WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi Case No. D2009-1313 1. The Parties
Complainant is Country Inns & Suites By Carlson, Inc. of Minnesota, United States of America, represented by Dorsey & Whitney, LLP of United States of America.
Respondents are Shuai Nian Qing of Shanghai, the People's Republic of China and La Duzi of Shanghai, the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain names and
(the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2009. On October 6, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On October 7, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondents are listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on October 30, 2009.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on November 3, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is the owner of the wordmark COUNTRY INN & SUITES in Germany (since 1996) and the United States (since 1996) and of the COUNTRY INN & SUITES designmark in the European Union (since 2004), Germany (since 1996) and the United States (since 1993).
Respondent Shuai Nian Qing registered the Domain Name on April 20, 1999. The Respondent La Duzi registered the Domain Name on May 20, 2001. The Domain Names resolve to pay-per-click websites. 5. Parties' Contentions A. Complainant
Multiple Respondents
Complainant contends that Respondents Shuai Nian Qing and La Duzi are aliases for the same party and/or that the Domain Names are under common control. Complainant points to the fact that the street address for both Respondents is almost the same and that the telephone numbers differ by only one digit (on a total of 13 digits). They use the same email provider and are located in Shanghai, People's Republic of China.
Identical or confusingly similar
According to Complainant, the Domain Names are confusingly similar to the trademarks it relies upon, since they incorporate the key words “country”, “inn” and “suites” from Complainant's COUNTRY INN & SUITES marks with the addition of the non-distinguishing gTLD “.com”. This is likely to cause consumers to mistakenly believe that the Domain Names are owned by or affiliated with Complainant. Therefore, Complainant submits, the Domain Names are confusingly similar to Complainant's COUNTRY INN & SUITES marks.
Rights or legitimate interests
Complainant states that Respondents have no rights or legitimate interests in the Domain Names. Neither Respondent is a licensee or subsidiary of Complainant, or has been authorized to use Complainant's COUNTRY INN & SUITES marks.
According to Complainant, Respondents have not used the Domain Names in connection with a bona fide offering of goods or services. Instead, the Domain Names resolve to pay-per-click websites, each containing a set of hyperlinks, some of which generate sub-pages that contain links to Complainant's direct competitors. Complainant contends that such websites generate through-click-fees for Respondents so that this is not a legitimate noncommercial or fair use of the Domain Names.
Such use, Complainant submits, also constitutes a breach of the Registration Agreement that Respondents have had to sign when registering the Domain Names, under which Respondents warranted that registration of the Domain Names does not infringe any intellectual property rights or other rights of any person or entity. This breach of warranty according to Complainant is sufficient to establish that Respondents have no rights or legitimate interests in the Domain Names.
Registered and used in bad faith
Complainant contends that, in view of the notoriety of its COUNTRY INN & SUITES marks, Respondents had actual or constructive knowledge of those marks when registering the Domain Names, which is evidence of bad faith registration. Complainant further submits that the fact that Respondents' pay-per-click websites feature links to Complainant's direct competitors is evidence of bad faith use of the Domain Names.
In addition, Complainant submits that Respondents have a record of abusive registrations. According to Complainant, Respondent Shuai Nian Qing has been involved in at least one and Respondent La Duzi in at least two previous UDRP proceedings. Furthermore, Complainant contends that domain names, awarded in UDRP proceedings to its group company Radisson Hotels Incorporated, Inc., were under the common control of or registered to other aliases of the Respondents, as the addresses listed for these domain names in the WhoIs records were nearly identical to the addresses of Respondents listed for the Domain Names. In addition, Complainant states that Respondents hold several other domain names consisting of misspellings of and thereby trading off well-known trademarks such as BARBIE, YOUTUBE, GOOGLE EARTH, CRAIG'S LIST and MICROSOFT. B. Respondents
Respondents did not reply to Complainant's contentions. 6. Discussion and Findings A. Multiple Respondents
As a rule, under the Policy and the Rules a case cannot be brought against multiple respondents. Paragraph 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. However, situations may arise in which multiple domain name holders should be considered as one domain name holder for the purpose of this provision, so that a complaint against what might appear to be more than one domain name holder should be allowed. Such a situation arises here.
