Choice Hotels
International, Inc. v. Michele Dinoia a/k/a SZK.com
Claim Number:
FA0406000282792
PARTIES
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by N. Christopher Norton, of Arent Fox, PLLC, 1050 Connecticut
Avenue N.W., Washington, DC 20036-5339.
Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), represented by
Valerio Donnini, 188, Via P. Gobetti
65121, Pescara PE, Italy.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <choicehotel.com> and <quality-inn.com>, registered
with Tuonome.it and Onlinenic, Inc., respectively.
PANEL
The undersigned certifies that he
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum (the “Forum”) electronically on June 3, 2004;
the Forum received a hard copy of the Complaint on June 7, 2004.
On June 7, 2004, Onlinenic, Inc.
confirmed by e-mail to the Forum that the domain name <quality-inn.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of
the name. Tuonome.it and Onlinenic,
Inc. have both verified that Respondent is bound by the Onlinenic, Inc. and
Tuonome.it registration agreements and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 18, 2004, Tuonome.it
confirmed by e-mail to the Forum that the domain name <choicehotel.com> is registered with Tuonome.it and that
Respondent is the current registrant of the name.
On June 18, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 8, 2004 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to
postmaster@choicehotel.com and postmaster@quality-inn.com by e-mail.
A timely Response was received and
determined to be complete on July 7, 2004.
A timely Additional Submission was received from
Complainant and determined to be complete on July 8, 2004.
On July 14,
2004, pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed Jacques A. Léger
Q.C. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant is a lodging franchiser
with nearly 5,000 hotels in forty-four countries and territories throughout the
world operating under the CHOICE HOTEL and CHOICE HOTELS trademarks and approximately 900 of these
are QUALITY and QUALITY INN hotels.
Complainant owns and uses the domain
names <choicehotels.com>, <choice-hotels.com>,
<hotelchoice.com>, <qualityinn.com> and <qualityinns.com> to
advertise its hotel services and to facilitate its online reservation services.
As the disputed domain names consist
entirely of Complainant’s registered marks, the domain names are confusingly
similar.
Complainant
has registered marks in both Canada and US previously used for hotel, motel and
restaurant services.
Respondent
is redirecting unsuspecting consumers to a third-party search engine which does
not constitute a bona fide offering
of goods or services, nor a legitimate noncommercial or fair use.
Respondent
has registered and is using the disputed domain names in bad faith. As
Complainant’s marks are registered and used throughout the world, and as Respondent’s
websites include references to Complainant’s own website and hotels, Respondent
obviously had prior actual knowledge of Complainant’s marks.
Respondent
has a history of registering domain names featuring famous marks in bad faith.
B.
Respondent
The
Complainant’s marks are based on common descriptive terms, to demonstrate
common law trademark rights Complainant would have to provide evidence that the
terms acquired secondary meaning.
The
individual terms of the Complainant’s asserted marks are at best descriptive,
and hence can not be protected without proof of acquired distinctiveness or
secondary meaning.
Ownership
of the mark does not ipso facto give
Complainant the exclusive right to the descriptive names CHOICE HOTEL or
QUALITY INN in all contexts related to hotel trade.
It is
not acceptable that a Complainant claims to have exclusive rights in a highly
generic and descriptive word.
It is
only where a domain name has been shown by appropriate evidence to acquire
distinctiveness as a trademark that it may be protected under the Policy.
Rights
and Legitimate Interests
Respondent’s business is to register numerous generic
names and to resell or to use them for web sites.
The use of the domain names as a search engine is a bona fide use that gives rise to rights
and legitimate interests.
Respondent has registered the domain names without
intent for commercial gain to tarnish the trademarks or to misleadingly divert
consumers.
The domain names are comprised of generic terms that
are legitimately open for registration as domain names on a first come, first
served basis.
Respondent has rights and legitimate interests in
domain names where Complainant submitted insufficient evidence to establish
either fame or strong secondary meaning in the mark such that consumers are
likely to associate.
There is no evidence that the consumers seeing the
Complainant’s site would be more likely to believe that there is any connection
between the Complainant and the Respondent.
Bad Faith
There is no evidence that the Respondent, living in
Italy, was aware of Complainant's registration in USA at the time the
Respondent registered the domain names.
The Complainant has not provided any evidence of facts
which might indicate that the Respondent knew or should have known of
Complainant’s trademark interests or even that Respondent was aware of
Complainant’s existence when it registered the domain names.
It would appear unlikely that the Respondent, an
Italian citizen, living and having a place of business in Italy, was aware that
the US organization had some registered trademarks or common law marks in what
would appear to be generic terms.
Both domain names derive from the combination of
ordinary English words, which, by their nature, are descriptive of services
which involve providing services about hotel trade.
The Respondent and his client cannot be considered as
competitors of the Complainant, because they are small companies operating in a
different country, so that the Respondent’s registration would not disrupt the
business of a competitor.
C.
Complainant’s Additional Submissions
The Complainant owns registrations for the mark CHOICE
HOTEL in ninety-one countries and the Benelux countries, for the mark CHOICE
HOTELS in eight countries and the European community, for the mark QUALITY in
fifteen countries and the Benelux countries, and for the mark QUALITY INN in
thirty-five countries and the Benelux countries.
