Choice Hotels International, Inc. v. Forum LLC
Claim Number: FA0608000781431
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <choichotels.com>, <clarionhotle.com>, <clarionhotles.com>, <clarioninnandsuites.com>, <clarionmotel.com>, <clarionmotels.com>, <clarionsuite.com>, <clarion-suites.com>, <clarionsuits.com>, <comfortinnindianapolis.com>, <comfortsuitehotel.com>, <comfortsuitehotels.com>, <econolodg.com>, <econologde.com>, <mainstaysuite.com>, <qualityinnandsuite.com>, <qualitysuitessanclemente.com> and <rodewayhotel.com>, registered with Moniker Online Services, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2006.
On August 30, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <choichotels.com>, <clarionhotle.com>, <clarionhotles.com>, <clarioninnandsuites.com>, <clarionmotel.com>, <clarionmotels.com>, <clarionsuite.com>, <clarion-suites.com>, <clarionsuits.com>, <comfortinnindianapolis.com>, <comfortsuitehotel.com>, <comfortsuitehotels.com>, <econolodg.com>, <econologde.com>, <mainstaysuite.com>, <qualityinnandsuite.com>, <qualitysuitessanclemente.com> and <rodewayhotel.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 September 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 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@choichotels.com, postmaster@clarionhotle.com, postmaster@clarionhotles.com, postmaster@clarioninnandsuites.com, postmaster@clarionmotel.com, postmaster@clarionmotels.com, postmaster@clarionsuite.com, postmaster@clarion-suites.com, postmaster@clarionsuits.com, postmaster@comfortinnindianapolis.com, postmaster@comfortsuitehotel.com, postmaster@comfortsuitehotels.com, postmaster@econolodg.com, postmaster@econologde.com, postmaster@mainstaysuite.com, postmaster@qualityinnandsuite.com, postmaster@qualitysuitessanclemente.com and postmaster@rodewayhotel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <choichotels.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark, the <clarionhotle.com> and <clarionhotles.com> domain names are confusingly similar to Complainant’s CLARION HOTEL mark, the <clarioninnandsuites.com> is confusingly similar to Complainant’s CLARION INN mark, the <clarionmotel.com> and <clarionmotels.com> domain names are confusingly similar to Complainant’s CLARION mark, the <clarionsuite.com>, <clarion-suites.com> and <clarionsuits.com> domain names are confusingly similar to Complainant’s CLARION SUITES mark, the <comfortinnindianapolis.com> domain name is confusingly similar to Complainant’s COMFORT INN mark, the <comfortsuitehotel.com> and <comfortsuitehotels.com> domain names are confusingly similar to Complainant’s COMFORT SUITES mark, the <econolodg.com> and <econologde.com> are confusingly similar to Complainant’s ECONO LODGE mark, the <mainstaysuite.com> domain name is confusingly simlar to Complainant’s MAINSTAY SUITES mark, the <qualityinnandsuite.com> domain name is confusingly to Complainant’s QUALITY INN mark, the <qualitysuitessanclemente.com> domain name is confusingly similar to Complainant’s QUALITY SUITES mark, and the <rodewayhotel.com> domain name is confusingly similar to Complainant’s RODEWAY INN mark.
2. Respondent does not have any rights or legitimate interests in the <choichotels.com>, <clarionhotle.com>, <clarionhotles.com>, <clarioninnandsuites.com>, <clarionmotel.com>, <clarionmotels.com>, <clarionsuite.com>, <clarion-suites.com>, <clarionsuits.com>, <comfortinnindianapolis.com>, <comfortsuitehotel.com>, <comfortsuitehotels.com>, <econolodg.com>, <econologde.com>, <mainstaysuite.com>, <qualityinnandsuite.com>, <qualitysuitessanclemente.com> and <rodewayhotel.com> domain names.
