Two Flags Joint Venture, LLC v. Rampe Purda
Claim Number: FA1010001350776
Complainant is Two Flags Joint Venture, LLC (“Complainant”), represented by Susan L. Crane of Wyndham Worldwide Corporation, New Jersey, USA. Respondent is Rampe Purda (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daysinnchicago.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2010; the National Arbitration Forum received payment on October 6, 2010. The Complaint was submitted in both Finnish and English.
On October 8, 2010, Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <daysinnchicago.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a Hebeidomains.com 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 18, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of November 8, 2010 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@daysinnchicago.com. Also on October 18, 2010, the Finnish language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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" 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <daysinnchicago.com> domain name is confusingly similar to Complainant’s DAYS INN mark.
2. Respondent does not have any rights or legitimate interests in the <daysinnchicago.com> domain name.
3. Respondent registered and used the <daysinnchicago.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Two Flags Joint Venture, LLC, holds multiple trademarks for its DAYS INN mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,160,430 issued July 7, 1981) and the National Board of Patents and Registration of Finland (“NBPRF”) (e.g., Reg. No. 255455 issued April 1, 1996) in connection with restaurant services and motel services.
Respondent, Rampe Purda, registered the disputed domain name on December 13, 2000. The disputed domain name resolves to a website featuring links to the websites of Complainant’s competitors, hotel reservation sites, and direct links to Complainant’s official website.
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 asserts rights in its DAYS INN mark based on its registrations of the mark with governmental trademark authorities around the world. Complainant has submitted evidence of its registration of the mark with both the USPTO (e.g., Reg. No. 1,160,430 issued July 7, 1981) and the NBPRF (e.g., Reg. No. 255455 issued April 1, 1996). The Panel finds that trademark registrations such as those demonstrated by Complainant are sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <daysinnchicago.com> domain name is confusingly similar to Complainant’s DAYS INN mark. Respondent’s disputed domain name contains Complainant’s entire mark, deletes the space between the terms of the mark, and adds both the geographic term “chicago” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a geographic term does not distinguish a disputed domain name from a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that the removal of spaces and the addition of a gTLD do not render a disputed domain name distinct from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i), Respondent’s <daysinnchicago.com> domain name is confusingly similar to Complainant’s DAYS INN mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant is required to make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has met its burden by establishing a prima facie case and Respondent has not submitted a response to these proceedings. Therefore, the Panel could infer that Respondent does in fact lack rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, in the effort to make a complete and fair determination, the Panel elects to consider the evidence on record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the <daysinnchicago.com> domain name.
Complainant alleges that Respondent has never been known by the <daysinnchicago.com> domain name or any other name containing Complainant’s mark. Complainant further alleges that Respondent is not now, nor has it ever been, a licensee of Complainant or any of Complainant’s subsidiaries. The WHOIS information indicates that “Rampe Purda” is the registrant of the <daysinnchicago.com> domain name. Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <daysinnchicago.com> domain name resolves to a website featuring links to the websites of Complainant’s competitors, hotel reservation sites, and direct links to Complainant’s official website. Complainant argues that it is highly likely that Respondent receives click-through fees each time a visitor to the resolving websites clicks on a third-party’s link. The Panel finds that Respondent’s use of the disputed domain name to display links of this nature, and profit from their display, is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Policy ¶ 4(b)(iii) allows a finding of bad faith if Respondent’s registration and use of the disputed domain name is primarily for the purpose of disrupting the business of a competitor. Complainant asserts that its existing and prospective customers who find Respondent’s disputed domain name while searching for information about Complainant will be diverted to competing lodging reservation websites whose links are displayed on Respondent’s resolving website. The Panel finds that this does constitute bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent registered and is using the disputed domain name to drive Internet users to Respondent’s resolving website. Furthermore, Complainant asserts that Respondent is profiting financially through the receipt of click-through fees as a result of the links to competitors of Complainant. The Panel finds that this behavior is evidence of Respondent’s attempt to intentionally attract Internet users to its website for commercial gain, by using a confusingly similar domain name that Internet users may mistakenly associate with Complainant. The Panel concludes that registration and use of the disputed domain name for such a purpose is bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <daysinnchicago.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 18, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page