Choice Hotels International, Inc. v. DONALD GRAVES / WEBHOMY! / UDRP proceeding UDRP proceeding / UDRP COMPLIANCE / UDRP PENDING RENEWAL
Claim Number: FA1511001647720
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA. Respondent is DONALD GRAVES / WEBHOMY! / UDRP proceeding UDRP proceeding / UDRP COMPLIANCE / UDRP PENDING RENEWAL (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <choicehotelsin.com>, and <choicehotelsin.net>, registered with eNom, Inc.; and <choicehotels.pw>, registered with NameCheap, 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2015; the Forum received payment on November 18, 2015.
On November 19, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <choicehotelsin.com> and <choicehotelsin.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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”).
Panel Note (Respondent naming issue): In correspondence marked “Correspondence – Registrar,” dated December 8, 2015, eNom, Inc. disputes the case name displaying its information as a Respondent in this proceeding. The reason eNom, Inc.’s information is displayed, as contended in December 7, 2015 correspondence, is because the <choicehotelsin.net> domain was renewed by Complainant and subsequently placed on hold, with the WHOIS updated to reflect the renewal, pending the outcome of this dispute. Further, eNom, Inc. argues that the only reason its information is showing is due to compliance with the UDRP and RAA regarding renewal of domains during a dispute. In addition, Complainant agrees with eNom, Inc. that eNom, Inc. provided a mere ministerial function in renewing the domains for Complainant, and that the most recent owner of the <choicehotelsin.com> and <choicehotelsin.net> domain names was Respondent, “DONALD GRAVES.” Further, “DONALD GRAVES” is argued by Complainant as having offered for sale the <choicehotelsin.net> domain to Complainant. Therefore, the Panel accepts eNom, Inc.’s argument and decides not to issue a decision with respect to eNom, Inc. See, e.g., Substance Abuse Mgmt., Inc. v. Screen Actors Modesl Int'l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (finding that domain name registration renewals are a mere “ministerial function” performed by Registrars, and that a renewal is not the same as a registration for purposes of the Policy).
On November 20, 2015 NameCheap, Inc. confirmed by e-mail to the Forum that the <choicehotels.pw> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2015 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@choicehotels.pw, postmaster@choicehotelsin.com, postmaster@choicehotelsin.net. Also on December 7, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the CHOICE HOTELS mark, pursuant to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,717,062, registered May 20, 2003). Respondent’s <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names are confusingly similar as they incorporate the CHOICE HOTELS mark entirely, while eliminating the space between words of the mark, add the letters “in,” and append the generic top-level domains (“gTLDs”) “.com” or “.net,” or the country-code top-level domain (“ccTLD”) “.pw” (for “Palau”).
ii) Respondent has no rights or legitimate interests in the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names. There is no information which would support a finding of Policy ¶ 4(c)(ii) in Respondent’s favor. Further, Respondent has offered the domains for sale, and has directed Internet users to third-party websites which compete with Complainant through the use of pay-per-click hyperlinks (links include, “Choice Hotels Privileges,” “Conference Center Hotels,” and “Las Vegas Hotels”). Such use evinces no bona fide offering of goods or services or any legitimate noncommercial or fair use which would support a finding of rights under either Policy ¶¶ 4(c)(i) or (iii).
iii) Respondent has registered and used the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names in bad faith. First, Respondent has offered to sell the disputed domain name in excess of out-of-pocket costs, conduct proscribed by Policy ¶ 4(b)(i). Respondent also has attracted Internet users, for commercial gain to its websites, and through the use of click-through links, Respondent presumably profits. Such use indicates bad faith under Policy ¶ 4(b)(iv). Last, Respondent registered and used the disputed domain names with actual and/or constructive knowledge of the CHOICE HOTELS mark and Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domains were registered on October 15, September 1, and October 4, 2013, respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 asserts rights in the CHOICE HOTELS mark, pursuant to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,717,062, registered May 20, 2003). Panels have agreed that such showings are adequate in determining rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, this Panel agrees that Complainant has demonstrated sufficient evidence to support a finding of rights in the CHOICE HOTELS mark under Policy ¶ 4(a)(i).
The second inquiry under Policy ¶ 4(a)(i) the Panel must make is whether Respondent’s <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names are confusingly similar. Complainant argues as they incorporate the CHOICE HOTELS mark entirely, while eliminating the space between words of the mark, add the letters “in,” and append the gTLDs “.com” or “.net,” or the ccTLD “.pw” (for “Palau”). Past panels have found such alterations insignificant in distinguishing a mark for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Therefore, this Panel agrees that Respondent’s <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names are confusingly similar to the CHOICE HOTELS mark per Policy ¶ 4(a)(i).
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.”).
Respondent has no rights or legitimate interests in the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names. There is no information which would support a finding of Policy ¶ 4(c)(ii) in Respondent’s favor. While Respondent has left a void in the available record which might substantiate any rights or interests under any ¶ 4(c) element, the Panel declines to award rights under Policy ¶ 4(c)(ii) as the only evidence which might support a finding under this prong is the WHOIS, which merely lists, “DONALD GRAVES / WEBHOMY! / UDRP proceeding UDRP proceeding / UDRP COMPLIANCE / UDRP PENDING RENEWAL” as registrant of record. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant asserts Respondent has offered the domains for sale, and has directed Internet users to third-party websites which compete with Complainant through the use of pay-per-click hyperlinks (links include, “Choice Hotels Privileges,” “Conference Center Hotels,” and “Las Vegas Hotels”). Such use has been seen by past panels to evince no bona fide offering of goods or services or any legitimate noncommercial or fair use which would support a finding of rights under either Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). In light of Respondent’s use of the disputed domain names, the Panel agrees that there has been no use which would justify a finding of rights or legitimate interests.
Complainant contends that Respondent has registered and used the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names in bad faith. First, Complainant urges Respondent has offered to sell the disputed domain name in excess of out-of-pocket costs, conduct proscribed by Policy ¶ 4(b)(i). Panels have seen general offers for sale as an indication of a respondent’s bad faith. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). This Panel therefore finds Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Complainant also argues that Respondent has attracted Internet users, for commercial gain to its websites, and through the use of click-through links, Respondent presumably profits. Such use has been seen to constitute bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, this Panel agrees that Respondent registered and used the disputed domain names in bad faith pursuant to the language of paragraph 4(b)(iv) of the Policy.
Complainant also contends that in light of the fame and notoriety of Complainant's CHOICE HOTELS mark, it is inconceivable that Respondent could have registered the <choicehotels.pw>, <choicehotelsin.com> and <choicehotelsin.net> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, this Panel infers from the fame of Complainant's mark and use manner of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed 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 <choicehotels.pw>, <choicehotelsin.com>, and <choicehotelsin.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 8, 2016
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