Complainant is ESH Strategies Branding, L.L.C. of Miami, Florida, United States of America (“USA” or “United States”), represented by Lydecker Diaz LLC, USA.
Respondent is Sergio Quinones of Burbank, California, USA, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2017. On November 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. Respondent submitted an informal response on December 1, 2017. The Center informed the Parties of the commencement of the panel appointment process on December 22, 2017.
On December 23, 2017, Respondent submitted a further email indicating that it cancelled the disputed domain name. On December 28, 2017, Complainant submitted a reply to Respondent’s response.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 8, 2018. 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, L.L.C., owns and operates hotels in the United States and Canada under the name and mark EXTENDED STAY AMERICA. Complainant has submitted copies of its United States registrations for its EXTENDED STAY AMERICA mark in connection with hotel and motel services, the earliest of which issued on December 3, 1996 (Registration No. 2021504). Complainant also owns a number of domain names based on the EXTENDED STAY AMERICA mark, such as , which Complainant uses to promote and provide information regarding its hotel and motel services.
Respondent is an individual located in Burbank, California, United States. Respondent registered the disputed domain name on October 3, 2017. The disputed domain name does not currently resolve to an active website, but previously resolved to a page with links to offerings related to hotels.
On or about November 9, 2017, Complainant sent Respondent a demand letter regarding the registration and use of the disputed domain name. Respondent did not respond to such. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns rights in the EXTENDED STAY AMERICA mark in the United States and Canada in connection with its hotel and motel services.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s EXTENDED STAY AMERICA mark because it contains the EXTENDED STAY AMERICA mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the generic term “lawsuit” does not distinguish the disputed domain name, because consumers will perceive the disputed domain name, which incorporates Complainant’s EXTENDED STAY AMERICA mark in its entirety, as relating to Complainant.
Complainant argues that Respondent does not have any bona fide rights or legitimate interests in the disputed domain name because Respondent (a) has never been authorized by Complainant to use the EXTENDED STAY AMERICA mark, and (b) has not used the disputed domain name for a bona fide offering of goods or services. Complainant asserts that Respondent has simply used the disputed domain name to trade off of Complainant’s name and reputation in order to divert consumers to a website that consists of links for hotel offerings that compete with those of Complainant.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was clearly aware of Complainant’s EXTENDED STAY AMERICA mark, given that Respondent registered Complainant’s exact trademark with the mere addition of the term “lawsuit” for purposes of profiting from the goodwill associated with the EXTENDED STAY AMERICA mark. Complainant further asserts that Respondent’s bad faith is established by Respondent’s use of the disputed domain name to intentionally divert Internet users to a website full of links for hotel offerings from Complainant’s competitors. B. Respondent
While Respondent did not file a formal response, Respondent sent the Center an email on December 1, 2017 in which Respondent maintained that he registered the disputed domain name for purposes of blogging in the future his personal interactions, as a consumer, with Complainant and its agents. Respondent contends that such intended use is a fair use and protected speech.
On December 23, 2017, Respondent sent a further email in which Respondent indicated that he had cancelled the disputed domain name and thus is no longer the owner of such. C. Complainant’s Reply
On December 28, 2017, Complainant submitted an unsolicited reply in which Complainant argued that Respondent’s email communications to the Center should not be considered by the Panel as they are not in compliance with the Rules or Supplemental Rules. Complainant also presented additional arguments in support of its Complaint. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Before addressing the above, there are two preliminary points to be addressed: (1) the admissibility of Respondent’s communications and Complainant’s Supplemental Filing, and (2) Respondent’s alleged cancellation of the disputed domain name. A. Preliminary Points
i. Respondent’s Communications and Complainant’s Supplemental Filing
Under Paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. While Respondent’s email submissions are not technically a formal response, the December 1, 2017 email was submitted during Respondent’s 20 calendar day time to respond and the December 23, 2017 email was submitted two days after the 20 calendar period expired, but within a four day automatic extension period that Respondent could have asked for. Consequently, in the interest of fairness, the Panel concludes that Respondent’s emails constitute an informal Response by Respondent and accepts these as Respondent’s Response in this proceeding.
