Complainant is ESH Strategies Branding, LLC of Charlotte, North Carolina, United States of America, represented by Lydecker Diaz, United States of America.
Respondent is Abdul Azus of Surabaya, Jawa Timur, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with CV. Jogjacamp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 21, 2011, the Center transmitted by email to CV. Jogjacamp a request for registrar verification in connection with the disputed domain name. On October 24, 2011, CV. Jogjacamp transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on November 1, 2011. On November 11, 2011, Complainant requested a Suspension to the Proceedings in order to explore a possible settlement with Respondent and the case was suspended on November 11, 2011. Failing to the reach a settlement, the matter was reinstituted on December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was extended until December 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2011.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 23, 2011. 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, ESH Strategies Branding, LLC, has since 1996 run a hotel business in the United States of America, with over 40,000 rooms. Complainant uses its EXTENDED STAY AMERICA trademark in connection to this business.
Complainant is the holder of following trademark registrations for the EXTENDED STAY AMERICA trademarks:
- EXTENDED STAY AMERICA, registered in the United States under number 2,021,504 on December 23, 1996 in class 42;
- EXTENDED STAY AMERICA, registered in the United States under number 2,457,084 on June 5, 2001 in class 42;
- EXTENDED STAY AMERICA (and design), registered in the United States under number 3,496,984 on September 2, 2008 in class 43;
- EXTENDED STAY AMERICA, registered in Canada under number TMA 562,533 on May 27, 2002 for lodging services, namely providing temporary housing accommodations.
The WhoIs database provides that “Abdul Azus”, Respondent in the instant case, is the current holder of the disputed domain name , which was registered on January 21, 2011 with CV. Jogjacamp.
The disputed domain name is currently not used and has previously been used as a parking page featuring advertisements and links to various hotels, not belonging to Complainant. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not actively used the disputed domain name since its registration. Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules or principles of law that it deems applicable.
The burden is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before a panel may order the transfer of a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities, that:
1. The disputed domain name 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 disputed domain name; and
3. The disputed domain name was registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of various EXTENDED STAY AMERICA trademarks used in connection with hotel and lodging services, the Panel finds it clearly established that Complainant has rights in the EXTENDED STAY AMERICA trademark.
The disputed domain name incorporates Complainant’s trademark in its entirety. The Panel considers the only difference between the disputed domain name and Complainants trademark, the absence of spaces between the words “extended”, “stay” and “America”. As it is technically impossible to have spaces in a domain name, the Panel considers the disputed domain name to be identical to the Complainant’s EXTENDED STAY AMERICA trademark.
Therefore the Panel finds that Complainant has established that the disputed domain name is identical or confusingly similar to the trademarks in which it has rights. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It has been established by prior UDRP panels that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name and to place the burden of rebuttal on Respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that the record shows that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired any trademark or service mark rights in the disputed domain name. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications in the Record that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, Respondent has been using the disputed domain name as a parking page, containing sponsored links to third-party web sites of competitors of Complainant. The use of domain name that is identical or confusingly similar to a complainant’s mark to market goods or services that compete with those offered under the complainant’s mark, are not being used in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. See Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708; Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462; and Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404. Furthermore, Respondent did not reply to Complainant’s contentions. Here, the Panel finds that the absence of a reply is a further indication that Respondent has no rights or legitimate interests in the disputed domain names. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
For these reasons, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain names. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors, demonstrating bad faith, is the use of the disputed domain name with the intentional attempt to attract, for commercial gain, Internet users to a 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 the web site or location or of a product or service on the web site or location. 1. Bad Faith Registration
The Panel finds that the awareness by a respondent of the complainant’s trademark rights at the time of registration suggests bad faith. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070. In the instant case, the Panel finds that Respondent had or should have had knowledge of Complainant’s rights in the EXTENDED STAY AMERICA trademark at the moment it registered the disputed domain name. This is not only clear from the fact that the disputed domain name is identical to Complainant’s trademark, but also from the fact that the disputed domain name has been featuring sponsored links for direct competitors of the Complainant. This, the Panel finds, shows that Respondent was not only aware of Complainant’s trademarks, but also of Complainant’s business.
Therefore the Panel finds that it is established that the disputed domain names were registered in bad faith. 2. Bad Faith Use
The record shows that disputed domain name has been used to promote goods or services in competition with the business of Complainant who has rights in trademarks or service marks to which the disputed domain names are confusingly similar. Accordingly, the Panel finds such use constitutes a disruption of the business of Complainant, and is evidence of bad faith registration and use under Policy paragraph 4(b)(iii). See EBAY, Inc. v. MEOdesigns and Matt Oettinger,WIPO Case No. D2000-1368; and Barnett Puckett, Individually and d/b/a Nature’s Window v. Miller,WIPO Case No. D2000-0297.
Moreover, the Panel finds the choice of the Respondent to use Complainant’s exact trademark as a domain name in relation to the provision of sponsored links is a sign that Respondent deliberately attempted to profit from the confusion generated with Complainant’s trademark. See MasterCard International Incorporated v. Unicorn Multi-Media, Inc.,WIPO Case No. D2007-0688.
Therefore, the Panel finds it is established that the disputed domain name has not only been registered, but is also used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: January 6, 2012
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