National Arbitration Forum

 

DECISION

 

Asset Data Corporation v. Name Administration Inc. (BVI)

Claim Number: FA0605000699525

 

PARTIES

Complainant is Asset Data Corporation (“Complainant”), represented by Arlana S. Cohen, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799.  Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cheaphotels.net>, registered with Domain Name Sales Corp.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Steven L. Schwartz, Panel Chair

Jeffery M. Samuels, Panelist

David E. Sorkin, Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 3, 2006.

 

On May 2, 2006, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <cheaphotels.net> domain name is registered with Domain Name Sales Corp. and that the Respondent is the current registrant of the name.  Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 May 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 2006 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@cheaphotels.net by e-mail.

A timely Response was received and determined to be complete on May 30, 2006.

 

On June 2, 2006, an Additional Submission was received from Complainant in compliance with Supplemental Rule 7.  On June 5, 2006, an Additional Submission was received from Respondent in compliance with Supplemental Rule 7. 

 

On June 16, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffery M. Samuels,

David E. Sorkin as Panelists, and Steven L. Schwartz, Panel Chair.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

1.         Complainant states that it has been engaged in the business of providing travel services through the internet since 1997, providing customers with, among other things, hotel booking services at bargains unavailable elsewhere and has become one of the leading discount travel sites.

2.         In May 2005, Complainant obtained a USPTO registration (No. 2,945,899) for its mark “CHEAPHOTEL.COM” covering travel agency services including making reservations and bookings for temporary lodging.  The registration claims a first use date of 1997.  Complainant has owned the domain name <cheaphotel.com> since 1997, and subsequently registered <cheaphotel.net> as well.  Complainant claims both prior use and registration of the “CHEAPHOTEL.COM” with respect to the disputed domain.

3.         Complainant contends that Respondent’s domain name <cheaphotels.net> is identical or confusingly similar to Complainant’s registered mark and to its domain names and that Respondent’s domain is distinguished from <cheaphotel.net> by the addition of the letter “s.”

4.         Complainant contends, on information and belief, that Respondent has no legitimate trademark or service mark or other rights in the disputed domain; does not engage in any business or commerce and is not known under the disputed domain name.  Complainant states that Respondent has no relationship with it, is not a licensee, and has never been authorized to use the mark or to register the disputed domain.

5.         Complainant states that Respondent is not using the domain name in connection with any bona fide offering of goods and services, but resolves to a website that contains links to competing businesses.

6.         Complainant also states that Respondent’s registration and use is in bad faith because Respondent is presumed to have knowledge of its mark at the time of the domain name registration, and because of the manner in which its website is used to resolve to a website that contains links to competing businesses; and that because the domain name contains the key operative part of its mark to provide competing services, it is likely to confuse and deceive Internet users.

 

 

B. Respondent

1.         Respondent states that Complainant did not exist in 1997 and was not formed until 2002, as evidenced by the record of the New York Department of State showing formation of Asset Data Corp. in August 2002.  Therefore, it could not have been engaged in the business of providing travel services through the Internet since 1997.

2.         Furthermore, Respondent claims that since briefly using a “splash page” to provide a specimen of use to show the USPTO at the time of its registration application, Complainant has not used its claimed mark as a trade or service mark.  The Complainant’s domain name <cheaphotel.com> forwards visitors to a third-party travel site, <Hotwire.com>, so that the Complainant obtains a commission on traffic forwarded to that site.  Consequently, the claim of distinctiveness acquired as of June 10, 2004 does not predate the domain registration; and the claim of substantially exclusive and continuous use of the mark for at least five years is unsupported by facts and gives no common law right in the mark.

3.         Respondent registered the disputed domain name June 10, 2001, in accordance with the Whois record for the domain name, and Respondent has been using the descriptive term “Cheap Hotels” in order to provide paid referral advertising to hotel booking services.  Respondent is the senior user of the term here at issue in the disputed domain.

4.         Respondent states that it has legitimate interests in the domain as it engaged in a legitimate business, to wit: its web page at <cheaphotels.net> is configured to return “pay per click” advertisements responsive to the search term “Cheap Hotel.”  Such use of a descriptive term in connection with a domain name to return relevant sponsored search results is a long-established as a legitimate use of a domain name.

5.         Complainant’s mark is descriptive only and has not acquired distinctiveness or secondary meaning.

6.         Since the domain name was registered by Respondent in June 2001, it could not have been motivated by a bad faith intent arising from Complainant’s trademark because the application was filed in August 2003, and registration of the mark was issued in May 2005; and because Complainant did not exist until August of 2002.  Further, Respondent did not have actual or constructive knowledge of the registration of the mark given the chronology of these events.

 

C. Additional Submissions

Complainant

1.                  Respondent has admitted that the domain name in dispute is identical or confusingly similar by reason of not arguing to the contrary.

2.                  Complainant properly relied upon its predecessor’s use in statements to the Trademark Office in applying for registration of the mark.  Complainant succeeds to all the rights and priorities of the assignor, including the right to rely on the assignor’s priority date.

