Choice Hotels International, Inc. v. jodi cotta
Claim Number: FA0901001241450
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Halle
B. Markus, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <choicehotelsonline.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2009.
On January 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <choicehotelsonline.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 2009 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@choicehotelsonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant operates hotel services under its CHOICE HOTELS mark.
Complainant has registered its CHOICE HOTELS service mark with multiple governmental authorities, including Reg. No. 2,717,062, registered May 20, 2003, with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed domain name on October 19, 2004.
The <choicehotelsonline.com> domain name resolves to a website offering to sell the disputed domain name for $5,000.00.
Respondent’s <choicehotelsonline.com> domain name is confusingly similar to Complainant’s CHOICE HOTELS mark.
Respondent does not have any rights or legitimate interests in the domain name <choicehotelsonline.com>.
Respondent registered and uses the <choicehotelsonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of the registration of its
CHOICE HOTELS service mark with the USPTO.
This registration is sufficient to confer upon Complainant rights in the
mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also
Respondent’s <choicehotelsonline.com>
domain name employs Complainant’s entire mark, with but the deletion of a space
and the additions of the generic term “online” and the generic top-level domain
“.com.” These alterations are
inconsequential. Accordingly, the disputed domain name is confusingly similar
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum
Apr. 23, 2001) (finding that the <broadcomonline.com> domain name is
confusingly similar to a complainant’s BROADCOM mark); see also Bond &
Co. Jewelers, Inc. v.
The Panel therefore finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its allegations, at which point the burden shifts to Respondent to prove that it possesses rights to or legitimate interests in the disputed domain name. Respondent’s failure to respond to the allegations of the Complaint permits us to presume that it has no such rights or interests. See 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).
See also Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed domain
name.”
We are satisfied from the record before us that Complainant has adequately established a prima facie case. While we are entitled from Respondent’s default to presume that Respondent has no rights or interests cognizable under the Policy, we will examine the record to determine whether there is any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain under the standards enunciated in Policy ¶ 4(c).
We begin by noting that Respondent is listed in the pertinent WHOIS information as “jodi cotta,” and there is no evidence in the record to indicate that Respondent is commonly known by the <choicehotelsonline.com> domain name. Therefore, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s assertion to the effect that Respondent’s domain name resolves to a website that states that the contested domain is for sale for $5,000.00. We may conclude from this that Respondent has failed to make an active use of the disputed domain name, and thus is not employing the domain to make 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). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):
The
Panel finds that the [failure to make an active use] of a domain name that is
identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See also Thermo Electron Corp. v. Xu, FA 713851 (Nat.
Arb. Forum July 12, 2006) (finding that a respondent’s failure to make an
active use of disputed domain names demonstrates that that respondent is not
using the domains for a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)).
We further note in this connection
that Respondent’s offer to sell the disputed domain name for a price well
beyond its likely costs of acquisition demonstrates in the circumstances Respondent’s
lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell a contested
domain name for more than its out-of-pocket costs provided additional evidence
that that respondent had no rights to or legitimate interests in the domain); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s
conduct in attempting to sell a disputed domain name suggests that it has no
legitimate use for the domain).
The Panel thus finds Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent’s domain name
resolves to a website that offers the domain name for sale for a price of $5,000.00. This conduct amounts to bad faith
registration and use of the domain pursuant to Policy ¶ 4(b)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003):
Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).
See also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding that a respondent’s offer to sell a domain name for $2,000 constituted sufficient evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(i)).
Further, we conclude that in the circumstances here presented, Respondent’s failure to make active use of the disputed domain name is additional evidence of its bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of a disputed domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
For these reasons, the Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <choicehotelsonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2009
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