Corporate Lodging Consultants, Inc. v.
David Woods
Claim Number: FA0508000529489
PARTIES
Complainant
is Corporate Lodging Consultants Inc. (“Complainant”),
represented by Michael J. Norton, of Foulston Siefkin LLP, 1551 N. Waterfront Parkway, Wichita, Kansas
67206. Respondent is David Woods (“Respondent”), represented
by Cynthia S. Connolly, of Scott, Douglass & McConnico,
L.L.P., 600 Congress Avenue, Austin, Texas
78701.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <corporatelodging.com>
(the “Domain Name”) registered with Innerwise,
Inc. d/b/a ItsYourDomain.com (the “Registrar”).
PANEL
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.
David
H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration
Forum electronically on August 2, 2005; the National Arbitration Forum received
a hard copy of the Complaint on August 8, 2005.
On
August 4, 2005, the Registrar confirmed by e-mail to the National Arbitration
Forum that the Domain Name is registered with the Registrar and that the
Respondent is the current registrant of the Domain Name. The Registrar has verified that Respondent
is bound by the Registrar registration agreement 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
August 12, 2005, the National Arbitration Forum issued a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”) setting a deadline of September 1, 2005 by which Respondent
could file a Response to the Complaint.
The Commencement Notification 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@corporatelodging.com
by e-mail.
On
August 22, 2005, the Respondent requested and was granted an extension of the
Response deadline until September 16, 2005.
A
timely Response was received and determined to be complete on September 15,
2005.
On September 26, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David H. Bernstein as Panelist.
RELIEF SOUGHT
Complainant
requests that the Domain Name be transferred from Respondent to Complainant.
Respondent
requests that the Panel find that the Complainant has engaged in Reverse Domain
Name Hijacking.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
asserts that it is the owner of the trademark “Corporate Lodging Consultants,”
used in “association with lodging management services.” Complainant claims to have used the mark
continuously in commerce since 1977, that it has spent millions of dollars in
sales and marketing support of the Corporate Lodging Consultants business, and
that, “through its extensive use, Complainant and its mark has become famous
throughout North America.” Complainant
reports that, according to a 2003 market valuation report, the Corporate
Lodging Consultants trade name is worth $130,000.
Complainant
asserts that the Domain Name, <corporatelodging.com>, is identical
to the dominant portion of its trademark, “Corporate Lodging Consultants.”
Complainant
argues that Respondent has no rights or legitimate interest in the Domain
Name. It says that Respondent is not making
any legitimate use of the Domain Name and that Respondent has no evidence of
“demonstrable preparations” towards such use.
Complainant also calls into question the validity of Respondent’s legal
title to the domain name, stating that Respondent “is believed to have
illegally acquired the domain in his personal name” as a result of the
bankruptcy of the domain name’s previous owners.
Complainant
contends that Respondent is acting in bad faith by passively holding the Domain
Name and attempting to sell it for a profit.
B. Respondent
Respondent
states that it acquired the Domain Name from Corporate Lodging International,
Inc. (“CLII”) as a result of a judicially-ordered auction in 2004.
Respondent
contends that the Complainant does not have trademark rights in the phrase
“corporate lodging” because that phrase is generic for services related to
corporate lodging. Alternatively,
Respondent argues that, even if the mark is found not to be generic, Respondent
has prior rights in the mark because its predecessor, CLII, used the mark prior
to Complainant. In particular,
Respondent alleges that CLII operated a website for several years in connection
with providing corporate lodging services.
After
acquiring the domain name, Respondent took CLII’s website down to “retool” the
website’s offerings. He asserts that,
prior to receiving notice of the dispute, he took several steps to relaunch the
site, including the hiring of an investment advisor and a website designer.
Respondent
challenges Complainant’s allegations of bad faith. Respondent states: “there is absolutely no evidence that the
subject domain name was registered or acquired primarily for the purpose of
selling it to Complainant.” Moreover,
he emphasizes that it was Complainant, not Respondent, who initiated sales
discussions.
FINDINGS
The panel finds that Complainant has failed to meet the
threshold requirement of establishing trademark rights in the phrase “Corporate
Lodging.” In the absence of any such
trademark rights, Complainant cannot possibly prevail in this proceeding, and
thus the Panel need not consider whether Respondent lacks rights or a
legitimate interest in the Domain Name, and whether Respondent registered and
used the Domain Name in bad faith.
