DECISION

 

LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE

Claim Number: FA1702001717300

PARTIES

Complainant is LodgeWorks Partners, L.P. (“Complainant”), represented by Stephen G. Janoski of Butzel Long, District of Columbia, USA.  Respondent is Isaac Goldstein / POSTE RESTANTE (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <archerhotels.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 14, 2017; the Forum received payment on February 14, 2017.

 

On February 17, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <archerhotels.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name.  Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 February 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2017 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@archerhotels.com.  Also on February 17, 2017, 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 March 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant provides online information regarding hotel services and incentive programs.  Complainant uses the ARCHER and ARCHER HOTEL marks (“ARCHER marks”) in conjunction with its business practices.

2.    Complainant registered the ARCHER mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,689,116, registered Feb. 17, 2015).  Complainant asserts common law rights in the ARCHER HOTEL mark due to continuous use and domain registration (<archerhotel.com>) since October 1, 2012. 

3.    Respondent’s <archerhotels.com>[1] is confusingly similar to Complainant’s ARCHER HOTEL mark because it incorporates the mark in its entirety, eliminating spaces, while adding the letter “s” and the “.com” generic top level domain (“gTLD”).

4.    Respondent does not have rights or legitimate interests in <archerhotels.com>.  Respondent is not commonly known by the domain name.  Complainant has not authorized Respondent to use the ARCHER marks nor is Respondent affiliated with Complainant.

5.    Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <archerhotels.com> resolves to a page displaying pay-per-click links to products and services in direct competition with Complainant. 

6.    Respondent registered and is using <archerhotels.com> in bad faith.  Respondent is identified as being a known cybersquatter with prior UDRP decisions against it.  The domain name attracts internet users to pay-per-click links for Respondent’s commercial gain.  Respondent had at least constructive or actual notice of Complainant and its rights to the ARCHER marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the ARCHER and ARCHER HOTEL marks.  Respondent’s domain name is confusingly similar to Complainant’s ARCHER and ARCHER HOTEL marks.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <archerhotels.com> domain name and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant provides online information regarding hotel services and incentive programs.  Complainant uses the ARCHER marks in conjunction with its business practices.  Complainant registered the ARCHER mark with USPTO (e.g. Reg. No. 4,689,116, registered Feb. 17, 2015).  USPTO registrations are sufficient to show rights in a mark.  See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) . . . .”).

 

Complainant maintains that Respondent’s <archerhotels.com> is confusingly similar to Complainant’s ARCHER HOTEL mark because it incorporates the mark in its entirety, eliminating spaces, while adding the letter “s” and the “.com” gTLD.  “[T]he addition of an ‘s’ to the end of the complainant’s mark . . . does not prevent the likelihood of confusion caused by the use of the remaining identical mark.”  Cream Pie Club v. Halford, FA 95235 (Forum Aug. 17, 2000).  Likewise, “[e]limination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”  U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007).  The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the <archerhotels.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show 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 holds that Complainant has made a prima facie case.

 

Complainant asserts that Respondent does not have rights or legitimate interests in <archerhotels.com>.  In support of its argument, Complainant has shown that Respondent is not commonly known by the domain name.  WHOIS information associated with this case identifies Respondent as “Isaac Goldstein” of “POSTE RESTANTE.”   “Given the WHOIS contact information for the disputed domain [name], one can infer that [r]espondent . . . is not commonly known by the [disputed domain name] in any derivation.”  Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).  Moreover, Complainant has shown it has not authorized Respondent to use the ARCHER marks in any regard, and that Respondent is not affiliated in any way whatsoever with Complainant.  Because nothing in Respondent’s WHOIS information, or the record in this matter, indicates that Respondent is commonly known by the <archerhotels.com> domain name, the Panel concludes that Respondent is not commonly known by the <archerhotels.com> domain name.

 

Complainant maintains that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  To support its argument, Complainant has provided evidence that Respondent’s <archerhotels.com> domain name resolves to a page displaying pay-per-click links to products and services in direct competition with Complainant.  A  “[r]espondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s . . . services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”  McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015).  The Panel agrees that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which are in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using <archerhotels.com> in bad faith.  Complainant has provided evidence that Respondent is a known cybersquatter and has multiple UDRP decisions against it.   Bad faith registration and use pursuant to Policy ¶ 4(b)(ii) has been found where a respondent has been subject to numerous UDRP proceedings and  panels have ordered the transfer of domain names containing the trademarks of the complainants.  Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Forum Nov. 29, 2006).  The Panel finds these circumstances exist in this case.

 

Furthermore, the Panel finds bad faith for the further reasons that Respondent engaged in bad faith registration and use by using the <archerhotels.com>  domain name that is confusingly similar to Complainant’s mark to offer links to third-party websites that offer services similar to those offered by Complainant.  Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006).

 

Finally, Complainant contends that Respondent had actual notice of Complainant and its rights to the ARCHER marks.  Complainant argues that Respondent's offering of competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights.  The Panel agrees. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).

 

The Panel finds Complainant has satisfied 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 <archerhotels.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 20, 2017

 

 



[1] Respondent registered <archerhotels.com> on November 6, 2015.

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page