DECISION

Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc.

Claim Number:  FA0308000190506

PARTIES

Complainant is Choice Hotels International, Inc., Silver Spring, MD (“Complainant”) represented by Sheldon H. Klein, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Hotel Partners a/k/a eGO Inc., Richmond, VA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 22, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 25, 2003, Bulkregister.Com confirmed by e-mail to the Forum that the domain name <comfortinnreservations.com> is registered with Bulkregister.Com and that Respondent is the current registrant of the name. Bulkregister.Com has verified that Respondent is bound by the Bulkregister.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 August 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@comfortinnreservations.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 September 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 <comfortinnreservations.com> domain name is confusingly similar to Complainant’s COMFORT INN mark.

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

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

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

FINDINGS

Complainant, Choice Hotels International, Inc., is one of the world’s largest lodging franchisors, with more than 5,000 hotels in 48 countries and territories throughout the world. Complainant began using the COMFORT INN mark as early as 1981 in connection with motel and hotel services, and currently holds many registrations for the mark, including Reg. No. 1,516,053, a design mark incorporating the COMFORT INN mark that was registered on December 6, 1988.

Respondent, Hotel Partners a/k/a eGO Inc., registered the <comfortinnreservations.com> domain name on March 27, 2003, without license or authorization to use Complainant’s COMFORT INN mark for any purpose. Respondent uses the disputed domain name to host a webpage that utilizes a search engine that permits Internet users to search for Complainant’s franchisees around the world. The webpage also prominently displays Complainant’s COMFORT INN design mark at the top of the page.

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 COMFORT INN mark though registration of the mark with the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce.

Respondent’s <comfortinnreservations.com> domain name is confusingly similar to Complainant’s COMFORT INN mark. The disputed domain name has appropriated Complainant’s registered COMFORT INN mark with the addition of the word “reservations.” As the addition of this word enhances the impression that the domain name is sponsored by Complainant, it does not distinguish the domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights or Legitimate Interests

Respondent, without authorization by Complainant, registered a domain name that not only incorporates Complainant’s COMFORT INN mark but also included Complainant’s registered design mark on the webpage associated with the disputed domain name. As Respondent is providing Internet users with a search of all Complainant’s franchisees around the world, the effect of Respondent’s efforts is to give the impression that the disputed domain name is sponsored by Complainant, while the reality is that no such authorization by Complainant has been forthcoming. The Panel finds that Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant, coupled with Respondent’s failure to respond to the Complaint, is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name).

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

Registration and Use in Bad Faith

Respondent is, in effect, passing itself off as Complainant at the disputed domain name. Given the infringing nature of both the disputed domain name itself and the infringing content displayed at the website associated with the disputed domain name, along with the fact that Respondent is neither a franchisee nor licensee authorized to use Complainant’s COMFORT INN marks, the Panel finds that the disputed domain was registered and is being used in bad faith. See 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 Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

The Panel thus finds that Respondent registered and used the <comfortinnreservations.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <comfortinnreservations.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  October 6, 2003

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