Club Quarters Franchise Network LLC v. Jason DeLorenzo
Claim Number: FA1309001517663
Complainant is Club Quarters Franchise Network LLC (“Complainant”), represented by Kathleen S. Ryan of the Ollila Law Group LLC, Colorado, USA. Respondent is Jason DeLorenzo (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubquartersdc.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 known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2013; the National Arbitration Forum received payment on September 3, 2013.
On September 4, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <clubquartersdc.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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2013 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@clubquartersdc.com. Also on September 5, 2013, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Club Quarters Franchise Network LLC, uses its CLUB QUARTERS trademark in connection with hotel services in the United States and worldwide. Complainant owns a CLUB QUARTERS hotel located in Washington, D.C.
Complainant owns rights in the CLUB QUARTERS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,549,203 registered December 23, 2008).
The <clubquartersdc.com> domain name is confusingly similar to Complainant’s CLUB QUARTERS mark, because the domain name incorporates the mark in its entirety and merely adds the geographic term “dc.”
Respondent is not commonly known as <clubquartersdc.com>, because the WHOIS information identifies the registrant of the domain name as “Jason DeLorenzo,” and Complainant has not authorized Respondent to use its CLUB QUARTERS mark in a domain name.
Respondent’s is using the <clubquartersdc.com> domain name to attempt to pass itself off as Complainant and to promote a link to Complainant’s competitor in the hotel service industry. Neither of these uses of the disputed domain name is protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent has demonstrated bad faith registration and use of the <clubquartersdc.com> domain name under Policy ¶ 4(b)(iii), because the resolving website targets Internet users seeking services under Complainant’s CLUB QUARTERS mark and redirects them to the website of one of Complainant’s competitors. Respondent has also demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the disputed domain name deliberately misleads Internet users seeking the hotel booking services offered by Complainant, and the Panel may presume that Respondent is profiting from the disputed domain name in the form of referral fees. Respondent is using the disputed domain name to pass itself off as Complainant, which demonstrates Respondent’s bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Respondent registered the <clubquartersdc.com> domain name with actual knowledge of Complainant and its CLUB QUARTERS mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Respondent registered the disputed domain name on June 28, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for CLUB QUARTERS, as well as additional trademark registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the CLUB QUARTERS mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in CLUB QUARTERS.
Respondent is using the <clubquartersdc.com> domain name to attempt to pass itself off as Complainant and to promote a link to Complainant’s competitor in the hotel service industry as well as to promote other links aimed at generating revenue for Respondent.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Any of Complainant’s registrations for the CLUB QUARTERS mark is sufficient to establish Complainant’s rights in such mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (finding Complainant established rights in the HP mark through its numerous registrations with many governmental trademark authorities including the United States Patent and Trademark Office).
The at-issue domain name incorporates the CLUB QUARTERS mark in its entirety less the space, adds the geographic term “dc” and appends the top level domain name “.com” thereto. The addition of the term “dc” only serves to further confuse the domain name with Complainant’s trademark as it suggests the location of Complainant’s CLUB QUARTERS HOTEL. Moreover, the necessary top level domain name is irrelevant for the purpose of Policy ¶4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <clubquartersdc.com> domain name is confusingly similar to Complainant’s CLUB QUARTERS mark under the Policy. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Jason DeLorenzo” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <clubquartersdc.com> website, which is addressed by the at-issue domain name domain name, prominently displays Complainant’s CLUB QUARTERS mark as well as a picture that looks substantially similar to the picture of Complainant’s Washington, D.C. hotel. The picture is reminiscent of the one displayed on Complainant’s own website. Respondent’s website also displays the physical address of Complainant’s Washington, D.C. hotel as its “Contact Information.” Therefore, it is evident that Respondent is intent on passing himself off as Complainant. Respondent’s use of the at-issue domain name domain name in this manner is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶¶ 4(c)(iii). See, e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s <clubquartersdc.com> website targets Internet users seeking services under Complainant’s CLUB QUARTERS mark and diverts such users to Respondent’s website. Adding to the confusion created by the trademark containing domain name, the <clubquartersdc.com> website prominently displays Complainant’s CLUB QUARTERS mark as well as a picture that looks substantially similar to the picture of Complainant’s Washington, D.C. hotel displayed on Complainant’s own website. To make matters worse users seeking to book the hotel may be redirected to the website of one of Complainant’s competitors, HotelsCombined. Respondent is clearly intent on capitalizing on those Internet users seeking Complainant and thereby disrupts Complainant’s business. Respondent’s disruptive scheme to divert Internet users to Complainant’s competition demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Because of Respondent’s efforts to confound Internet user into believing Respondent’s at-issue website is sponsored or endorsed by Complainant when it is not, the domain name and addressed website misdirect Internet users to booking services offered by one of Complainant’s competitors. Respondent undoubtedly intends to profit from referral fees paid by the competitor or its agent. Respondent’s use of the domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (finding that the respondent demonstrated bad faith under Policy ¶ 4(b)(iv) when it used a confusingly similar disputed domain name to operate a website that featured links to the complainant’s competitors, reasoning that the respondent was likely commercially profiting from the disputed domain name in the form of referral fees); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that the respondent engaged in bad faith registration and use of the disputed domain name where the domain name fully appropriated complainant’s mark, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information.)
Finally, Respondent had actual knowledge of Complainant’s rights in the CLUB QUARTERS trademark before registering the at-issue domain name. Respondent’s prior knowledge is evident from: 1) the notoriety of Complainant’s CLUB QUARTERS mark, 2) the juxtaposition of the mark and geographic tag “dc,” an identifier for the Washington, D.C. location of Complainant’s CLUB QUARTERS HOTEL, in the domain name, 3) Respondent’s display of a photograph of the CLUB QUARTERS HOTEL and physical address of that hotel on Respondent’s website, 4) the fact that the <clubquartersdc.com> website displays Complainant’s CLUB QUARTERS trademark and from 5) the fact that Respondent’s website contains links to one of Complainant’s competitors. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the at-issue domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubquartersdc.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 2, 2013
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