As to Complainant’s reply, neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. A panel can determine within its sole discretion whether to admit or reject supplemental submissions. See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Many UDRP panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s informal response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of Complainant’s Supplemental Filing or which would require the Panel to allow Respondent to also submit a supplemental filing to address points made by Complainant in its Supplemental Filing. The Panel therefore declines to accept Complainant’s Supplemental Filing.
ii. Respondent’s Cancellation of the Disputed Domain Name
While Respondent has advised in his December 23, 2017 email that he “cancelled” the disputed domain name, such cancellation is not possible given that the disputed domain name is locked during the pendency of this proceeding. As such, while Respondent may presumably be indicating that he is not contesting the matter, which is not altogether clear in light of Respondent’s December 1, 2017 email, the Panel is of the view that pursuant to the Policy and the Rules the Panel cannot order a transfer or cancellation without due consideration of the merits. B. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the EXTENDED STAY AMERICA mark in connection with its hotel and motel services. Complainant has also provided evidence that the EXTENDED STAY AMERICA mark has been registered in the United States, well before Respondent (who is located in the United States) registered the disputed domain name.
With Complainant’s rights in the EXTENDED STAY AMERICA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See, B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s EXTENDED STAY AMERICA mark as it incorporates the EXTENDED STAY AMERICA mark in its entirety at the head of the disputed domain name. For purposes of this first element, the addition of the word “lawsuit” at the end of the disputed domain name does not distinguish the disputed domain name from Complainant’s EXTENDED STAY AMERICA mark, as the dominant component of the disputed domain name is EXTENDED STAY AMERICA. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s EXTENDED STAY AMERICA mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name in connection with a web page that is full of click-through links for hotel offerings by parties that appear unrelated to Complainant. Although Respondent claims that he registered the domain for purposes of blogging in the future about his personal interactions as a consumer with Complainant and its agents, no evidence was submitted by Respondent supporting that claim. The only evidence before the Panel is of Respondent’s use of the disputed domain name with a click-through linking portal replete with hotel offerings – the very services associated with Complainant and its EXTENDED STAY AMERICA mark.
The use of the word “lawsuit” in the disputed domain name does not, on its face, immediately suggest sponsorship or endorsement by Complainant, given that the disputed domain name could be seen by consumers as relating to a lawsuit involving or against Complainant and its EXTENDED STAY AMERICA hotels. However, the disputed domain name could just as easily be seen by some consumers as relating to an informational page from Complainant regarding a lawsuit initiated by or being defended by Complainant. Simply put, the disputed domain name does not in and of itself trigger a definite inference of affiliation or non-affiliation. Consequently, the disputed domain name needs to be assessed in the context of the use that has been made of such by Respondent.
Here, the only use, as already noted, has been with a click-through portal with links for hotel offerings by competitors of Complainant. Notably, while Respondent has now claimed that he was planning to use the disputed domain name for a blogging website related to his interactions with Complainant and its agents, the evidence submitted does not support the claim. Indeed, Respondent received a demand letter from Complainant on November 9, 2017 regarding the disputed domain name and its use with a web page consisting of links to third party websites. Respondent never responded to the letter, and for at least a month thereafter appears to have continued using the disputed domain name with links for hotel related offerings by third parties. Such actions by Respondent, in their totality, make it more likely than not that Respondent sought to profit from the Internet traffic that would flow through the disputed domain name and that the claim of an alleged blogging website for the future is pretextual (particularly in light of Respondent’s December 23, 2017 communication advising that he was trying to cancel the disputed domain name).
Given that Complainant has established with sufficient evidence that it owns rights in the EXTENDED STAY AMERICA mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent was clearly aware of Complainant when Respondent registered the disputed domain name, given that the disputed domain name fully incorporates the EXTENDED STAY AMERICA mark, and given Respondent’s assertions that he registered the disputed domain name to eventually blog about his interactions with Complainant and its agents. Given this awareness, Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith. Respondent has only used the disputed domain name to redirect Internet users to a click-through linking portal with links to hotel offerings by third parties – the very services offered by Complainant under its EXTENDED STAY AMERICA mark. Respondent also continued using the disputed domain name with a click-through linking portal replete with hotel offerings, despite receiving a demand letter from Complainant regarding such use of the disputed domain name. Lastly, notwithstanding Respondent’s claim that the disputed domain name was registered for a future website for Respondent to blog about his interactions with Complainant, Respondent did not provide any bona fide evidence supporting that contention or that any preparations for such use had ever been undertaken. Simply put, the evidence before the Panel, makes its more likely than not that Respondent registered the disputed domain name to profit from its likely association with Complainant and the Internet traffic that would flow through the disputed domain name and not for some fair use or free speech purpose.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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.
Georges Nahitchevansky
Sole Panelist
Date: January 18, 2018
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