Choice Hotels International, Inc. v. Dyk Dylina
Claim Number: FA1102001374191
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Dyk Dylina (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choiceprivleges.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2011; the National Arbitration Forum received payment on February 22, 2011. The Complaint was submitted in both Finnish and English.
On February 24, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <choiceprivleges.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 name. 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 March 2, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of March 22, 2011 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@choiceprivleges.com. Also on March 2, 2011, 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 March 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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, 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 <choiceprivleges.com> domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark.
2. Respondent does not have any rights or legitimate interests in the <choiceprivleges.com> domain name.
3. Respondent registered and used the <choiceprivleges.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., uses its CHOICE PRIVILEGES mark in connection with its hotel rewards program, hotel services for preferred customers, and related goods and services, including the CHOICE PRIVILEGES Visa credit card. Complainant owns multiple trademark registrations around the world including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,610,622 issued August 20, 2002) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 2366136 issued January 12, 2003).
Respondent, Dyk Dylina, registered the disputed domain name on November 26, 2005. Respondent’s <choiceprivleges.com> domain name resolves to a website that offers commercial search engine services, provides links to advertisements for credit cards that directly compete with the CHOICE PRIVILEGES Visa card, and provides travel-related links in direct competition with those offered by Complainant.
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 CHOICE PRIVILEGES mark based on its registration of the mark with governmental trademark authorities. Complainant submits evidence of its registration of the CHOICE PRIVILEGES mark with both the USPTO (Reg. No. 2,610,622 issued August 20, 2002) and the OHIM (Reg. No. 2366136 issued January 12, 2003). The Panel finds that Complainant has successfully established rights in its CHOICE PRIVILEGES mark under Policy ¶ 4(a)(i) by virtue of registration of the marks with these trademark authorities. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to 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 the disputed domain name is simply a misspelling of Complainant’s CHOICE PRIVILEGES mark, rendering it confusingly similar. The Panel finds that the removal of the space between the terms and the deletion of the letter “i” from Complainant’s mark are not sufficient alterations that distinguish the disputed domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Additionally, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” is unimportant to the confusingly similar analysis. The Panel agrees. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that, according to the requirements of Policy ¶ 4(a)(i), Respondent’s <choiceprivleges.com> domain name is confusingly similar to Complainant’s CHOICE PRIVILEGES mark.
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <choiceprivleges.com> domain name. The burden shifts to Respondent to prove that it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) upon Complainant’s establishment of a prima facie case in support of its allegations. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the panel will examine the record in light of the factors contained in Policy ¶ 4(c) to make a determination as to whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that there is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the disputed domain name. Complainant alleges that Respondent is not now, and has never been, licensed, or authorized to use Complainant’s CHOICE PRIVILEGES mark, nor to register or use any domain names incorporating the CHOICE PRIVILEGES mark. The WHOIS information submitted in connection with the Complaint, indicates that the registrant of the <choiceprivleges.com> domain name is “Dyk Dylina.” The Panel, upon examination of the Complaint and the record as a whole, can find no evidence to support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website that offers commercial search engine services, provides links to advertisements for credit cards that directly compete with the CHOICE PRIVILEGES Visa card, and provides travel-related links in direct competition with those offered by Complainant. The Panel finds that Respondent’s use of the disputed domain name for any of these purposes does not conform to 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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)”).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain name to display links to credit card and travel services, similar to those offered by Complainant under its CHOICE PRIVILEGES mark constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). 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)(iii) 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that prior panels have not hesitated to find bad faith where a respondent’s only apparent reason for using a complainant’s mark in a domain name was to benefit from the goodwill associated with the mark. Complainant asserts that Respondent has tried to profit from its registration of the disputed domain name by offering links to credit cards and travel-related services that compete with Complainant’s offered services. Complainant further asserts that Respondent is attempting to create confusion as to Complainant’s sponsorship, affiliation, and/or endorsement of the disputed domain name. Both Complainant and the Panel presume that Respondent profits commercially from its registration and use of the disputed domain name by collecting “click-through” fees from the hyperlinks that resolve from the disputed domain names. Therefore, the Panel finds 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 the elements of Policy ¶ 4(a)(iii) have 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 <choiceprivleges.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY
(Ret.)
Dated: March 30, 2011
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