As Respondents have elected not to respond, they have not contradicted, inter alia, the assertion of Complainant that, in fact they are aliases of the same person. By virtue of paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it deems appropriate from the Respondent's failure to respond to this assertion. In view of the evidence that Complainant has provided of its assertion in relation to the Respondents (in particular the almost identical addresses and telephone numbers in the WhoIs) and taking into account that the same address appears to have been used by previous domain name holders who were ordered to transfer their domain names in UDRP proceedings, the Panel accepts Complainant's assertion that the registrants of the Domain Names are to be regarded as one and the same in the context of this proceeding. (See also America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918; Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc.,WIPO Case No. D2003-0283). A. Identical or Confusingly Similar
Complainant is the owner of several trademark registrations in Germany and the United States of America containing, or comprised of the element “country inn & suites”. Neither the Respondent's use of the word “and” to replace the “&” symbol, nor the exclusion of this term, is sufficient to dispel the risk of confusing similarity. Since the entire trademark COUNTRY INN & SUITES is substantially incorporated in the Domain Names, the Domain Names are confusingly similar to the trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the UDRP provides that any of the following circumstances, if proven, can demonstrate Respondents' rights or legitimate interests in respect of a domain name:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark rights; and
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
Complainant has made a prima facie case that Respondents do not have any rights or legitimate interests in the Domain Name.
A finding of noncommercial use of the Domain Names is excluded by the fact that Respondents are using the Domain Names for a parking page, for which Respondents are presumably receiving through-click revenues. There is no evidence that Respondents have been commonly known by either of the Domain Names or that either of them was given permission by Complainant to register or use the Domain Names.
Complainant submitted evidence that Respondents hold at least a dozen other domain names containing misspellings of well-known trademarks and that both of them have been previously ordered to transfer domain names incorporating (well-known) trademarks in several WIPO cases. This, together with the fact that the Domain Names are used for parking pages with sponsored links, some of which resolve to sub-pages of Complainant's competitors, is evidence that the Domain Names have been registered and are being used for their trademark value. The Panel is of the opinion that this use is indicative of cybersquatting. Therefore, the use of the Domain Names in this case cannot be considered as bona fide either (see likewise Herbert Hänchen GmbH & Co. KG v. Emir Ulu, WIPO Case No. D2009-0079; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Western Union Holdings, Inc. v. Technology Co., Ltd., WIPO Case No. D2008-0590; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC.,WIPO Case No. D2006-0550).
Since Respondents have not filed a Response and therefore not provided any counter evidence, the Panel concludes that Complainant has proven that Respondents do not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Complainant bases its evidence of the bad faith registration of the Domain Names on the notoriety of the COUNTRY INN & SUITES marks which in its view makes it inconceivable that Respondents did not have prior knowledge of its marks when registering the Domain Names. Complainant has provided evidence of its trademark registrations and of four domain name holdings, but not of any use thereof, that would constitute evidence of notoriety to such an extent that Respondents located in Shanghai, the People's Republic of China, must have had prior knowledge of the trademarks. In addition, several of the domain name registrations submitted are of a later date than the registration date of the oldest Domain Name (April 20, 1999), so that these cannot constitute constructive knowledge of Respondents when registering that Domain Name. Nevertheless, the Panel notes that apparently the earliest relevant trademark of the Complainant was registered before the oldest of the Domain Names.
However, as pointed out by previous panels (see most recently Denver Newspaper Agency v. J LLC, NAF Claim No. 1282148) this is not decisive for the question of bad faith registration and use. As already made clear in the Telstra decision, “registration and use” is used in the policy as a unified concept. Even though the concept mentions both “registration” and “use,” the examples provided in the Policy make clear that some types of registration or of use alone may be sufficient to satisfy this unified concept. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Thus, paragraph 4(b)(iv) of the Policy states that “evidence of the registration and use of a domain name in bad faith” is: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Therefore, bad faith use may itself be sufficient to establish “registration and use in bad faith,” even in the absence of any evidence of Respondents' intent at the time of registration and whether Respondents had Complainant's trademark “in mind” at the time they registered the Domain Names (see Denver Newspaper Agency v. J LLC, supra; City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786).
The Domain Names here are indeed being used in bad faith as set out in the Policy under paragraph 4(b)(iv). Given the fact that the Domain Names are almost identical to Complainant's trademarks and that the websites contain links to third-party websites (amongst others competitors of Complainant) where competing services are offered, the Panel is of the opinion that Respondents use the Domain Names to intentionally attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites or locations (see MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., supra; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and
be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: November 17, 2009
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