a pay-per-click advertising site that offers services similar to the services of the Complainant, hotel booking services in competition with the Complainant and in one case a link to a San Francisco hotel property of the Complainant;

(d)        the Respondent's intention in engaging in the aforesaid conduct was to increase internet traffic to its website for its commercial benefit;

(e)        the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); and

(f)       the Respondent knew or should have known that its aforesaid conduct would take unfair advantage of the Complainant's CLUB QUARTERS trademark.

9.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)                      the registration and use of the disputed domain name has the propensity to mislead internet users and divert them to the Respondent's website;

(b)                      accordingly, and by reason of the matters aforesaid, the Respondent has disrupted the Complainant's business;

(c)                      the Respondent has sought to obtain commercial advantage by using the Complainant's CLUB QUARTERS trademark in its domain name;

(d)                       the Respondent has intentionally attempted to attract, for commercial gain, internet users by creating a likelihood of confusion with the CLUB QUARTERS trademark, within the meaning of  Policy ¶ 4(b)(iv); 

(e)                      the Respondent has sought to shield itself from scrutiny by using a privacy service to register the disputed domain name;

(f)                      the Respondent has monetized the disputed domain name by intentionally invoking the Complainant and its trademark and doing so for commercial gain, knowing that this would do damage to the Complainant and its business;

(g)                      the registration of the Complainant's CLUB QUARTERS trademark, which the Complainant has used since 1991, predates the registration of the disputed domain name on April 24, 2024;

(h)                      all of the acts, facts, matters and circumstances revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States company engaged in the provision of hotel services and related goods and services.

2.       The evidence has established that the Complainant provides its goods and services under the trademark for CLUB QUARTERS and that it has acquired registered trademark rights in the CLUB QUARTERS trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office, registration Number 4201591, registered on September 4, 2012 and other national and international trademarks for CLUB QUARTERS and derivatives (collectively "the CLUB QUARTERS trademark"). 

3.       The Respondent registered the <clubquarterss.com> domain name on April 24, 2024 ("the disputed domain name").

4.       The disputed domain name embodies, without the consent of the Complainant, the CLUB QUARTERS trademark with the addition of the letter "s" and the generic Top Level Domain ".com". Neither of those additions can negate a finding of confusing similarity between a domain name and a trademark.

5.       The Respondent has caused the disputed domain name to resolve to a website which is a pay-per-click advertising site that offers services similar to and in competition with those of the Complainant.

6.       By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's CLUB QUARTERS trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

7.       Accordingly, the disputed domain name should be transferred to the Complainant.

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: 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

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has established that the Complainant has registered trademark rights in the CLUB QUARTERS trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,201,591, registered on September 4, 2012 and other national and international trademarks for CLUB QUARTERS and derivatives (collectively "the CLUB QUARTERS trademark"). The evidence is also that the Complainant has used the CLUB QUARTERS trademark since 1991 and continuously since its registration to offer its services and thus that the Complainant's trademark rights preceded the registration of the disputed domain name on April 24, 2024.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's CLUB QUARTERS trademark. The Panel finds that the disputed domain name is confusingly similar to the CLUB QUARTERS trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the CLUB QUARTERS trademark with the addition of the letter "s" and the generic Top Level Domain ".com". It is therefore similar to the trademark. The addition of a single letter or any other minor spelling alteration to a trademark for its inclusion in a domain name, known also as typosquatting, has long been regarded in this field as being of no effect. The reason for this is that, despite the spelling alteration, internet users would still conclude that the domain name was invoking the trademark because it is the dominant portion of the domain name. Also, Top Level Domains are ignored in the interpretation of a domain name and cannot negate a finding of confusing similarity between a domain name and a trademark, as all domain names require such an extension. Internet users would therefore naturally read the domain name as invoking the Complainant and its CLUB QUARTERS trademark.

The domain name is thus similar to the trademark, and confusingly so, as it also is to the Complainant's own domain names, such as <clubquarters.com> and <clubquartershotels.com>, the confusion being that it raises a question mark as to whether the domain name is a genuine domain name of the Complainant as trademark owner, or not.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's CLUB QUARTERS trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations, taken in the order in which they are raised by the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name because:

(a)       the Complainant's registration and use of the CLUB QUARTERS trademark pre-dates the Respondent's registration and use of the disputed domain name, thereby establishing extensive rights for the Complainant in its brand; and the Respondent has no trademark or intellectual property rights in the domain name, the CLUB QUARTERS trademark or any similar expression; these two grounds of course go together, as the Complainant can establish strong trademark rights in the CLUB QUARTERS trademark, has been using it as a trademark since 1991 and the Respondent has no such rights; there is no evidence or any other indication that it had any intellectual property rights in the expression , or for that matter any other rights founded in law or equity to its registration or use; thus, as the registration of the domain name came well after the acquisition and use of the Complainant's trademark rights, the Respondent can have no rights or legitimate interests in the domain name;

