Choice Hotels International, Inc. v. Prashant Pachori
Claim Number: FA1112001420063
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Eva J. Pulliam of Arent Fox LLP, Washington, D.C., USA. Respondent is Prashant Pachori (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <qualityinnorlando.net> and <qualityinnorlando.com> (the “Disputed Domain Names”), registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2011; the National Arbitration Forum received payment on December 14, 2011.
On December 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <qualityinnorlando.net> and <qualityinnorlando.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2012, 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@qualityinnorlando.net, postmaster@qualityinnorlando.com. Also on December 15, 2011, 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.
A timely Response was received and determined to be complete on December 16, 2011.
On December 21, 2011, the Forum received an additional submission from Complainant titled “Complainant’s Reply,” which was timely submitted pursuant to the Forum’s Supplemental Rule 7.
On December 27, 2011, the Forum received an additional submission from Respondent, which was timely submitted pursuant to the Forum’s Supplemental Rule 7.
On December 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as Panelist.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, in relevant part, that:
1. The Disputed Domain Names are confusingly similar to the trademark QUALITY INN – which has been used by Complainant since at least as early as August 1972, in connection with hotel, motel and restaurant services – because “[t]he mere addition of a geographic term [‘orlando’] to Complainant’s Mark does not negate the confusing similarity of the Disputed Domain Names.”
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, there is no evidence that Respondent owns any trademark rights related to the Disputed Domain Names, “[n]o content displayed in the Whois records for the Disputed Domain Names indicate that Respondent claims to be named or is commonly known by the business name ‘QUALITY INN ORLANDO,’ or by the Disputed Domain Names”; and “Respondent is not now, and has never been, licensed or authorized by Complainant to use its QUALITY INN Mark, nor to register or use any domain names incorporating this Mark.”
3. The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “Registration of a confusingly similar domain name with knowledge of another’s trademark is evidence of bad faith”; “[i]t can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the Mark because the Disputed Domain Names wholly incorporate the Mark and Respondent registered the Disputed Domain Names many years after Complainant first began using its Mark and obtained federal registrations for the Mark in the U.S.”; and “[p]revious Panels have found registration and use of a domain name confusingly similar to a complainant’s mark that directs Internet traffic to a third-party competitor website demonstrates bad faith.”
B. Respondent
Respondent stated that it “owns a hotel ‘Quality Inn’ in Orlando & kissimmee florida [sic] areas and . . . has been using these domains for his hotel websites”; it “has multiple hotels in Orlando”; and “[h]is web designer by mistake had the domain forwarded to wrong hotel and he has got it fixed.”
C. Additional Submissions
In its additional submission, Complainant states that it “has no record that Prashant Pachori owns or is otherwise authorized or licensed to use the QUALITY INN marks in any manner, with hotels in Florida or elsewhere” and that “[m]erely redirecting the Domain Names to a website advertising a QUALITY INN hotel . . . fails to prove any right to use Complainant’s federally registered and famous mark.” Complainant further states that it “made numerous attempts to contact the Respondent” but that its attempts were unanswered.
In its additional submission, Respondent provided a letter from a person purporting to be the general manager of a Quality Inn hotel in Kissimmee, Florida, stating that he had authorized Respondent “to manage the domains for us” and that “we weren’t aware that [the] domain [names] pointed to [the] wrong hotel.”
Based on undisputed evidence, the Panel finds that Complainant has rights in and to the trademark QUALITY INN, as described more fully above, which was first used at least as early as August 1972 and is protected by U.S. Reg. Nos. 1,183,294 and 2,729,999; that the Disputed Domain Name <qualityinnorlando.net> was created on July 21, 2005, and the Disputed Domain Name <qualityinnorlando.com> was created on September 14, 1998; and that the Disputed Domain Names have been used in connection with a website for a hotel described as “Continental Plaza Hotel Kissimmee.”
Complainant states that it is “one of the world’s largest lodging franchisors, with over 6,000 hotels in countries and territories throughout the world, including over 1,300 hotels in countries and territories throughout the world operating under the QUALITY INN Mark.”
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.
Based upon the trademark registrations cited by Complainant, as described above, it is apparent that Complainant has rights in the trademark QUALITY INN. This finding is consistent with previous panels that also have considered the same trademark, including Choice Hotels Int’l, Inc. v. Media Magic, FA 1374204 (Nat. Arb. Forum Mar. 25, 2011) (transfer of, inter alia, <qualityinnsa.com>) and Choice Hotels Int’l, Inc. v. Above.com Domain Privacy, FA 1364256 (Nat. Arb. Forum Feb. 10, 2011) (transfer of, inter alia, <qualityinnatlanticcity.com>).