The panel also finds that Complainant brought this
Complaint in bad faith. Given
Complainant’s lack of any trademark rights, as evidenced by the difficulty it
has faced in registering its purported mark in the U.S. Patent and Trademark
Office, the filing of this Complaint appears to have been a bad faith attempt
to hijack the Domain Name from Respondent.
DISCUSSION
To prevail in this UDRP proceeding, Complainant must
prove each of the following elements listed in Paragraph 4(a) of the Policy:
(1)
the Domain
Name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the Domain Name;
and
(3)
the
Respondent registered and has used the Domain Name in bad faith.
In this case, Complainant has failed to
establish the first, threshold element– that the Domain Name, <corporatelodging.com>,
is identical or confusingly similar to a mark in which it has rights.
Complainant does not claim trademark
rights in the phrase “Corporate Lodging.”
That likely is because Complainant recognizes that “Corporate Lodging”
is generic for services related to lodging for corporate travelers. See Pet Warehouse v. Pets.Com, Inc.,
D2000-0105 (WIPO Apr. 14, 2000); Rodale, Inc. v. Cambridge, WIPO Case
No, DBIZ2002-00153 (WIPO June 28, 2002).
Indeed, according to Respondent, it was for this reason that the U.S.
Patent and Trademark Office (“USPTO”) rejected CLII’s application to register
the mark “Corporate Lodging.”
Instead, Complainant claims common law
rights in the mark “Corporate Lodging Consultants.” Complainant did try to register that mark in the USPTO, but that
application was abandoned. Complainant
has not provided any information about the reason for that abandonment; it may
well have been because the USPTO refused to register that mark on the ground
that it also is generic.
Even if that name were descriptive,
rather than generic, and even if Complainant could establish secondary meaning
in that name, it remains the case that ownership of the mark would not give
rise to trademark rights in a generic portion of the mark. See Capt’n Snooze Mgm’t Pty Ltd. v.
Domains 4 Sale, D2000-0488 (WIPO July 10, 2000).
Because Complainant has failed to show
trademark rights in the words Corporate Lodging, either alone or as a
protectable part of the name Corporate Lodging Consultants, Complainant cannot
establish the first factor of Policy ¶ 4(a): that the Domain Name is identical
or confusingly similar to a mark in which Complainant has rights.
Having determined that the Complaint must
therefore be denied, the Panel must next consider Respondent’s request for a
finding of Reverse Domain Name Hijacking.
Reverse domain name hijacking (“RDNH”) is
defined under Rule 1 as “using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.” See Goldline Int’l, Inc. v. Goldline, D2000-1151 (WIPO
Jan. 4, 2001). In general, in order to
establish an entitlement to a finding of RDNH, Respondent must show that
Complainant knew that it had no trademark rights in the mark at issue, that the
domain name at issue could not possibly be seen as identical or confusingly
similar to Complainant’s mark, or “that Complainant knew of Respondent’s
unassailable right or legitimate interest in the disputed domain name or the
clear lack of bad faith registration and use, and nevertheless brought the
Complaint in bad faith.” Id.
In this case, the weakness of
Complainant’s allegation of trademark rights leads the Panel to conclude that
the Complaint was brought in bad faith.
Complainant should have known that it could not possibly have rights to
a phrase as generic as “corporate lodging.”
See Rodale, Inc. v. Cambridge, DBIZ2002-00153 (WIPO June 28,
2002).
Influencing the Panel’s decision is that
the remainder of Complainant’s Complaint is equally weak. Complainant’s challenge to Respondent’s
ownership of the Domain Name is based on conjecture and speculation, but is
supported with no facts. Similarly, the
allegations that Respondent registered the Domain Name for the purpose of
selling it to Complainant is unsupported.
In fact, the quotes Complainant included from the parties’ email
exchange were taken out of context, and fail to make clear that it was
Complainant who repeatedly contacted Respondent in an effort to purchase the
Domain Name despite Respondent’s reluctance to sell.
DECISION
Because Complainant has failed to prove
trademark rights in the phrase “Corporate Lodging,” the Panel DENIES the
Complaint. In addition, the Panel finds
that the Complaint was brought in bad faith and therefore grants Respondent’s
request for a finding of Reverse Domain Name Hijacking against Complainant.
David H. Bernstein, Panelist
Dated: October 10, 2005
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