Choice Hotels International, Inc. v. Domain Admin c/o New World Solutions Ltd.
Claim Number: FA0609000791619
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus of Arent Fox PLLC, 1050 Connecticut
Avenue, NW, Washington, DC, 20036.
Respondent is Domain Admin c/o New World Solutions Ltd. (“Respondent”),
Suite 99 Local 11, Christamar Puerto Banus,
The domain name at issue is <clarionhotel.org>, registered with Dotster, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 7, 2006; the National Arbitration Forum received a hard copy of the Complaint September 7, 2006.
On September 7, 2006, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <clarionhotel.org> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. verified that Respondent is bound by the Dotster, Inc. registration agreement and thereby has 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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 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@clarionhotel.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <clarionhotel.org>, is identical to Complainant’s CLARION HOTEL mark.
2. Respondent has no rights to or legitimate interests in the <clarionhotel.org> domain name.
3. Respondent registered and used the <clarionhotel.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Choice Hotels
International, Inc., is one of the world’s largest lodging franchisors, with
over 5,200 hotels worldwide. Complainant
has used its CLARION HOTEL mark since at least January 1987 in connection with
its more than 200 CLARION HOTEL properties in twenty-five countries. Complainant holds trademark registrations for
the CLARION HOTEL mark in several countries, including with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,703,941 issued July 28,
1992), as well as with the Spanish Office of Patents and Marks (Reg. No.
1,652,430 issued August 8, 1991).
Respondent registered the <clarionhotel.org> domain name January 13, 2004. Respondent’s disputed domain name resolves to a website that displays a commercial search engine.
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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant’s registrations with the USPTO and Spanish trademark authority sufficiently establish Complainant’s rights in the CLARION HOTEL mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that the disputed domain name, <clarionhotel.org>, is identical to Complainant’s CLARION HOTEL mark pursuant to Policy ¶ 4(a)(i). The addition of the generic top-level domain (“gTLD”) “.org” to Complainant’s mark does not sufficiently differentiate Respondent’s domain name from Complainant’s mark. In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel found that the addition of a generic top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). The disputed domain name is thus identical to Complainant’s CLARION HOTEL mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent has no such rights or interests. Initially, Complainant must show that Respondent lacks rights or legitimate interests with respect to the disputed domain name. Once Complainant demonstrates this by a prima facie showing, the burden of proof shifts and Respondent must prove that it has rights or legitimate interests in the <clarionhotel.org> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s CLARION HOTEL mark and that Respondent is not associated with Complainant in any way. Additionally, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <clarionhotel.org> domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
the disputed domain name to operate a search engine, presumably for
Respondent’s commercial benefit. The
Panel finds that such use 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 Policy ¶ 4(c)(iii). See Trans Global
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. The Panel finds that Respondent is using the <clarionhotel.org> domain name for
its commercial benefit by taking advantage of the goodwill associated with
Complainant’s name and mark to host a search engine. Furthermore, Respondent’s disputed domain
name is capable of creating a likelihood of confusion as to the source and
affiliation with Complainant with the disputed domain name. The Panel thus finds bad faith registration
and use under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel finds that Complainant 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 <clarionhotel.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 18, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum