Choice Hotels International, Inc. v. Tomek Prentki / Gate4Travel B.V.
Claim Number: FA1710001753780
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, Washington D.C., USA. Respondent is Tomek Prentki / Gate4Travel B.V. (“Respondent”), represented by Paul R.W. Richter, Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choicehotels.deals>, registered with Name.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.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2017; the Forum received payment on October 13, 2017.
On October 16, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <choicehotels.deals> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 October 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2017 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.deals. Also on October 17, 2017, 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 November 3, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on November 8, 2017.
Respondent’s Additional Submission was received and determined to be compliant with the Rules on November 13, 2017.
On November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant is one of the world’s largest lodging franchisors, with over 6,500 hotels in over 35 countries and territories throughout the world.
2. Since at least as early as 1990, Complainant and its predecessors in interest have continuously offered hotel services in the United States under the CHOICE HOTELS mark.
3. Complainant has submitted registration evidence that it has registered the CHOICE HOTELS word mark all over the world, from Algeria to Zanzibar, including within the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,717,062, registered May 20, 2003 for hotel and motel services in Class 42 and providing a first use date of November 1, 1990);
4. Complainant has also established common law rights in its CHOICE HOTELS mark.
5. Complainant has invested substantial sums of money in developing and marketing its CHOICE HOTELS mark, which has been and continues to be widely publicized through advertising throughout the United States and around the world.
6. Complainant owns and uses the domain name <choicehotels.com> which it registered February 23, 1996 and through its website accessed through that its domain name prominently displays the CHOICE HOTELS mark to (i) direct Internet users to Complainant’s official websites; (ii) advertise its hotel services and deals; (iii) advertise and facilitate its online hotel-reservation services;(iv) and promote its hotel-franchising services.
7. Respondent’s <choicehotels.deals> domain name (the “Disputed Domain Name”) is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark with the inconsequential removal of a space and the addition of the generic top level domain (“gTLD”) “deals.”
8. Respondent registered the Disputed Domain Name on August 28, 2017.
9. Respondent has no rights or legitimate interests in the <choicehotels.deals> domain name.
10. Respondent is not commonly known by the Disputed Domain Name;
11. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <choicehotels.deals> domain name.
12. The Disputed Domain Name misleadingly redirects Internet users to Complainant’s website.
13. Respondent has been using the <choicehotels.deals> domain to contract business on behalf of Respondent for financial gain.
14. Respondent is using the Disputed Domain Name in connection with its website to pass itself off as Complainant while conducting business with third parties.
15. Respondent has registered and is using the <choicehotels.deals> domain name in bad faith.
B. Respondent makes the following contentions:
1. Respondent’s <choicehotels.deals> domain name is not confusingly similar to Complainant’s mark as it is in no way affiliated with Complainant and even posts a disclaimer on the resolving webpage to denounce any affiliation.
2. Respondent does have rights and legitimate interests in the <choicehotels.deals> domain name.
3. Respondent makes a bona fide offering of good or services and it uses the domain name to provide price comparison for users to obtain the best possible price for their hotel booking plans.
4. Respondent does earn a small fee, however it is only after a user books a Choice Hotel room.
5. Respondent does not compete with Complainant, because its website is only used for comparison purposes.
6. Respondent clearly does not attempt to pass off as Complainant, as the resolving websites for the <choicehotels.deals> and Complainant’s <choicehotels.com> domain names are strikingly different.
7. Respondent did not register and use the <choicehotels.deals> domain name in bad faith.
8. Complainant simply makes unsupported allegations of bad faith, which is not sufficient for a finding of bad faith conduct on the part of Respondent.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. Respondent admits the Disputed Domain Name is similar to Complainant’s CHOICE HOTELS mark.
2. Merely adding a new TLD to the CHOICE HOTELS trademark is insufficient in distinguishing it from the Disputed Domain Name.
3. Respondent’s disclaimer assertion is spurious. The disclaimer was added only after Complainant filed its complaint and is inconspicuous and ineffective.
4. Respondent’s claim that Complainant should have contacted Respondent before filing the Complaint is disingenuous and not required under the Policy.
5. Respondent’s claim that it’s site is only for comparison purposes is fraudulent and unavailing to overcome its advertised deals for third-party hotel properties that are competitive with those owned by Complainant and/or redirected visitors to third-party hotel sites that permitted visitors to book third-party hotel rooms.
6. Respondent’s admission it earns a fee when sites are booked shows it is using the Complainant’s CHOICE HOTELS mark to profit from the confusion generated by the Disputed Domain Name and by redirecting consumers to third-party booking sites.
D. Respondent’s Additional Submission – A Reply to Complainant’s Additional Submission
1. Complainant must meet all three elements of the Policy as they are conjunctive.
2. Although it cannot be denied that the addition of the gTLD alone does not avoid likelihood of confusion, other facts and circumstances must be considered, which facts and circumstances will show that www.choiceshotels.deals is not identical to and/or confusingly similar to www.choicehotels.com.
