The Complainant is G6 Hospitality IP LLC of Carrollton, Texas, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Tomek Prentki, Gate4Travel B.V. of Deventer, Netherlands, represented by Paul Richter, Netherlands. 2. The Domain Names and Registrar
The disputed domain names , , and (“the Domain Namesˮ) are registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 12, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. The Response was filed with the Center on March 9, 2018. An additional submission was submitted by the Complainant on March 13, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 5, 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
The Complainant founded in 1962 owns the trade marks MOTEL 6 and STUDIO 6 registered, inter alia, in the United States for lodging services since 1994 and 2000 respectively.
The Domain Names were registered in 2017.
The domain name is being used to provide price comparisons of the Complainant’s MOTEL 6 hotels across various third-party accommodation booking sites which offer competing accommodation services. The remaining two domain names the subject of this Complaint point to pay-per-click links including links to sites competing with the Complainant. 5. Parties’ Contentions A. Complainant
The contentions made by the Complainant can be summarised as follows:
The Complainant founded in 1962 owns the trade marks MOTEL 6 and STUDIO 6 registered, inter alia, in the United States for lodging services since 1994 and 2000 respectively.
The Domain Names were registered in 2017.
The domain name contains the Complainant’s MOTEL 6 trade mark in its entirety and so since the second level of the domain name is compared with a trade mark for the purposes of the policy it is identical to a mark in which the Complainant has rights. This domain name and metadata using the Complainant’s MOTEL 6 mark are being used to provide price comparisons of the Complainant’s MOTEL 6 hotels across various third-party accommodation booking sites which also offer competing accommodation services.
The domain name includes the Complainant’s STUDIO 6 mark adding only the descriptive term “motelsˮ in the second level, making that domain name confusingly similar to that mark. The domain name includes the Complainant’s Motel 6 mark adding only the descriptive term “findˮ making that domain name confusingly similar to that mark. Both of these domain names feature links to third-party websites that compete with the Complainant.
The Respondent is not affiliated with the Complainant in any way and has no permission from the Complainant to use the Complainant’s marks. The Respondent is not commonly known by the Domain Names. It is not a bona fide offering of goods and services or a legitimate noncommercial fair use to use the Domain Names to redirect to sites that offer accommodation services that compete with the Complainant.
The registrations and use of the Domain Names by the Respondent containing two marks of the Complainant demonstrates a knowledge and familiarity with the Complainant’s brand and business.
Bait-and-switch activity even with a disclaimer is confusing, disruptive use and registration in bad faith. The Respondent used a privacy service indicative of bad faith. B. Respondent
The Respondent’s contentions in its Response can be summarised as follows:
“Motelˮ and “Studioˮ are common descriptive words and 6 is a number.
The Respondent informs the public that it is not associated with the Complainant and it is obvious that the Complainant does not offer the same services as the Complainant at . It is being used for a bona fide offering of services as prices are only compared on Motel 6 rooms. The other two domain names in this Complaint are relatively new and point to a template page provided by the hosting provider. They will be used to offer bona fide services and are offline so they cannot be found through search engines. Metadata is used by every owner of every website.
The respondent has rights or legitimate interest in the Domain Names that were not registered or used in bad faith. The Complainant benefits from the booking of Motel 6 websites through and will benefit from the other two domain names the subject of this Complaint when they are operative and this is not disruptive. C. Additional Submission by Complainant
The contentions made by the Complainant in the Additional Submission can be summarised as follows:
The Respondent has been subject to adverse findings for its activities in relation to another third party’s trade mark before registration of the Domain Names so it knew its activities including use of a disclaimer were contrary to the Policy. The Respondent’s activities are part of a pattern of activity of using confusingly similar domain names for commercial gain.
The Respondent has admitted it gets a fee if hotels are booked through and that the other domain names in this Complaint are to be used in the same way.
The Respondent admits the Domain Names are confusingly similar to the Complainant’s trade marks. They are being used to offer competing accommodation services in a confusing way. 6. Discussion and Findings A. Identical or Confusingly Similar
The generic Top-Level Domain (gTLD) “.dealsˮ does not serve to distinguish the Domain Names from the Complainant’s marks as it is a necessary part of a domain name and “dealsˮ has a generic meaning not a part of any trade mark involved in these proceedings.
Under the Policy the second level part of domain name(s) the subject of a complaint are compared with the Complainant’s trade marks as a first step.
The domain name consists of the Complainant’s MOTEL 6 mark (registered inter alia in the United States for accommodation services with first use recorded as 1962) and the gTLD “.dealsˮ and this domain name is therefore identical to a mark in which the Complainant has rights under the Policy.
The domain name combines the Complainant’s MOTEL 6 mark (registered inter alia in the United States for accommodation services with first use recorded as 1962), the generic word “find’’ which is not a distinctive part of the domain name and the gTLD “.dealsˮ and this domain name is, therefore, confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The domain name combines the Complainant’s STUDIO 6 mark (registered, inter alia in the United States for accommodation services since at least 2000) the generic word “motelsˮ which is not a distinctive part of the domain name and refers to the business the Complainant is in and the gTLD “.dealsˮ and this domain name is, therefore, confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has used a privacy service and even its underlying registrant does not appear to be commonly known by MOTEL 6 or STUDIO 6 the Complainant’s marks. The Complainant has not authorised the Respondent to use its marks. The use of the Domain Names is commercial and so cannot be legitimate noncommercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use if it uses the name to divert Internet users to a website competing with the Complainant under its mark.
It is clear from the evidence that the Respondent has used the sites attached to at least one of the Domain Names to promote competing accommodation services which are not connected with the Complainant. This and the Respondent’s planned use of the Domain Names makes it clear that the Respondent was aware of the significance of the MOTEL 6 and STUDIO 6 names and the Complainant’s rights at the time of registration. The usage of the Complainant’s marks which have a significant reputation in relation to accommodation services is moreover not fair as the sites do not make it sufficiently clear despite its disclaimer on the site that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of goods and services. Even if the pay-per-click links are generated by the host provider the Respondent must be deemed to be in control of material attached to domain names that it owns.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
As determined above the Respondent’s use of the sites is commercial and he is using them to make profit from competing services not associated with the Complainant in a confusing manner. The specific combination of marks and services in the Domain Names and the use on the websites attached to them indicates the Respondent was aware of the Complainant’s rights at the time of registration. It seems clear that the use of the Complainant’s mark in the Domain Names would cause people to associate the websites at the Domain Names with the Complainant and its business and services and the disclaimer on is not sufficient. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website. This also appears designed to disrupt the business of a competitor.
As such, the Panel believe that the Complainant has made out its case that the Domain Names were registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb 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 Domain Names , , and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: April 19, 2018
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