InTown Suites Management, LLC v. Domain Admin
Claim Number: FA2210002016369
Complainant is InTown Suites Management, LLC (“Complainant”), represented by Patrick J. Concannon of Nutter, McClennen & Fish, LLP, US. Respondent is Domain Admin (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <townsuites.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on October 17, 2022; Forum received payment on October 17, 2022.
On October 18, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <townsuites.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 October 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2022, 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 email@example.com. Also on October 19, 2022, 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 November 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Founded in 1993 and based in Atlanta, Georgia, USA, Complainant is a hotelier operating under the name and mark INTOWN SUITES.
Complainant holds a registration for the service mark INTOWN SUITES, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,233,774, registered March 23, 1999, and renewed most recently as of September 30, 2018.
Since June 26, 1997, Complainant has done business online via the domain name <intownsuites.com>.
Respondent registered the domain name <townsuites.com> on May 2, 2001.
The domain name is confusingly similar to Complainant’s INTOWN SUITES service mark.
Respondent is not affiliated with Complainant.
Complainant has never authorized Respondent to use its INTOWN SUITES mark.
Respondent has not been commonly known by the domain name.
Instead, Respondent merely holds the domain name passively and offers it for sale online.
There is no plausible circumstance in which Respondent could legitimately use the domain name.
Respondent has both registered and now uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is now being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true).
By virtue of its registration of the INTOWN SUITES service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights ….
See also Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <townsuites.com> domain name is confusingly similar to Complainant’s INTOWN SUITES service mark. The domain name incorporates the dominant portion of the mark, with only the deletion of the letters “in” and the space between its terms, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum August 17, 2015) (finding that a UDRP respondent’s <vnymodels.com> domain name was confusingly similar to the mark VNY MODEL MANAGEMENT under Policy¶4(a)(i), where the domain name omitted the generic term “management” but included the remaining dominant portion of the mark).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
As to Respondent’s elimination of the space between the terms of Complainant’s mark in creating the domain name, this alteration of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
…[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <townsuites.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <townsuites.com> domain name, that Respondent is not affiliated with Complainant, and that Complainant has not authorized Respondent to use the INTOWN SUITES service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the contested domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead merely holds the domain name passively and offers it for sale online. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum April 20, 2005) (finding that inactive use of a domain name is not a bona fide offering of goods or services under Policy¶4(c)(i)). And, for the same reason, a failure to employ the domain name actively over the more than twenty years of its existence, nor even to demonstrate substantial preparations for its active use (Policy¶4(c)(i)) cannot be deemed a legitimate noncommercial or fair use.
See also Twentieth Century Fox Film Corp. v. Diego Ossa, FA 1602016 (Forum February 26, 2015) (finding that, in appropriate circumstances, for a UDRP respondent to offer a domain name for sale may be found to indicate a lack of legitimate interest in that domain name). Where, as here, doing nothing but offering the domain name for sale over a span of more than two decades by one who shows no sign of being a functioning domain name reseller leads inevitably to such a conclusion.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
The same reasons which persuade us that Respondent has neither rights to nor legitimate interests in the challenged <townsuites.com> domain name also convince us that Respondent has both registered and now uses the domain name in bad faith. See, for example, Indiana University v. Ryan G Foo, FA 1588079 (Forum December 28, 2014) (finding that passive holding for an extended period of a domain name which was confusingly similar to the mark of another provided grounds for a conclusion that the domain name was both registered and used in bad faith). See also VideoLink, Inc. v. Xantech Corp., FA 1608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Further see Capital One Fin. Corp. v. haimin xu, FA 1819364 (Forum January 8, 2019) (finding that making an offer to sell a domain name that was confusingly similar to the mark of a UDRP complainant suggested that a respondent intended in bad faith to do nothing with the domain name but sell it from the time it was registered).
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, be GRANTED.
Accordingly, it is Ordered that the <townsuites.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 14, 2022
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