DECISION

U.S. Franchise Systems, Inc. v. Thurston Howell III

Claim Number:  FA0303000152457

PARTIES

Complainant is U.S. Franchise Systems, Inc., Atlanta, GA (“Complainant”) represented by Steven M. Weinberg, of Greenberg Traurig, LLP. Respondent is Thurston Howell III, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <microtels.com>, registered with Bulkregister.Com, Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 28, 2003; the Forum received a hard copy of the Complaint on March 28, 2003.

On March 28, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <microtels.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name.  Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.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 March 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@microtels.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 May 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <microtels.com> domain name is confusingly similar to Complainant’s MICROTEL mark.

2. Respondent does not have any rights or legitimate interests in the <microtels.com> domain name.

3. Respondent registered and used the <microtels.com> domain name in bad faith.

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

FINDINGS

Complainant, U.S. Franchise Systems, Inc., holds a federally registered service mark for the MICROTEL mark (U.S. Reg. No. 1,670,688, registered on the Principal Register of the U.S. Patent and Trademark Office on December 31, 1991).  Complainant, the ninth largest hotel company in terms of number of rooms in the U.S., uses the mark in conjunction with its hotel and motel services.  To date, Complainant has registered over 17 domain names incorporating its MICROTEL mark.

Respondent, Thurston Howell III, registered the <microtels.com> domain name on September 17, 2002, and is not licensed or authorized to use the MICROTEL mark for any purpose.  As late as February of 2003 the disputed domain name redirected Internet users to the <travelnow.com> domain name, which hosts the “cheapestroom.com” search engine.  This search engine assists Internet users in finding and making travel and lodging reservations. Currently, Respondent links the disputed domain name to a website that posts information regarding the company Talcomp Management Services, which provides an array of computer services to consumers.

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 rights in the MICROTEL mark through proof of registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce.

Respondent’s <microtels.com> domain name is confusingly similar to Complainant’s MICROTEL mark.  The disputed domain name entirely incorporates Complainant’s mark, with the sole addition of the letter “s.”  By merely pluralizing Complainant’s registered mark, Respondent failed to register a domain name sufficiently unique to defeat a confusing similarity analysis under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

Accordingly, the Panel finds that the <microtels.com> domain name is confusingly similar to Complainant’s MICROTEL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant carries the burden of demonstrating that Respondent has no rights or legitimate interests in the <microtels.com> domain name.  If Complainant is able to make a prima facie case against Respondent, this burden shifts to Respondent, and as Respondent did not respond to the Complaint, this results in a finding for Complainant on this element.  Complainant can make a prima facie case by showing that the three examples demonstrating rights or legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii) would not be applicable to Respondent. See 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding 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”).

Respondent uses the <microtels.com> domain name to redirect Internet users to a commercial website promoting the services of Talcomp Management Services.  While this appears to be a legitimate business, nothing at the disputed domain name references the MICROTEL mark.  Using Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Similarly, such diversionary use of Complainant’s mark for a commercially oriented website is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also 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).

The website at the disputed domain name hosts information about a company known by the name Talcomp Management Services. Respondent’s WHOIS contact information lists its name as Thurston Howell III. From these facts, the Panel concludes that Respondent is not “commonly known by” the disputed domain name as contemplated by Policy ¶ 4(c)(ii)[1]. See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <microtels.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name in bad faith. Respondent uses a confusingly similar variation of Complainant’s mark to bring Internet users to a commercial website which posts information regarding Talcomp Management Services.  By creating a likelihood of confusion in the minds of Internet users seeking Complainant’s services, for the purposes of commercial gain, Respondent’s activities evidence bad faith use and registration 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel thus finds that Respondent registered and used the <microtels.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <microtels.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 6, 2003

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