Choice Hotels International, Inc. v. windermere
Claim Number: FA1012001364454
Complainant is Choice Hotels International, Inc. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington, D.C., USA. Respondent is windermere (“Respondent”), represented by Sharon Seth, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sleepinnseattle.com>, registered with WILD WEST DOMAINS, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2010; the National Arbitration Forum received payment on December 21, 2010.
On December 21, 2010, WILD WEST DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <sleepinnseattle.com> domain name is registered with WILD WEST DOMAINS, INC. and that Respondent is the current registrant of the name. WILD WEST DOMAINS, INC. has verified that Respondent is bound by the WILD WEST DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sleepinnseattle.com. Also on December 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
The Forum granted Respondent an extension until February 7, 2011 to submit its response.
A timely Response was received and determined to be complete on February 7, 2011.
An Additional Submission from Complainant was timely received on February 11, 2011.
An Additional Submission from Respondent was timely received on February 16, 2011.
On February 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
[1] Respondent’s domain name <sleepinnseattle.com> is confusingly similar to Complainant’s SLEEP INN registered mark.
[2] Respondent does not have any rights or legitimate interests in this domain name.
[3] The domain name was registered and is being used in bad faith. Specifically, Internet users seeking to book hotel reservations at one of Complainant’s SLEEP INN properties are instead diverted to a Web page with Respondent’s competing “Bed and Breakfast Inn Seattle” establishment. Complainant also alleges that Respondent Shannon Seth has provided false WHOIS information in identifying herself as “windermere”. Additionally, Complainant notes that Respondent failed to respond to its cease and desist letter.
B. Respondent’s Contentions
[1] Respondent contends that the domain name <sleepinnseattle.com> is not confusingly similar to the registered mark, since the registered mark disclaims the exclusive right to the word INN apart from the mark as shown.
[2] Respondent further contends that it chose the domain name <sleepinnseattle.com> in part based upon an allusion to the film “Sleepless in Seattle.
[3] Respondent also contends that the domain name is intended to connote its Bed & Breakfast Inn Seattle and “sleeping in” Seattle.
[4] Respondent states that it did not respond to Complainant’s cease and desist letter because said letter cited only to a cancelled registration (formerly Reg. No. 1635084) for SLEEP INNS AMERICA & DESIGN and which was owned by S&R Enterprises, Inc.
C. Additional Submissions
In its Additional Submission, Complainant argues that the disclaimer is irrelevant here where the entire mark was appropriated in the domain name. The Additional Submission of Respondent primarily reiterates its previous arguments.
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."
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 is in the hotel business. Complainant owns a trademark registration for SLEEP INN, Reg. No. 1,690,604 and has used the SLEEP INN mark continuously since as early as October 1987. Complainant has over 350 hotels operating under the SLEEP INN mark.
The domain name <sleepinnseattle.com> is made up of a simple combination of Complainant’s trademark and the geographic location of Seattle.
The only difference between the domain name and Complainant’s SLEEP INN mark is the addition of the word “Seattle” and the generic top level domain identifier “.com”. Respondent does not argue that addition of the term “Seattle” to the mark prevents a finding of confusing similarity. See Choice Hotels Int’l, Inc. v. ResSystem.com,Inc., FA282797 (Nat. Arb. Forum July 23, 2004)(finding, in default of a response from Respondent, that the <sleep-inn-orlando-reservations.com> domain name was confusingly similar to SLEEP INN trademark registrations).
Respondent argues that the disclaimer of the word “INN” in Complainant’s registration precludes a finding of confusing similarity. However, the disclaimer is not relevant since it applies to only the word “INN”, whereas the entire registered mark SLEEP INN was appropriated as part of the domain name of Respondent. See Tea Party Patriots, Inc. v. J. Lyle, FA 1302969 (Nat. Arb. Forum March 12, 2010).
This Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s use of a domain name confusingly similar to Complainant’s mark to redirect Internet users to a commercial web site which offers Respondent’s competing services is not a legitimate non-commercial or fair use of the domain name. See Choice Hotels, Int’l., Inc., supra, finding no rights or legitimate interests in a domain name that diverted internet users to its competing hotel reservation services web sites.
Further, Respondent, which operates the Bed & Breakfast Inn Seattle, has offered no evidence that it is known as “Sleep Inn Seattle”. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)(finding that Respondent did not have rights to the domain name where Respondent was not known by the mark).
This Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
This Panel finds that since Complainant’s SLEEP INN registration is well known nationwide, it is extremely likely that Respondent, at the time it registered the domain name, knew this. Neither does Respondent deny having known of Complainant’s SLEEP INN brand at the time it registered its domain name.
While this Panel considers reasonable Respondent’s assertion that its <sleepinnseattle.com> domain name is an allusion to the film, “Sleepless in Seattle”, the Panel finds that Respondent has registered and has used its domain name primarily for the purpose of redirecting Internet traffic originally intended for Complainant to Respondent’s competing web site. See, e.g., Choice Hotels, supra, finding that Respondent had registered and used its <sleep-inn-orlando-reservations.com> domain name primarily for the purpose of redirecting internet traffic to its web site, which provided similar hotel reservation services. The Panel notes that Respondent’s web site uses the word “Inn” with two “n”s as in SLEEP INN, rather than the word “In” as used in the film “Sleepless in Seattle”.
Respondent concedes that the actual registrant of the mark is Sharon Seth, and not “windermere”. Use of false contact information constitutes further evidence of bad faith (see, e.g., Home Director, Inc. v. HomeDirector, Case No. D2000-0111 (WIPO, Apr. 11, 2000)).
Respondent’s lack of response to Complainant’s cease and desist letter does not provide further evidence of bad faith, since that letter erroneously cited a canceled registration, rather than the currently active registration upon which this proceeding is based. Nevertheless, the other points discussed above constitute sufficient evidence of bad faith use.
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sleepinnseattle.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 28, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page