Sierra Suites Franchise, L.P. v. Forum LLC
Claim Number: FA0608000780237
Complainant is Sierra Suites Franchise, L.P. (“Complainant”), represented by Megan
E. Gray, of Roylance, Abrams, Berdo & Goodman, LLP,
1300 19th St., NW, Suite 600, Washington, DC 20036. Respondent is Forum LLC (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sierrasuits.com>, registered with Moniker Online Services, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sierrasuits.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <sierrasuits.com> domain name is confusingly similar to Complainant’s SIERRA SUITES mark.
2. Respondent does not have any rights or legitimate interests in the <sierrasuits.com> domain name.
3. Respondent registered and used the <sierrasuits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sierra Suites Franchise, L.P., markets hotel services under the SIERRA SUITES mark. Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the SIERRA SUITES mark (Reg. No. 2,562,701 issued December 15, 1995).
Respondent registered the <sierrasuits.com>
domain name
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the SIERRA SUITES mark
through registration of the mark with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant asserts that the <sierrasuits.com> domain name is confusingly similar to
its SIERRA SUITES mark. The disputed
domain name contains Complainant’s mark in its entirety with the exception of
an omitted “E” from the term “SUITES.”
The Panel finds that a domain name that differs by a single letter from
Complainant’s mark to be confusingly similar for the purposes of Policy ¶ 4(a)(i). Accordingly,
the Panel finds the <sierrasuits.com>
domain name to be confusingly similar to Complainant’s SIERRA SUITES mark
pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges Respondent does not have rights or legitimate interests in the disputed domain name. Under Policy ¶4(a)(ii), the burden is on Complainant to prove Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes such a prima facie case, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to establish a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has successfully established a prima facie case through its uncontested assertions and evidentiary submissions.
Respondent’s failure to reply to the Complaint in this
proceeding creates a presumption that Respondent lacks rights and legitimate
interests in the disputed domain name. See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel chooses to analyze the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
The disputed domain name was
originally registered using a WHOIS privacy service; however, upon initiation
of this proceeding, it was revealed that the registrant was “Forum LLC.” Due to the fact that there is no other
evidence to suggest otherwise, the Panel finds that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding
that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum
The disputed domain name resolves to a website that features sponsored links to websites that compete with Complainant. The Panel finds that the use of a confusingly similar domain name to display advertisements for competing websites does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Accordingly, the Panel finds that Respondent’s use of the disputed domain name does not invoke rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent registered and used the disputed domain name in bad
faith. Complainant also contends that Respondent receives monetary compensation
in return for redirecting Internet users to its website where sponsored links
are featured. The Panel finds that
Respondent’s use of the confusingly similar domain name that advertises
hotel-related services causes a likelihood of confusion as to Complainant’s
sponsorship of or affiliation with the resulting website and evidences bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where the respondent linked the domain name to another
domain name, <iwin.com>, presumably receiving a portion of the
advertising revenue from the site by directing Internet traffic there, thus
using a domain name to attract Internet users for commercial gain).
Moreover, the Panel
finds that Respondent’s registration and use of the confusingly similar domain
name to redirect Internet users to its own website where it advertises
competing third-parties constitutes disruption and evidences bad faith pursuant
to Policy ¶ 4(b)(iii).
See EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <sierrasuits.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 16, 2006
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