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Generic Top Level Domain Name (gTLD) Decisions |
U.S. Franchise Systems, Inc. v. Albert
Jackson
Claim
Number: FA0306000162769
Complainant is U.S. Franchise Systems, Inc., Atlanta,
GA (“Complainant”) represented by Susan
M. Daly, of Greenberg Traurig LLP. Respondent is Albert Jackson, George Town, Grand Cayman (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <microtelmotels.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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 (the "Forum")
electronically on June 13, 2003; the Forum
received a hard copy of the
Complaint on June 13, 2003.
On
June 13, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <microtelmotels.com> is
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the name. Iholdings.Com,
Inc. d/b/a
Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com,
Inc. d/b/a Dotregistrar.Com 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
June 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 8, 2003 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@microtelmotels.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 11, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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. Respondent’s <microtelmotels.com>
domain name is confusingly similar to Complainant’s MICROTEL mark.
2. Respondent does not have any rights or
legitimate interests in the <microtelmotels.com> domain name.
3. Respondent registered and used the <microtelmotels.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
guest lodging franchising company formed in 1995. Complainant is the nation’s ninth (9th) largest hotel
company in terms of number of rooms.
Complainant owns the MICROTEL mark, which is registered with the U.S.
Patent and Trademark Office (Reg. No. 1,670,688 – registered
December 31,
1991). Complainant has applied and/or
obtained trademark registrations for the MICROTEL mark in Israel, Mexico, and
Puerto Rico.
In addition, the
Complainant holds registrations of the following domain names that incorporate
the MICROTEL mark: <microtel-inns.biz>,
<microtelinn.com>,
<microtelsuites.com>, <microtelinn.net>, <microtelinns.net>,
<microtelsuites.net>,
<microtel-inns.com>,
<microtel-suites.com>, <microtel-inn.biz>, <microtelinn.biz>,
<microtelinns.biz>,
<microtelsuites.biz>,
<microtel-innsandsuites.biz>, <microtel-innsandsuites.com>,
<microtelinnsandsuites.biz>,
and <microtelinnsandsuites.com>. The domain names were registered between
April 15, 2002 and October 14, 2002.
Respondent
registered the <microtelmotels.com> domain name on April 21,
2003. The disputed domain name is
linked to an untitled search engine located at the
<landing.domainsponsor.com> URL, which provides
links to various
commercial websites.
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.
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 has
established rights in the MICROTEL mark through registration with the U.S.
Patent and Trademark Office, other recognized
registration authorities, and
through use in commerce.
Respondent’s <microtelmotels.com>
domain name is confusingly similar to Complainant’s MICROTEL mark because the
disputed domain name fully incorporates Complainant’s
mark and adds the
descriptive word “motels.” It is likely
that Internet users that access Respondent’s disputed domain name mistakenly
associate it with Complainant because the
<microtelmotels.com>
domain name fully incorporates the MICROTEL mark and adds the term “motels,”
which is a word that is closely associated to the products
and services
Complainant provides. Respondent’s
disputed domain name cannot circumvent Complainant’s rights in the MICROTEL
mark nor avoid the confusing similarity element
of Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670,
(Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to Respondent’s
failure to respond to the allegations in the Complaint, the Panel presumes that
Respondent lacks rights or legitimate
interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names).
Furthermore,
Respondent is not affiliated with Complainant and the record fails to establish
that Respondent is authorized or licensed
to register or use domain names or
marks that incorporate the MICROTEL mark.
In addition, the WHOIS information for the disputed domain name lists
Respondent, Albert Jackson, as the registrant; however, it fails
to establish
Respondent as an “individual, business, or other organization” commonly known
by the <microtelmotels.com> domain name. Therefore, Respondent does not have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG
v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question); see also Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly
known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply).
The Panel
presumes that Respondent incorporated the MICROTEL mark into the disputed
domain name with the intent to commercially benefit
from the goodwill
associated with Complainant’s mark.
Also, the Panel presumes that Respondent has attempted to commercially
benefit from the disputed domain name by receiving “kick-backs”
from website
vendors who receive visitors via Respondent’s <microtelmotels.com>
domain name. Respondent’s opportunistic
use of the goodwill associated with Complainant’s mark is neither a bona fide
offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It can be
inferred that Respondent knew of or should have known about Complainant’s
MICROTEL mark because the mark was registered
with the U.S. Patent and
Trademark Office, registered with other recognized authorities, used in
commerce, and was fully incorporated
into Respondent’s domain name along with
the word “motels,” which is a word commonly associated with Complainant. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to Policy
¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status
that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof”); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”).
Furthermore,
Respondent registered the disputed domain name and incorporated the MICROTEL
mark with the intent to commercially benefit
from the goodwill associated with
Complainant’s mark. The Panel presumes
that Respondent attempted to commercially benefit from the disputed domain name
by receiving “kick-backs” from
website vendors who received visitors via Respondent’s
<microtelmotels.com> domain name. Respondent’s opportunistic use
of the goodwill associated with Complainant’s mark constitutes bad faith
pursuant to
Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when
the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent
is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”).
The Panel 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 <microtelmotels.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
July 17, 2003
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