(b)       the evidence shows that the Respondent has caused the disputed domain name to resolve to a website which is a pay-per-click advertising site that offers hotel services such as bookings services which are similar to the services of the Complainant and its own hotel booking services in competition with the Complainant and in one case a link to a San Francisco hotel property of the Complainant; this is of course the major feature showing that the Respondent has no rights or legitimate interest in the domain name; after it acquired the domain name, the Respondent put it to some use; it set it up to resolve to a website which, not to make too fine a point of it, is a site for advertisements known as a pay-per-click site where small but accumulating fees are paid to advertisers or some other party responsible for the site; whether the Respondent has contrived to make this arrangement itself or whether it has simply allowed its registrar to arrange for the domain name to resolve to the site, makes little difference, as the domain name owner, in the present case the Respondent, is responsible for it because it owns the domain name; the big question in either case is how to encourage or lure internet users to the site; in the present case the Respondent has had resort to the subterfuge of creating a confusingly similar domain name that has the Complainant's trademark as its central feature, designed to give the false impression that it is the Complainant or is using the trademark with the Complainant's permission, neither of which is true; thus, the Respondent, building on its deception, has created a situation where internet users who come across the domain name and the pay-per-click site by accident or as part of a search for the Complainant, will assume it is an official CLUB QUARTER domain name and website and may well use the businesses advertising on the site rather than the Complainant; those businesses differ depending on from where the website is viewed, but the Complainant has provided details of them showing that they are competitors of the Complainant as they offer services similar to the Complainant which is inimical to the Complainant's own business interests; the result is that the Complainant has its trademark being used to promote, not itself but its commercial rivals; the exception is that one advertisement leads to a hotel of the Complainant in San Fransisco, but this makes no difference, simply because the Complainant may not want the Respondent elbowing in to advertise the property, or the way that it does it or, more likely, that it does not want its trademark being used by a party trying to build up its reputation at the Complainant's expense; in total, the use of the domain name is based on using the Complainant's trademark without permission, is deceptive, misleading and damaging to the Complainant's commercial interests; accordingly this conduct could not even remotely give the Respondent a right or legitimate interest in the domain name;

(c)       the only conclusion that can be reached from the evidence is that it shows that the Respondent's intention in engaging in the aforesaid conduct was to increase internet traffic to its website for its own commercial benefit;

(d)        the evidence shows that the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate in using a trademark without permission, using it in a misleading manner and using it to promote the interests of the trademark owner's competitors; nor is it non-commercial as it was obviously being done to make money, which is commercial and nor is it fair, either to the Complainant or internet users as a whole;

(e)       the Respondent knew or should have known that its aforesaid conduct would take unfair advantage of the Complainant's CLUB QUARTERS trademark; this is self -evident, as the Respondent could not have but known that its conduct involved an infringement of the Complainant's trademark and that it had the propensity to harm the Complainant and its business; and

(f)       nor are there any other grounds on which it could conceivably be said that the Respondent has a right or legitimate interest in the domain name. 

The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against the Respondent.

 

As the 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 does not have a right or legitimate interest in the disputed domain name.

 

The Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular by the deception of the public in which the Respondent has been engaged. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the registration and use of the disputed domain name has the propensity to mislead internet users and divert them to the Respondent's website; this is clear from the evidence; the essence of the Respondent's scheme was to mislead internet users to believe that it, the Respondent, was the Complainant or was authorized by it, and to divert them from the Complainant's official website to the Respondent's pay-per-click site and to encourage them to believe that the advertisers on the site had the imprimatur of the Complainant, none of which was true;

(b)                      one of the many potential consequences of the Respondent's conduct was that it must have disrupted the business of the Complainant within the meaning of Policy ¶ 4(b)(iii); the Respondent's scheme depended on generating more business for itself and less business for the Complainant, which is by definition disruptive;

(c)                      the Respondent has sought to obtain commercial advantage by using the Complainant's CLUB QUARTERS trademark in its domain name; there is no other conclusion that can be reached from the evidence;

(d)                       the evidence shows that the Respondent has intentionally attempted to attract, for commercial gain, internet users by creating a likelihood of confusion with the CLUB QUARTERS trademark, within the meaning of  Policy ¶ 4(b)(iv); the Respondent created this confusion by encouraging internet users to think that the domain name and its use were legitimate and approved by the Complainant when they were not;

(e)                      the Respondent has sought to shield itself from scrutiny by using a privacy service to register the disputed domain name; although this may not be conclusive in all cases, as the Complainant submits, there is in the present case no doubt that the Respondent sought refuge in secrecy because if it did not have that secrecy it would be more difficult for it to perpetrate its deception or to avoid the consequences of it;

(f)                      the evidence shows that the Respondent has monetized the disputed domain name by intentional invoking the Complainant and its trademark and doing so for commercial gain, knowing that this would do damage to the Complainant and its business;

(g)                      the registration of the Complainant's CLUB QUARTERS trademark, which the Complainant has used since 1991, predates the registration of the disputed domain name on April 24, 2024; this has already been noted but it deserves to be emphasized again, as the chronology shows that the Complainant's trademark rights were well established by the time the domain name was registered and the Respondent consequently had no right to use the same expression in a domain name or as a trademark or a brand; and 

(h)                      all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith; the whole conduct of the Respondent establishes this point.

All of the foregoing matters show bad faith registration and use of the domain name, as the domain name was registered with an unauthorized inclusion of the Complainant's trademark, the domain name so created is confusingly similar to the trademark, and the Respondent has caused it to resolve to a website which is misleading and deceptive and which has been shown by the foregoing evidence to be an attempt to enhance the appearance of authenticity to the prejudice of the Complainant.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the CLUB QUARTERS trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also correctly cited several prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks.

 

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

 

 

The Honorable Neil Anthony Brown KC, Panelist

Dated: August 30, 2024