3. Respondent’s website does not use Complainant’s marks or logos except for comparisons and a disclaimer has been added to avoid confusion.
4. The disclaimer was added after the Complaint was filed but 2 days before Respondent received the Complaint.
5. Complainant did not reach out to Respondent because there was no cybersquatting.
6. www.choicehotels.deals is not identical to and/or confusingly similar to www.choicehotels.com.
7. Respondent is developing a price comparison tool and “it expects to launch this tool in January 2018 so that there will be no more redirection of any kind.”
8. Respondent is not making any extensive deals or making any profit.
9. While Respondent does not have to prove good faith the facts and circumstances along with the disclaimer prove good faith.
Since at least as early as 1990, Complainant has used the CHOICE HOTELS word mark, and has established rights in and registered the CHOICE HOTELS word mark all over the world, from Algeria to Zanzibar, including with the United USPTO (e.g., Reg. No. 2,717,062, registered May 20, 2003 for hotel and motel services in Class 42 and providing a first use date of November 1, 1990).
Complainant’s CHOICE HOTELS mark is well known and widely advertised in the United States and other countries around the world. Complainant had made extensive use of the CHOICE HOTELS mark on the Internet prior to Respondent’s registration and use of the Disputed Domain Name. Complainant’s marks were registered in the U.S and many other countries well before Respondent registered its domain name on August 28, 2017.
Respondent’s Disputed Domain Name <choicehotels.deals> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with merely the removal of a space and the addition of the generic top level domain (“gTLD”) “.deals.”
Respondent’s WHOIS information identifies Respondent as registrant of the Disputed Domain Name.
Respondent is not commonly known by Complainant’s CHOICE HOTELS mark, nor is Respondent authorized by Complainant to use Complainant’s mark.
Respondent is not affiliated with Complainant.
Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <choicehotels.deals> domain name.
Respondent is using the disputed domain in connection with its website to pass itself off as Complainant while conducting business with third parties.
Respondent had actual knowledge of Complainant’s mark when it registered the Disputed Domain Name.
The Disputed Domain Name has been registered and is being used 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.
Complainant claims it registered the CHOICE HOTELS mark with the USPTO (e.g. Reg. No. 2,717,062, registered May 20, 2003) as shown in the certificate of registration in Annex A to its Complaint. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds here that Complainant has established rights in the CHOICE HOTELS mark.
Complainant also argues that Respondent’s Disputed Domain Name <choicehotels.deals> is identical or confusingly similar to Complainant’s CHOICE HOTELS mark as the domain name includes Complainant’s registered mark in its entirety and differs only through the addition of the TLD “.deals.” Other panels have found that adding a TLD may be disregarded under the Policy as TLD suffixes are required in order to register domain names. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum, July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Sears Holdings Corporation v David Rahmany / Dme / N Rahmany, FA 1618201(Forum June 8, 2015) (“As a general rule, the addition of a gTLD to a domain name does not adequately distinguish the domain name from the mark at issue. The addition of the ‘.services,’ ‘.systems,’ and‘.technology’ gTLDs are the only distinguishing factors between the disputed domain names and the KMART, SEARS, and KENMORE marks. Therefore each of the domain names are identical to the marks under Policy ¶4(a)(i).”); 3M Company v. Giovanni Laporta / Yoyo.Email, Case No. FA1585346 (Forum Nov. 26, 2014) (“The domain names are identical to the trademarks because tagging on the ‘.email’ TLD is not relevant.”); MySQL AB v. Giovanni Laporta / Yoyo.Email, FA1595391 (Forum Jan. 26, 2015) (“The <mysql.email> domain name is confusingly similar to [c]omplainant’s MYSQL mark because Respondent has simply added the top-level domain (‘gTLD’) ‘.email’ to the mark.”); Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Forum Dec. 6, 2003) (addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy). This Panel agrees with the foregoing decisions that removal of a space between the two terms comprising Complainant’s registered Choice Hotels mark and the addition of the gTLD “.deals” adds no value or weight to distinguish it from Complainant’s fully incorporated mark in <choicehotels.deals>. Complainant has established that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has trademark rights and, therefore, met its burden under Policy ¶ 4(a)(i).
The Panel recognizes and is mindful that 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 (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 (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 contends that Respondent has no rights or legitimate interests in the <choicehotels.deals> domain name. Relevant information to this determination includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). Complainant has submitted competent evidence in its Complaint Annex that the WHOIS identifies “Tomek Prentki / Gate4Travel B.V.” as the registrant/registrant organization. Complainant asserts that no evidence exists to show that Respondent has ever been authorized to use Complainant’s CHOICE HOTELS mark. Panels may use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the Disputed Domain Name prior to its registration, and Complainant has not given Respondent permission to use the Disputed Domain Name. Nothing submitted by Respondent in its Response or Respondent’s additional submission (“Respondent’s Additional Submission”) refutes or contradicts Complainant’s evidence and assertions. The Panel finds that Respondent is not commonly known by the Disputed Domain Name based on the WHOIS evidence submitted and considers Complainant’s assertions of no affiliation with Respondent or authorization by Complainant to use its mark supportive in reaching the Panel’s determination of these issues under Policy ¶ 4(a)(ii).
