DECISION

Choice Hotels International, Inc. v. ResSystem.com, Inc. (a/k/a Finlaw Agency and ReservationSystem.com, Inc.)

Claim Number:  FA0406000282797

PARTIES

Complainant is Choice Hotels International, Inc. (“Complainant”), represented by N. Christopher Norton of Arent Fox, PLLC, 1050 Connecticut Avenue, N.W., Washington, DC 20036.  Respondent is ResSystem.com, Inc. (a/k/a Finlaw Agency and ReservationSystem.com, Inc.) (“Respondent”), 4508 Magnolia Drive, Panama City, FL 32408.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com>, registered with Bulkregister, Llc.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 3, 2004; the Forum received a hard copy of the Complaint on June 7, 2004.

On June 9, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain names <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> are registered with Bulkregister, Llc. and that Respondent is the current registrant of the names. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 30, 2004 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@qualitysuitesorlando.com, postmaster@sleep-inn-orlando-reservations.com, postmaster@clarionhotels-orlando.com, postmaster@econolodge-orlando.com, postmaster@comfortsuites-orlando-reservations.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 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> domain names are confusingly similar to Complainant’s QUALITY, QUALITY SUITES, SLEEP INN, CLARION, CLARION HOTEL, ECONO LODGE, and COMFORT SUITES marks.

2. Respondent does not have any rights or legitimate interests in the <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> domain names.

3. Respondent registered and used the <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Choice Hotels International, Inc., is in the hotel, motel, and restaurant services business.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the QUALITY (Reg. No. 1,050,372 issued October 12, 1976), QUALITY SUITES (Reg No. 1,699,581 issued July 7, 1992 and Reg. No. 2,732,875 issued July 1, 2003), SLEEP INN (Reg. No. 1,690,604 issued June 2, 1992 and Reg. No. 2,665,526 issued December 24, 2002), SLEEP INN INN & SUITES (Reg. No. 2,697,638 issued March 18, 2003), CLARION (Reg. No. 1,799,824 issued October 19, 1993 and Reg. No. 2,031,850 issued January 21, 1997), CLARION HOTEL (Reg. No. 1,703,941 issued July 28, 1992 and Reg. No. 2,333,128 issued March 21, 2000), ECONO LODGE (Reg. No. 2,178,518 issued August 4, 1998 and Reg. No. 1,799,814 issued October 19, 1993), and COMFORT SUITES (Reg. No. 1,712,482 issued September 1, 1992 and Reg. No. 2,665,525 issued December 24, 2002) marks.  Complainant has used these marks continuously and extensively in association with its hotel, motel, and restaurant business since at least as early as 1939 and as late as 2001. 

Complainant owns registrations for the <qualitysuite.com>, <qsuites.com>, <qsuites.net>, <qsuites.org>, <sleepinn.com>, <sleepinns.com>, <clarionhotel.com>, <econo-lodge.com>, <econolodge.com>, <comfortsuites.com>, <comfortsuite.com>, and other domain names.  Complainant uses these sites to advertise its hotel services and to provide hotel reservation services. 

Respondent registered the <qualitysuitesorlando.com> domain name on April 27, 2001 and the <sleep-inn-orlando-revervations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, and <comfortsuites-orlando-reservations.com> domain names on July 3, 2002.  Respondent is using the disputed domain names to offer hotel reservation services for Complainant’s hotels and for Complainant’s competitors. 

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established with extrinsic proof in this proceeding that it has rights in its marks through registration with the United States Patent and Trademark office and by continuous use of its marks in commerce since at least as early as 1939 and as late as 2001.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that 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.  Respondent has the burden of refuting this assumption.

The <qualitysuitesorlando.com>, <econolodge-orlando.com>, <sleep-inn-orlando-reservations.com> and <comfortsuites-orlando-reservations.com> domain names registered by Respondent are confusingly similar to Complainant’s QUALITY SUITES, ECONO LODGE, SLEEP INN, and COMFORT SUITES marks because the domain names incorporate Complainant’s marks in their entirety, adding only the geographic term “Orlando” by itself or with the generic or descriptive term “reservations” and a hyphen.  The mere addition of a hyphen and a geographic, generic or descriptive term to Complainant’s marks does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"; see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) finding that the domain names, which consist of “ao-l” and a geographic term are confusingly similar to Complainant’s mark; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term.   

The <clarionhotels-orlando.com> domain name is confusingly similar to Complainant’s CLARION HOTEL mark because it includes the entire mark, adding only the letter “s”, a hyphen, and the geographic term “Orlando.”  The addition of the letter “s” does not distinguish the disputed domain name from the registered mark, and the addition of a hyphen between the mark and the geographic term does not negate the confusing similarity between the domain name and the mark.  See Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of Complainant’s services and those who were to view a web site provided by Respondent accessed through the contested domain name; see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(i).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; 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, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites that offer hotel reservation services for Complainant’s hotels in addition to hotels in direct competition with Complainant.  Respondent’s use of domain names that are confusingly similar to Complainant’s marks to redirect Internet users interested in Complainant’s goods or services to a commercial website that offers Complainant’s goods and services without authorization from Complainant as well as goods and services of Complainant’s competitors is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors; see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not a bona fide use); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark.

Finally, Respondent offered no evidence, and no proof in the record suggests, that Respondent is commonly known by any of the disputed domain names.  Furthermore, Complainant did not authorize or license Respondent to use its marks.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy  ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered domain names that contain in their entirety Complainant’s well-known marks for Respondent’s commercial gain.  Respondent’s domain names divert Internet users who seek Complainant’s goods and products to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s marks.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s marks.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion"); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site.

Additionally, Respondent registered the domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competed with Complainant by providing similar hotel reservation services.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area; see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark.

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s registration of domain names that incorporate Complainant’s well-known registered marks in their entirety, deviating only with the addition of a hyphen and geographic, generic, or descriptive terms, suggests that Respondent knew of Complainant’s rights in the marks.  Furthermore, the additional term “reservation” incorporated into several of the domain names describes an important aspect of Complainant’s business and the websites to which the disputed domain names are linked feature Complainant’s products and services as well as those of its competitors.  Thus, the Panel finds that Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s marks.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration; see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <qualitysuitesorlando.com>, <sleep-inn-orlando-reservations.com>, <clarionhotels-orlando.com>, <econolodge-orlando.com>, <comfortsuites-orlando-reservations.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: July 23, 2004

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