Shoney's North America, LLC v. NAMECHEAP.COM NAMECHEAP.COM
Claim Number: FA1410001583021
Complainant is Shoney's North America, LLC (“Complainant”), represented by Mark S. VanderBroek of Nelson Mullins Riley & Scarborough, LLP, Georgia, USA. Respondent is NAMECHEAP.COM NAMECHEAP.COM (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoneysinn.com>, registered with ENOM, INC..
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2014; the National Arbitration Forum received payment on October 2, 2014.
On October 3, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <shoneysinn.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2014 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@shoneysinn.com. Also on October 3, 2014, 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.
On October 10, 2014, the Forum received correspondence from Respondent which was not a formal Response to the Complaint. Having received no proper Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant uses the SHONEY’S INN mark to indicate its motel services. The SHONEY’S INN mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,705,676, registered Aug. 4, 1992). The <shoneysinn.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in this domain name. Respondent has never been commonly known as this domain name. Respondent until recently used the domain name to host unrelated advertisements in the form of click-through hyperlinks. However, after this dispute began, Respondent has caused the domain name to house no active website.
Respondent has registered and is using the domain name in bad faith. The WHOIS record contained a promotion that the domain name was up for sale to the general public. The use of competing ads on the disputed domain names resolving website illustrates an intent to profit from commercial disruption. The use of the domain name for a time to promote commercial hyperlinks also shows an interest by Respondent in capitalizing on the likelihood of confusion.
Respondent
The listed Respondent claims that it is not the true registrant of the domain names, that the registrant used the listed Respondent’s identity in the WHOIS and contact information, and that “Mike” from “FitnessSupps” based on Newfoundland, Canada, is the actual registrant.
The information received from ENOM, INC. establishes that Respondent is the registrant of the domain name and the proper Respondent in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant claims to use the SHONEY’S INN mark to indicate its motel services. The SHONEY’S INN mark has been registered with the USPTO (e.g., Reg. No. 1,705,676, registered Aug. 4, 1992). The Panel agrees that USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights in a trademark, regardless of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <shoneysinn.com> domain name is identical to its mark. The Panel agrees that removing the mark’s spacing and apostrophe is insufficient to distinguish the domain name from the mark, and as such the domain name is identical to the mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has never been commonly known by this domain name. Respondent does not appear to be commonly known by the domain name, and nothing in the record suggests Respondent has ever been commonly known by the name <shoneysinn.com>. 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).
Complainant claims that Respondent, until recently, used the domain name to host unrelated advertisements in the form of click-through hyperlinks. The domain name resolved to a website dedicated to promoting hyperlinks. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that the respondent could not be viewed as holding a bona fide offering or legitimate noncommercial or fair use when the domain name was used to house competing advertisements. The Panel agrees that using a domain name to promote the ads is not a bona fide offering or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that after this proceeding began Respondent caused the domain name to resolve to an inactive website. Past panels have found that making a domain name resolve to an inactive or disabled website does not avoid the finding that the respondent lacks Policy ¶ 4(a)(ii) rights in a domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant claims that the WHOIS record contained a promotion that the domain name was for sale to the general public. The Panel agrees that general offers to sell a domain name are suggestive of a Policy ¶ 4(b)(i) intent to sell the domain name in bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant claims that the use of competing ads on the disputed domain name’s resolving website illustrates an intent to profit from commercial disruption. Some of the advertisements read “RESIDENCE INN BY MARRIOTT” and other hotel-related services. The Panel finds the presence of such advertisements to amount to Policy ¶ 4(b)(iii) bad faith through competitive disruption. See, e.g., 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)).
Complainant further claims that the use of the domain name for a time to promote commercial hyperlinks also shows an interest by Respondent in capitalizing on the likelihood of confusion. This Panel agrees that the use of the domain name to promote advertising is a way for Respondent to profit from a Policy ¶ 4(b)(iv) bad faith likelihood of confusion. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <shoneysinn.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 5, 2014
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