DECISION

Choice Hotels International, Inc. v. Pro-Life Domains Not For Sale a/k/a John Barry

Claim Number:  FA0311000214339

PARTIES

Complainant is Choice Hotels International, Inc., Silver Spring, MD (“Complainant”) represented by N. Christopher Norton, Esq., of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Avenue, N.W., Washington, DC 20036-5339.  Respondent is Pro-Life Domains Not For Sale a/k/a John Barry, 5444 Arlington Ave., #g14, Bronx, NY 10471 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <comfortinnmotel.com> and <comfortinnmotels.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 21, 2003; the Forum received a hard copy of the Complaint on November 25, 2003.

On November 24, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain names <comfortinnmotel.com> and <comfortinnmotels.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@comfortinnmotel.com and postmaster@comfortinnmotels.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 December 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <comfortinnmotel.com> and <comfortinnmotels.com> domain names are confusingly similar to Complainant’s COMFORT INN marks.

2. Respondent does not have any rights or legitimate interests in the <comfortinnmotel.com> and <comfortinnmotels.com> domain names.

3. Respondent registered and used the <comfortinnmotel.com> and <comfortinnmotels.com> domain names in bad faith.

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

FINDINGS

Complainant registered the COMFORT INN mark, along with numerous derivatives thereof, with the United States Patent and Trademark Office (“USPTO”) on January 15, 1985 (e.g. Reg. Nos. 1265290, 1315180,1316274, 1516053, 2264702).  Complainant’s COMFORT INN marks have been continuously used in connection with its hotel and motel services since 1981.  Complainant is one of the world’s largest lodging franchisors, with more than 5,000 hotels in 48 countries and territories throughout the world.  To advertise its lodging services and to facilitate online reservations for its COMFORT INN hotels and motels, Complainant owns and operates the domain names <comfortinn.com> and <comfortinns.com>.

Respondent registered the disputed domain names, <comfortinnmotel.com> and <comfortinnmotels.com>, on December 22, 2001.  Complainant has not licensed nor authorized Respondent to use its COMFORT INN mark for any purpose. 

Respondent uses the domain names to direct Internet users to <abortionismurder.org>, which features graphic images of aborted fetuses, ostensibly conveying Respondent’s viewpoints relating to abortion practices.  Respondent’s address is the same address of the notorious cybersquatter John Barry, and Respondent’s name is one of his well-known aliases.  Respondent’s method of redirecting Internet users to the <abortionismurder.org> domain name is also the modus operandi for John Barry, and the Panel thus accepts Complainant’s uncontested asertion that Respondent and John Barry are the same person or entity.  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”).

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 marks through registration with the USPTO and continuous use in commerce since 1981.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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”).

The disputed domain names, <comfortinnmotel.com> and <comfortinnmotels.com>, are confusingly similar to Complainant’s COMFORT INN mark because the names contain Complainant’s mark in its entirety, and merely add a word describing Complainant’s services associated with its mark.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Therefore, the Panel finds Policy ¶ 4(a)(i) satisfied.

Rights or Legitimate Interests

Respondent has failed to assert rights or legitimate interests in the domain names.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Vert. 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); 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).

There is also no evidence that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii), and the WHOIS registration information does not imply that Respondent is known by the names.  See Tercent Inc. v. 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 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).

Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because it is diverting unsuspecting Internet users, who are attempting to find Complainant, to <abortionismurder.org>, a site wholly unrelated to Complainant’s mark.  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Therefore, the Panel finds Policy ¶ 4(a)(ii) satisfied.

Registration and Use in Bad Faith

Respondent registered and uses the domain names in bad faith by appropriating Complainant’s COMFORT INN mark, placing the mark within domain names that appear to be associated with Complainant’s motel services, and then launching users to a graphic site that depicts bloody fetuses.  See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

Respondent has also evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because it has registered two names that cause confusion with Complainant’s COMFORT INN mark, preventing Complainant from reflecting its mark in those names.  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Therefore, the Panel finds Policy ¶ 4(a)(iii) 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 <comfortinnmotel.com> and <comfortinnmotels.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  January 7, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/111.html