3.                  Complainant’s specimen of use submitted to the Trademark Office properly shows use of the mark in connection with its services.

 

 

 

Respondent

1.                  Complainant has offered no evidence of an assignment from a predecessor in interest and has not identified its predecessor; rather it has stated as a matter of fact that Complainant engaged in the business of providing travel services through the Internet since 1997, thereby making its allegation concerning driving rights from a predecessor untrue.

2.                  Complainant has shown no use of the mark as a trade or service mark prior to its August 2003 trademark registration application.

3.                  Internet Archive records of what was presented on the website at <cheaphotel.com> prior to Complainant’s existence and up to the August 2003 trademark application filing shows no use of “CHEAPHOTEL.COM” anywhere as a trade or service mark in connection with a web page display including a mechanism by which a consumer may order the claimed goods and services offered by Complainant.

4.                  The domain name <cheaphotel.com> was used from 1998 to 2003 to advertise the “Rockaway Beach Hotel,” and the “CHEAPHOTEL.COM” appears nowhere thereon as a trade or service mark.

5.                  Complainant’s manufacture of a “splash page” for the purpose of filing its trademark application; its claim during prosecution of its trademark application that such use had been made for five years as of June 2004; together with claiming that such use had been made by a “predecessor in interest” is a sham.

6.                  Complainant does not itself provide travel services but forwards to <Hotwire.com> under an affiliate advertising program.

7.                  Complainant has not demonstrated distinctiveness through longstanding and exclusive use.

 

FINDINGS

1.                  Respondent’s registration of the disputed domain name predates Complainant’s declaration and trademark registration.

2.                  Complainant has rights in the mark “CHEAPHOTEL.COM” based upon its U.S. registration. 

3.                  The mark and the domain name are confusingly similar.

4.                  There is no evidence of a predecessor in interest other than Complainant’s allegation to that effect.

5.                  Respondent has rights or legitimate interests in the domain name.

6.                  In the absence of evidence that Complainant’s mark had acquired distinctiveness at the time Respondent registered the disputed domain name, there is no basis to conclude that Respondent registered and is using the domain name in bad faith.

 

DISCUSSION

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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has sufficiently demonstrated rights in the mark “CHEAPHOTEL.COM” pursuant to its U.S. registration obtained in May 2005.  Since the mark’s registration does not have to predate registration of the domain name, Complainant does have rights in the mark.

 

Complainant asserts that Respondent’s <cheaphotels.net> domain name is confusingly similar to Complainant’s CHEAPHOTEL.COM mark, as the disputed domain name adds the letter “s” to Complainant’s CHEAPHOTEL.COM mark, and replaces the generic top-level domain “.com” with the generic top-level domain “.net.”  In Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel held that a top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.  In Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001), the panel found that the addition of the letter “s” in the <nationalgeographics.com> domain name did not negate the confusing similarity between the disputed domain name and the complainant’s NATIONAL GEOGRAPHIC mark.  Thus, in the present case, the Panel finds that the alterations to Complainant’s CHEAPHOTEL.COM mark inherent in the disputed domain name render the <cheaphotels.net> domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent states in its Response that it registered the <cheaphotels.net> domain name for the purpose of providing paid referral advertising to hotel booking services.  In Fluke Corp. v. Name Admin. Inc. (BVI), FA 430650 (Nat. Arb. Forum Apr. 26, 2005), the panel found that the respondent’s business of registering domain names that had a generic meaning and connecting the websites at the domain names to other websites that dealt with the generic word’s goods and services constituted a legitimate right or interest for the respondent, provided that the domain names “have a clear generic meaning and it does not appear the Respondent had the Complainant’s trademark in mind.”  See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding that the respondent had a legitimate interest in the <groceryoutlet.com> domain name because the respondent was using the domain name for a website that linked to online resources for groceries, and the domain name described the content of the site).  The Panel finds that Respondent registered the <cheaphotels.net> domain name as part of its paid referral advertising business, that the disputed domain name is descriptive and is being used “fairly” and was registered without regard to Complainant’s CHEAPHOTEL.COM mark, there being no evidence that the mark had achieved distinctiveness or that Respondent had knowledge of the mark at the time it registered the domain.  The Panel concludes that Respondent has engaged in a bona fide offering of goods or services pursuant Policy ¶ 4(c)(i), or noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

 

 

Registration and Use in Bad Faith

 

Respondent contends that it registered the <cheaphotels.net> domain name in June 2001. The evidence shows that at the time of domain name’s registration, the mark had not acquired secondary meaning.  Consequently, Respondent likely did not know of the mark’s existence.  No evidence of any intent on the part of Respondent to disrupt Complainant’s business has been offered by Complainant.  Therefore, the Panel concludes that Respondent did not register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”). 

 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and the complaint be dismissed.

 

 

 

 

Steven L. Schwartz, Panel Chair

Jeffery M. Samuels, Panelist

David E. Sorkin, Panelist

Dated: July 10, 2006