As to whether the Disputed Domain Names are identical or confusingly similar to the QUALITY INN trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “qualityinnorlando”), as it is well-established that the top-level domain name (i.e., “.net” and “.com”) should be disregarded for this purpose.
The Panel agrees with the decisions under the Policy cited by Complainant supporting the proposition that the addition of a geographic identifier to a domain name does not negate any confusing similarity where the domain name also contains the complainant’s trademark. See, e.g., Choice Hotels Int’l, Inc. v. ResSystem.com, Inc., FA 282797 (Nat. Arb. Forum July 23, 2004) (transferring the <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> domain names because “[t]he mere addition of a . . . geographic, generic or descriptive term to Complainant’s marks does not negate the confusing similarity of Respondent’s domain names”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, there is no evidence that Respondent owns any trademark rights related to the Disputed Domain Names, “[n]o content displayed in the Whois records for the Disputed Domain Names indicate that Respondent claims to be named or is commonly known by the business name ‘QUALITY INN ORLANDO,’ or by the Disputed Domain Names”; and “Respondent is not now, and has never been, licensed or authorized by Complainant to use its QUALITY INN Mark, nor to register or use any domain names incorporating this Mark.”
Although Respondent has stated that it “owns” a Quality Inn hotel in the Orlando area and that the Disputed Domain Names were being managed by Respondent and mistakenly associated with the “wrong hotel,” these statements are, at best, unclear and appear to be inconsistent and unsupportive of Respondent’s rights. Interpreting the submissions in a light most favorable to Respondent, it would appear that the Respondent, Prashant Pachori, may have registered the Disputed Domain Names on behalf of a Quality Inn hotel in Kissimmee, Florida. However, the Respondent has not disputed Complainant’s assertion that it “has no record that Prashant Pachori owns or is otherwise authorized or licensed to use the QUALITY INN marks in any manner, with hotels in Florida or elsewhere,” nor is there any evidence in the record that a Quality Inn hotel in Kissimmee, Florida, would have the right to grant to Prashant Pachori the right to register the Disputed Domain Names. Further, although Respondent has stated that the Disputed Domain Names were used “by mistake” with the “wrong hotel,” Respondent has not presented any evidence that it has corrected this mistake (other than an unsupported and apparently untrue assertion that Respondent’s domain name manager “has got it fixed”) and the Panel independently observed that the Disputed Domain Names are not used in connection with an active website at all – certainly not in connection with a website for a Quality Inn hotel in Kissimmee, Florida.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.). Here, Respondent has not met its burden of production, given that it has presented no evidence of using or preparing to use the Disputed Domain Names in connection with “a bona fide offering of goods or services” (Policy, paragraph 4(c)(i)); no evidence that Prashant Pachori has been “commonly known by the domain name” (Policy, paragraph 4(c)(ii)); and no evidence that it is “making a legitimate noncommercial or fair use of the domain name.” (Policy, paragraph 4(c)(iii)).
Accordingly, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy ¶ 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Names had been used in connection with a website for another hotel. Such use of a domain name in connection with a competitor’s website repeatedly has been held to constitute bad faith. See, e.g., Wyndham Hotels and Resorts, LLC v. Key Hotel Group Inc., FA 1255806 (Nat. Arb. Forum May 14, 2009) (finding bad faith where “the disputed domain name is being used to advertise a third-party competitive hotel reservation website”).
Finally, Respondent’s statement that the Disputed Domain Names were used “by mistake” in connection with the “wrong hotel” is worthy of further discussion. If true, this statement could undermine a finding of bad faith – at least under paragraph 4(b)(iv) of the Policy, which requires intentional conduct. However, Respondent’s credibility is undermined by the apparent fact that it continued to use the Disputed Domain Names in connection with the “wrong” website even after Complainant contacted Respondent about the matter on September 15, 2011 (as shown by copies of e-mails and letters provided by Complainant). Indeed, Complainant has stated that “[a]t every opportunity, [Respondent] has simply changed the registrant contact name information and continued to point the Domain Names to the competitor hotel site” – statements that have not been rebutted by Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qualityinnorlando.net> and <qualityinnorlando.com> domain names be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: January 10, 2012
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