Complainant next argues that Respondent doesn’t use the Disputed Domain Name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant and offer competing services for its own commercial gain. Passing off and offering competing goods or services can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Previous panels have also concluded that using a third party’s trademark to attract and redirect Internet traffic to a web site that promotes competitive services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Wyndham IP Corporation v. J.C. Smith, FA221148 (Forum Feb. 10, 2004) (respondent’s use of the domain name <wyndan.com> for a travel-related search engine website was not a use in connection with a bona fide offering of goods or service under Policy 4(c)(i), or a legitimate noncommercial or fair use under Policy 4(c)(iii)); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of [r]espondent and for [r]espondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under ICANN Policy ¶ 4(c)(iii).”). Complainant’s Annex to the Complaint provides a screenshot of Respondent’s resolving webpage, which shows that Respondent offers travel booking services, including hotel and motel bookings for third-party competitors of Complainant. The Panel finds Respondent’s evidence in its Response and in Respondent’s Additional Submission insufficient and its arguments unpersuasive based on the cases cited above. In contrast, the Panel finds Complainant’s evidence sufficient to support its contentions, and finds, therefore, that Respondent has not made a bona fide offering of goods or services nor does Respondent’s use constitute any legitimate noncommercial or fair use. Complainant has met its burden under Policy ¶ 4(a)(ii).
Complainant contends that Respondent uses the domain name to attract, for commercial, gain users to its website by creating a likelihood of confusion with Complainant’s mark, and creates this confusion to offer hotel-reservation services competitive with those offered by Complainant. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”).
As shown in Complainant’s timely filed additional submission (“Complainant’s Additional Submission”), Respondent admits in Paragraph 12 of its Response to earning a fee when hotel rooms are booked through its website at the Disputed Domain Name. Several screenshots provided in the Annex to the Complainant’s Additional Submission shows Respondent’s resolving webpage accessed through the Disputed Domain Name incorporating Complainant’s mark both at the time of the Complaint and Complainant’s the Additional Submission. The evidence submitted supports Complainant’s claim that Respondent’s webpage creates a likelihood of confusion for unsuspecting consumers arriving at the site to search for hotel services, including competitors of Complainant. Accordingly, it is evident that Respondent is using the Complainant’s CHOICE HOTELS mark to profit from the confusion generated by the Disputed Domain Name and by redirecting consumers to third-party booking sites that also offer bookings at competitive hotel properties. These third-party booking sites are competitive with Complainant’s own booking services, as shown in the evidence submitted by Complainant. The Panel finds, as did the panel in the Xylem decision above, that Respondent is using the Disputed Domain Name in bad faith to trade upon the goodwill of Complainant for commercial gain, in violation of Policy ¶ 4(a)(iii).
Respondent in its Response and again in Respondent’s Additional Submission attempts to refute Complainant’s contentions of bad faith by showing a disclaimer in non-conspicuous text amid numerous other text elements of its website located at the very bottom (below the fold) on its “About” page and in an equally inconspicuous manner among its terms and conditions page. In addition, Complainant has shown and Respondent has admitted that this disclaimer was not added to the site accessed through the Disputed Domain Name, until after Complainant filed its Complaint on October 13, 2017. Respondent, however does allege it added the disclaimer on October 15, 2017, two days before it received the Complaint and this proceeding commenced on October 17, 2017, but notably provides no evidence to support its allegation of the date the disclaimer was added. After weighing the evidentiary materials submitted by Complainant and Respondent, the Panel finds Respondent’s evidence in its Response and in Respondent’s Additional Submission insufficient and its arguments unpersuasive based on the cases cited above. In contrast, the Panel finds Complainant’s evidence sufficient to support its contentions.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s CHOICE HOTELS mark when Respondent registered the Disputed Domain Name. This Panel agrees with other panelists that it may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith solely 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."). The Panel may consider, however, Complainant contention of actual knowledge, and reasonably infer that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the Disputed Domain Name and find actual knowledge which does adequately evince bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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).While the fact that Respondent registered the Disputed Domain Name after Complainant registered its mark for CHOICE HOTELS may not alone support a finding of bad faith based on constructive notice, given that Respondent registered the Disputed Domain Name at least 14 years after Complainant registered its CHOICE HOTELS mark in the US, as well as numerous countries internationally, operating over 6500 hotels around the world, making it well-known mark, the Panel finds sufficient evidence to agree with Complainant and find that Respondent did have actual knowledge of Complainant’s well-known mark when it registered the Disputed Domain Name, which would further support bad faith. The Panel finds Complainant has met the requirements of Policy ¶ 4(a)(iii).
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.deals> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: November 19, 2017
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