Common law trademarks are not at
issue when Complainant owns registrations for its marks.
It is well established that
incontestable registrations may not be challenged on the grounds that the marks
are descriptive.
In Respondent’s home country of
Italy, Complainant has twelve franchised properties operating under the marks,
including six QUALITY and QUALITY INN hotels.
Rights
and Legitimate Interests
The Respondent is not licensed or
authorized to use Complainant’s marks and is not named or commonly known as
CHOICE HOTEL or QUALITY INN.
The letter attached to the Response
makes no mention of the terms of the agreement that purportedly caused
Respondent to register the domain names and does not mention any fee for
Respondent’s services. The Letter is also unsigned. Even more importantly, as
of the date the Complaint was filed, almost three years after the request was
allegedly made and the domain names were registered, Respondent had still not
used the domain names on behalf of the third party. It is clear that Respondent
fabricated the letter for the purpose of these UDRP proceedings.
Respondent’s use of the disputed
domain name to attract and redirect Internet traffic to a commercial website
completely unrelated to Complainant is not a bona fide offering of goods or services.
Generic marks are not entitled to
registration, and registered marks hold the presumption that they are
inherently distinctive and have acquired secondary meaning.
Respondent falsely asserts that
Complainant owns registrations only in United States. In fact, Complainant owns
trademark registrations for its marks, and franchises hotels under the marks,
in countries all over the world, including Italy.
Based on the prior registrations and
the fame of Complainant’s marks, it is clear that Respondent had actual or
constructive knowledge of Complainant’s rights. This knowledge is further
demonstrated by the appearance of Complainant’s marks on Respondent’s websites
located at the domain names at issue.
Respondent has a well-established
history of bad-faith use and registration of domain names incorporating famous
marks.
DISCUSSION &
FINDINGS
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2)
the 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.
It is self rebuttable for a descriptive word not to be
registrable as a trademark; according to basis of the trademark laws, once
registered, a mark, albeit descriptive benefits from a presumption that it is
distinctive or has acquired secondary meaning. The proof to the contrary lies
with the challenger.
Complainant claims to own the service marks CHOICE HOTEL
(Canadian Reg. No. TMA 398,488) and QUALITY INN (U.S. Reg. No. 1,183,294). Specifically, Complainant alleged that its
service marks are used in connection with hotel, motel, and restaurant
services. The Canadian governmental
authority lists Complainant’s first use of the CHOICE HOTEL mark as being June
7, 1990. Likewise, the United States
Patent and Trademark Office lists Complainant’s first use of the QUALITY INN
mark as being August 31, 1972. The
Panel finds that Complainant’s registrations of the aforementioned service
marks with appropriate governmental authorities is prima facie sufficient, under the Policy, to confer rights in the
marks to Complainant. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) wherein it was found that the Panel have held
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is distinctive and the Respondent has the burden of refuting this
assumption. In the present case, Respondent
has failed to discharge its burden to do so. The Panel also
finds that Complainant’s registration of the service marks CHOICE HOTEL (U.S.
Reg. No. 2,717,062 and TMA398,488) and QUALITY INN (U.S. Reg. No. 1,183,294) with appropriate governmental authorities
is sufficient under the Policy to confer rights in the marks aforesaid to
Complainant.
Furthermore, the Panel finds that the disputed domain names <choicehotel.com> and <quality-inn.com> are identical
to Complainant’s corresponding CHOICE HOTEL and QUALITY INN marks because the
domain names “consist entirely of Complainant’s registered marks.” Complaint
at 4. Generally, the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusing similarity
for purposes of the Policy. See
Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001); see
also Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2000), see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO
Jan. 29, 2001)).
Moreover,
the Panel finds that even though the disputed domain name <quality-inn.com>
contains a hyphen
separating the words “quality” and “inn,” such an addition fails to alleviate
the indistinguishable character between the disputed domain name and
Complainant’s QUALITY INN service mark.
Hyphens have been historically deemed irrelevant under the Policy in
analyzing the similarity between domain names and marks. See
Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
The
Panel also finds that deletion of the spaces between the words in the marks
does not significantly distinguish the domain names from the marks because the
use of spaces is not acceptable in registered domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2002).
Lastly,
the Panel finds that the disputed domain names are identical to Complainant’s
corresponding service marks because the addition of the generic top-level
domain “.com” is irrelevant under the Policy in analyzing the similarity
between domain names and marks. See Daedong-USA, Inc., Kioti Tractor Div. v. O’Bryan Implement Sales,
FA 210302 (Nat. Arb. Forum Dec. 29, 2003) wherein Respondent's domain name, <kioti.com>, was identical to
Complainant's KIOTI mark because adding a top-level domain name is irrelevant
for purposes of Policy ¶ 4(a)(i).
Therefore, the Panel finds that Complainant has satisfied
its burden under the section 4(a)(i) of the Policy.