3. Respondent registered and used the <choichotels.com>, <clarionhotle.com>, <clarionhotles.com>, <clarioninnandsuites.com>, <clarionmotel.com>, <clarionmotels.com>, <clarionsuite.com>, <clarion-suites.com>, <clarionsuits.com>, <comfortinnindianapolis.com>, <comfortsuitehotel.com>, <comfortsuitehotels.com>, <econolodg.com>, <econologde.com>, <mainstaysuite.com>, <qualityinnandsuite.com>, <qualitysuitessanclemente.com> and <rodewayhotel.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels International, Inc., operates over 5,200 hotels around the world under various marks, including CHOICE HOTELS, CLARION, CLARION HOTEL, CLARION INN, CLARION SUITES, COMFORT INN, COMFORT SUITES, ECONO LODGE, MAINSTAY SUITES, QUALITY INN, QUALITY INN AND SUITES, QUALITY SUITES and RODEWAY INN. Complainant’s main websites for these hotels are located at the <choicehotels.com>, <clarionhotel.com>, <clarioninn.com>, <clarionsuites.com>, <comfortinn.com>, <comfortsuites.com>, <econolodge.com>, <mainstaysuites.com>, <qualityinn.com> and <rodewayinn.com> domain names.
Complainant has registered the following marks with
the United States Patent and Trademark Office (“USPTO”): CHOICE HOTELS (Reg.
No. 2,717,062 issued May 20, 2003), CLARION (Reg. No. 1,799,824 issued October
19, 1993), CLARION HOTEL (Reg. No. 1,703,941 issued July 28, 1992), CLARION INN
(Reg. No. 1,710,603 issued August 25, 1992), CLARION SUITES (Reg. No. 2,008,016
issued October 15, 1996), COMFORT INN (Reg. No. 1,315,180 issued January 15,
1985; Reg. No. 1,448,467 issued July 21, 1987; Reg. No. 3,050,882 issued
January 24, 2006), COMFORT SUITES (Reg. No. 1,712,482 issued September 1,
1992), ECONO LODGE (Reg. No. 813,642 issued August 23, 1966; Reg. No. 2,178,518
issued August 4, 1998), MAINSTAY SUITES (Reg. No. 2,321,482 issued February 22,
2000), QUALITY INN (Reg. No. 1,183,294 issued December 22, 1981), QUALITY INN
AND SUITES (Reg. No. 2,414,198 issued December 19, 2000), QUALITY SUITES (Reg.
No. 2,732,875 issued July 1, 2003) and RODEWAY INN (Reg. No. 1,669,813 issued
December 24, 1991).
Respondent registered the contested domain names on the following dates:
<choichotels.com> on October 3, 2002, <clarionsuite.com> on
January 30, 2003,
<clarion-suites.com>, <clarioninnandsuites.com>, <comfortsuitehotels.com>,
<econologde.com> and <mainstaysuite.com> on February
4, 2003, <econolodg.com> on June 6, 2003, <rodewayhotel.com>
on June 14, 2003, <qualityinnandsuite.com> on February 4,
2004, <clarionmotel.com> and <clarionmotels.com> on
May 19, 2004,
<clarionsuits.com> on June 30, 2004, <clarionhotle.com> and <clarionhotles.com>
on July 12, 2004, <comfortsuitehotel.com> on August 25, 2004,
<comfortinnindianapolis.com>
on December 14, 2004, and <qualitysuitessanclemente.com>
on January 14, 2005.
Respondent’s domain names
resolve to either a commercial web directory displaying links to competing
hotel companies and unrelated content or a discount hotel reservations website.
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."
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.”).
