Corporate Lodging Consultants, Inc. v. David Woods
Claim Number: FA0508000529489
Complainant is Corporate Lodging Consultants Inc. (“Complainant”), represented by Michael J. Norton, of Foulston Siefkin LLP, 1551 N. Waterfront Parkway, Wichita, Kansas 67206. Respondent is David Woods (“Respondent”), represented by Cynthia S. Connolly, of Scott, Douglass & McConnico, L.L.P., 600 Congress Avenue, Austin, Texas 78701.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <corporatelodging.com> (the “Domain Name”) registered with Innerwise, Inc. d/b/a ItsYourDomain.com (the “Registrar”).
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.
David H. Bernstein as Panelist.
On August 4, 2005, the Registrar confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with the Registrar and that the Respondent is the current registrant of the Domain Name. The Registrar has verified that Respondent is bound by the Registrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 12, 2005, the National Arbitration Forum issued a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of September 1, 2005 by which Respondent could file a Response to the Complaint. The Commencement Notification 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 email@example.com by e-mail.
On August 22, 2005, the Respondent requested and was granted an extension of the Response deadline until September 16, 2005.
A timely Response was received and determined to be complete on September 15, 2005.
On September 26, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David H. Bernstein as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Respondent requests that the Panel find that the Complainant has engaged in Reverse Domain Name Hijacking.
Complainant asserts that it is the owner of the trademark “Corporate Lodging Consultants,” used in “association with lodging management services.” Complainant claims to have used the mark continuously in commerce since 1977, that it has spent millions of dollars in sales and marketing support of the Corporate Lodging Consultants business, and that, “through its extensive use, Complainant and its mark has become famous throughout North America.” Complainant reports that, according to a 2003 market valuation report, the Corporate Lodging Consultants trade name is worth $130,000.
Complainant asserts that the Domain Name, <corporatelodging.com>, is identical to the dominant portion of its trademark, “Corporate Lodging Consultants.”
Complainant argues that Respondent has no rights or legitimate interest in the Domain Name. It says that Respondent is not making any legitimate use of the Domain Name and that Respondent has no evidence of “demonstrable preparations” towards such use. Complainant also calls into question the validity of Respondent’s legal title to the domain name, stating that Respondent “is believed to have illegally acquired the domain in his personal name” as a result of the bankruptcy of the domain name’s previous owners.
Complainant contends that Respondent is acting in bad faith by passively holding the Domain Name and attempting to sell it for a profit.
Respondent states that it acquired the Domain Name from Corporate Lodging International, Inc. (“CLII”) as a result of a judicially-ordered auction in 2004.
Respondent contends that the Complainant does not have trademark rights in the phrase “corporate lodging” because that phrase is generic for services related to corporate lodging. Alternatively, Respondent argues that, even if the mark is found not to be generic, Respondent has prior rights in the mark because its predecessor, CLII, used the mark prior to Complainant. In particular, Respondent alleges that CLII operated a website for several years in connection with providing corporate lodging services.
After acquiring the domain name, Respondent took CLII’s website down to “retool” the website’s offerings. He asserts that, prior to receiving notice of the dispute, he took several steps to relaunch the site, including the hiring of an investment advisor and a website designer.
Respondent challenges Complainant’s allegations of bad faith. Respondent states: “there is absolutely no evidence that the subject domain name was registered or acquired primarily for the purpose of selling it to Complainant.” Moreover, he emphasizes that it was Complainant, not Respondent, who initiated sales discussions.
The panel finds that Complainant has failed to meet the threshold requirement of establishing trademark rights in the phrase “Corporate Lodging.” In the absence of any such trademark rights, Complainant cannot possibly prevail in this proceeding, and thus the Panel need not consider whether Respondent lacks rights or a legitimate interest in the Domain Name, and whether Respondent registered and used the Domain Name in bad faith.
The panel also finds that Complainant brought this Complaint in bad faith. Given Complainant’s lack of any trademark rights, as evidenced by the difficulty it has faced in registering its purported mark in the U.S. Patent and Trademark Office, the filing of this Complaint appears to have been a bad faith attempt to hijack the Domain Name from Respondent.
To prevail in this UDRP proceeding, Complainant must prove each of the following elements listed in Paragraph 4(a) of the Policy:
(1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Respondent registered and has used the Domain Name in bad faith.
In this case, Complainant has failed to establish the first, threshold element– that the Domain Name, <corporatelodging.com>, is identical or confusingly similar to a mark in which it has rights.
Complainant does not claim trademark rights in the phrase “Corporate Lodging.” That likely is because Complainant recognizes that “Corporate Lodging” is generic for services related to lodging for corporate travelers. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 14, 2000); Rodale, Inc. v. Cambridge, WIPO Case No, DBIZ2002-00153 (WIPO June 28, 2002). Indeed, according to Respondent, it was for this reason that the U.S. Patent and Trademark Office (“USPTO”) rejected CLII’s application to register the mark “Corporate Lodging.”
Instead, Complainant claims common law rights in the mark “Corporate Lodging Consultants.” Complainant did try to register that mark in the USPTO, but that application was abandoned. Complainant has not provided any information about the reason for that abandonment; it may well have been because the USPTO refused to register that mark on the ground that it also is generic.
Even if that name were descriptive, rather than generic, and even if Complainant could establish secondary meaning in that name, it remains the case that ownership of the mark would not give rise to trademark rights in a generic portion of the mark. See Capt’n Snooze Mgm’t Pty Ltd. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000).
Because Complainant has failed to show trademark rights in the words Corporate Lodging, either alone or as a protectable part of the name Corporate Lodging Consultants, Complainant cannot establish the first factor of Policy ¶ 4(a): that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights.
Having determined that the Complaint must therefore be denied, the Panel must next consider Respondent’s request for a finding of Reverse Domain Name Hijacking.
Reverse domain name hijacking (“RDNH”) is defined under Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See Goldline Int’l, Inc. v. Goldline, D2000-1151 (WIPO Jan. 4, 2001). In general, in order to establish an entitlement to a finding of RDNH, Respondent must show that Complainant knew that it had no trademark rights in the mark at issue, that the domain name at issue could not possibly be seen as identical or confusingly similar to Complainant’s mark, or “that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” Id.
In this case, the weakness of Complainant’s allegation of trademark rights leads the Panel to conclude that the Complaint was brought in bad faith. Complainant should have known that it could not possibly have rights to a phrase as generic as “corporate lodging.” See Rodale, Inc. v. Cambridge, DBIZ2002-00153 (WIPO June 28, 2002).
Influencing the Panel’s decision is that the remainder of Complainant’s Complaint is equally weak. Complainant’s challenge to Respondent’s ownership of the Domain Name is based on conjecture and speculation, but is supported with no facts. Similarly, the allegations that Respondent registered the Domain Name for the purpose of selling it to Complainant is unsupported. In fact, the quotes Complainant included from the parties’ email exchange were taken out of context, and fail to make clear that it was Complainant who repeatedly contacted Respondent in an effort to purchase the Domain Name despite Respondent’s reluctance to sell.
Because Complainant has failed to prove trademark rights in the phrase “Corporate Lodging,” the Panel DENIES the Complaint. In addition, the Panel finds that the Complaint was brought in bad faith and therefore grants Respondent’s request for a finding of Reverse Domain Name Hijacking against Complainant.
David H. Bernstein, Panelist
Dated: October 10, 2005
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