In providing its
Additional Submission, the Complainant has improved its initial Complaint,
which arguably, might have been deficient as a Complainant may not solely rely
on the benefit of legal presumption derived from trademark registrations.
This being said, the Complainant has
contended that Respondent is using the disputed domain names to redirect
Internet users to a search engine for commercial gain, and has cited Alcoa Inc. v. Dinoia for the proposition
that using a domain name, which is identical or confusingly similar to a
complainant’s mark, to redirect unsuspecting consumers to a third-party search
engine does not constitute 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), the Panel so
finds. See Alcoa Inc. v. Dinoia, FA 227654 (Nat. Arb. Forum Mar. 3, 2004); see
also Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003).
Furthermore,
Complainant has argued that Respondent is not commonly known by the disputed
domain names <choicehotel.com> and
<quality-inn.com> pursuant to
Policy ¶ 4(c)(ii) because Respondent’s name is neither CHOICE HOTEL nor QUALITY
INN.
The
Panel finds that Respondent is not commonly known by either of the preceding
domain names as the WHOIS information fails to imply the same and, in fact,
suggests that Respondent is either known as “Michele Dinoia” or more probably
“SZK.com.” See Am.
West Airlines, Inc. v. Paik,
FA 206396 (Nat. Arb. Forum Dec. 22, 2003) wherein it was found that since Respondent listed its name as being “Ilyoup Paik a/k/a David
Sanders” in the WHOIS domain name registration information, Respondent was not
commonly known by the domain name <awvacations.com>; see also WV
Educ. Broad. Authority v. Thompson, FA 196011 (Nat. Arb. Forum Oct. 27, 2003)
wherein it was found
that the WHOIS information failed to establish that Respondent was commonly
known by the <wvpbs.org> domain name and did not evidence rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).
The Panel also finds that Respondent
lacks rights and legitimate interests in the disputed domain names because
Respondent has registered domain names that incorporate Complainant’s
registered service marks without the requisite legal authorization to do
so. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) wherein it was held that unauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services”; see also Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb. 18, 2000) where it was found that Respondent lacked
rights and legitimate interests in the domain name because Respondent was not
authorized by Complainant to use its trademarks and the mark was distinct in
its nature, such that one would not legitimately choose it unless seeking to
create an impression of an association with Complainant.
Complainant asserts that Respondent is
using the disputed domain names to direct Internet users to websites that
“include references to Complainant’s own website and hotels.” Complaint
at 4. Complainant infers from this
fact that “Respondent obviously had prior actual knowledge of Complainant’s
marks [prior to registering the domain names].” It is quite
difficult to actually prove bad faith, and yet good faith is to be presumed.
However, the Panel finds
that Respondent registered and used the disputed domain names in bad faith if
Respondent willfully registered the names despite its knowledge of
Complainant’s rights in the CHOICE HOTEL and QUALITY INN marks, which can be
inferred from reading Respondent website.
See Alcoa Inc. v. Dinoia,
FA 227654 (Nat. Arb. Forum Mar. 3, 2004); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) wherein it was found that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name.”
Additionally, Complainant argues that
Respondent has demonstrated a pattern of conduct involving bad faith
registration of domain names that contain well-known marks of third
parties. In fact, Complainant points
the Panel to the following cases where Respondent in the instant case was
ordered to transfer disputed domain names to various complainants: Alcoa Inc. v. Dinoia, FA 227654 (Nat.
Arb. Forum Mar. 3, 2004), Carlson Cos.,
Inc. v. Szk.com, FA 161568 (Nat. Arb. Forum July 23, 2003), Circuit City Stores, Inc. v. Dinoia, FA
128792 (Nat. Arb. Forum Dec. 12, 2002); and Anheuser-Busch,
Inc. v. Dinoia, FA 114465 (Nat. Arb. Forum July 15, 2002). As the result of the foregoing, the Panel
concludes that Respondent registered and used the disputed domain names <choicehotel.com> and <quality-inn.com> in bad faith
pursuant to Policy ¶ 4(b)(ii), provided that the Panel finds Respondent
registered the names to prevent Complainant from reflecting its service marks
in corresponding domain names. See Sony
Kabushiki v. Anderson,
FA 198809 (Nat. Arb. Forum Nov. 20, 2003) wherein it was found a pattern of registering domain names in bad faith pursuant to
Policy ¶ 4(b)(ii) when Respondent previously registered domain names incorporating
well-known third party trademarks.
The Panel also concludes that
Respondent is profiting from the use of the disputed domain names by
intentionally attempting to attract Internet users to its website by creating a
likelihood of confusion with Complainant’s mark, and thus, it also finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) wherein it was
found that Respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain
name to attract Internet users to its commercial website; see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) wherein it was stated that bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent.
DECISION
Having established all three
elements required under the ICANN Policy, the Panel conclude that relief shall
be GRANTED.
Accordingly, it
is Ordered that the <choicehotel.com>
and <quality-inn.com>
domain names be TRANSFERRED from
Respondent to Complainant by Tuonome.it and
Onlinenic, Inc, respectively.
Jacques A. Léger
Q.C., Panelist
Dated: July 28, 2004
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