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 holds numerous trademark registrations for marks relating to its hotels, including: CHOICE HOTELS, CLARION, CLARION HOTEL, CLARION INN, CLARION SUITES, COMFORT INN, COMFORT SUITES, ECONO LODGE, MAINSTAY SUITES, QUALITY INN and RODEWAY INN. The Panel finds these trademark registrations to sufficiently demonstrate Complainant’s rights in the marks at issue for purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
Each of Respondent’s domain names is confusingly similar to
a mark in which Complainant has demonstrated rights. The disputed domain names either misspell the
mark, add terms to the mark, or both. Previous panels have established that by
merely misspelling a mark or adding terms to a mark in a domain name, a
respondent does not sufficiently differentiate a domain name from a
complainant’s mark. See
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); see also Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the
domain name <hewlitpackard.com> to be identical or confusingly similar to
the complainant’s HEWLETT-PACKARD mark); see also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied). Therefore, the Panel finds
that Respondent’s various alterations and additions to Complainant’s marks are
not distinguishing differences and as a result, the disputed domain names are
confusingly similar to the marks under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has sufficiently satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Hanna-Barbera Productions, 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names, including the information in the WHOIS database. Accordingly, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
By redirecting Internet users seeking information on
Complainant’s hotels to other websites, including the websites of Complainant’s
competitors, Respondent is not using the disputed domain names in connection
with 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). In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb.
Forum Dec. 2, 2003), the panel found that the respondent had no rights or
legitimate interests in the <jawsoflife.com> domain name because the
respondent was diverting Internet users to the website of one of the
complainant’s competitors. In this case,
Respondent is diverting Internet users seeking
Complainant’s services to the websites of Complainant’s competitors in the
hotel industry. Respondent likely
receives click-through fees for diverting consumers to these websites. Therefore, Respondent does have rights or
legitimate interests in the disputed domain names under either Policy ¶
4(c)(i) or ¶ 4(c)(iii). See Expedia, Inc. v.
Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the
respondent’s use of the <expediate.com> domain name to redirect Internet
users to a website featuring links to travel services that competed with the
complainant was not 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 concludes that Complainant has sufficiently satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent has registered and is using
the disputed domain names for the primary purpose of disrupting Complainant’s
business, as the disputed domain names resolve to a competing hotel
reservations website or a commercial web directory with links to competing
hotel companies. In Marriott
Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6,
2005), the panel found that the respondent registered a domain name containing
the complainant’s MARRIOTT mark in bad faith under Policy ¶ 4(b)(iii) by using
it to attract attention to its own competing travel agency. Consequently, Respondent’s use of the
disputed domain names to redirect Internet users to services related to and
competing with Complainant indicates bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Puckett, Individually
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain names, which are
confusingly similar to Complainant’s marks, to attract Internet users to either
a web directory displaying links to third-party websites offering the products
of Complainant and its competitors or a competing hotel reservations website. The Panel infers that Respondent receives
click-through fees for diverting consumers to these websites. Therefore, Respondent is taking advantage of
the confusing similarity between Respondent’s domain names and Complainant’s
mark and profiting from the goodwill surrounding the mark. The Panel finds that such registration and
use to suggest bad faith according to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc.
v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002)
(“Complainants are in the music and entertainment business. The links associated with
<billboard.tv> and <boogie.tv> appear to be in competition for the
same Internet users, which Complainants are trying to attract with the
<billboard.com> web site. There is
clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as
to the source, sponsorship, affiliation, or endorsement of the web site or of a
product or service on the web site.”); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
Moreover, Respondent’s various misspellings of Complainant’s marks in the disputed domain names indicate that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant has sufficiently satisfied 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 <choichotels.com>, <clarionhotle.com>, <clarionhotles.com>, <clarioninnandsuites.com>, <clarionmotel.com>, <clarionmotels.com>, <clarionsuite.com>, <clarion-suites.com>, <clarionsuits.com>, <comfortinnindianapolis.com>, <comfortsuitehotel.com>, <comfortsuitehotels.com>, <econolodg.com>, <econologde.com>, <mainstaysuite.com>, <qualityinnandsuite.com>, <qualitysuitessanclemente.com> and <rodewayhotel.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 16, 2006
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