WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESH Strategies Branding, LLC v. 21562719 Ont Ltd / Whois Privacy Service Pty Ltd
Case No. D2011-0762
1. The Parties
Complainant is ESH Strategies Branding, LLC of Spartanburg, South Carolina, United States of America represented by Lydecker Diaz, United States of America.
Respondents are 21562719 Ont Ltd of Ontario, Canada and Whois Privacy Service Pty Ltd of Fortitude Valley, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwextendedstayamerica.com> (“the Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2011. On May 3, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On May 4, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 5, 2011.
The Center verified that the Complaint together with the amendment to 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 May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 31, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on June 7, 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
The Domain Name was registered on August 11, 2004.
5. Parties’ Contentions
Complainant states that it owns, operates and manages over 40,000 hotel rooms in the United States of America under its “Extended Stay America” trademarks (“Marks”) since 1996. Complainant further states that since 2002 it has also owned Canadian domain name and trademark registrations in its Marks. Complainant contends that as well as registering and applying for numerous trademarks, both in the United States and in Canada, in an effort to protect and promote its brand globally, it has also invested significant resources in advertising and promoting its Marks and the <extendedstayamerica.com> domain name annually. Complainant asserts that as a result its name is associated globally with its product and has become a famous trademark worldwide. Complainant states that it has fostered and maintained significant and valuable goodwill as well as an outstanding reputation in its Marks and <extendedstayamerica.com> domain name around the world.
Complainant asserts that Respondent registered the Domain Name in 2004, some 8 years after Complainant had registered its own Marks in the United States. Complainant advises that despite contacting Respondent on January 20, 2011 and again on February 2, 2011 requesting the transfer of the Domain Name, it has received no response from Respondent. Complainant states that the Domain Name currently features sponsored listings directly to Complainant’s official website, as well as to competitors of Complainant and third party hotel reservation websites.
Complainant states that the Domain Name wholly incorporates its Marks in their entirety in that the spelling of the key terms are identical, the pronunciation of the key terms are identical and the sounds are identical and therefore the Domain Name and the Marks are so close in sight and sound that the two are likely to be confused. Complainant asserts that Respondent’s addition of the prefix “www” to the Domain Name does nothing to reduce its confusing similarity with Complainant’s Marks, as it takes advantage of the typing error of eliminating the full stop between the “www” and the domain name that Internet users commonly make when searching. Complainant submits that this action of typosquatting is prima facie evidence of Respondent’s bad faith intention to profit from the goodwill Complainant has developed in its Marks.
Complainant submits that there is no evidence of Respondent’s use or preparations to use the Domain Name in connection with a bona fide offering of goods or services and instead the Domain Name is acting as a parking space for Respondent offering sponsored listings. Complainant asserts that Respondent has made no legitimate use of the Domain Name since its registration and could not possibly use the Domain Name legitimately in the future as it has no obvious connection with the Domain Name.
Complainant contends that the Domain Name suggests an affiliation with Complainant and the Domain Name website contains direct sponsored listings to Complainant without authorization or license to do so and also to Complainant’s competitors. Complainant asserts that as such Respondent has pilfered Complainant’s good name and reputation to fraudulently illicit customers to visit a website used as a place to park advertisements, likely for a fee and therefore Respondent is profiting from the name and goodwill of Complainant due to the clearly intentional confusion it has created between itself and Complainant.
Complainant submits that the use of the Domain Name for parking is not a bona fide offering of goods and services and that Respondent is using the Domain Name as a web portal through which Internet users can not only obtain information about competitive hotel offerings but also compare pricing of those hotels with others and make reservations at any of those hotels. This, Complainant suggests, constitutes opportunistic use and cannot constitute bona fide commercial or fair use sufficient to legitimize any rights and interests Respondent might have in the Domain Name.
Complainant submits that Respondent has registered the Domain Name in bad faith. Complainant asserts that the addition of the prefix “www” to Complainant’s well-known <extendedstayamerica.com> domain name shows that Respondent was clearly aware of Complainant and had registered the Domain Name for the purpose of profiting from Complainant’s name and goodwill. Complainant further asserts that the high profile presence and notoriety of its Extended Stay America brand, coupled with the federal and Canadian trademark registrations supports an imputation of knowledge of Complainant’s trademark rights, on Respondent at the time of registration.
Complainant suggests that further evidence of Respondent’s bad faith registration is supported by Respondent’s use of the Domain Name to promote the services of Extended Stay America without authorization, license or permission to do so, as well as the services of Extended Stay America’s competitors, likely for Respondent’s own profit, which constitutes cyber-squatting. Complainant asserts that the fact that Respondent’s webpage is a link farm and hosts a list of sponsored links demonstrates that Respondent intentionally uses the Domain Name aiming to profit from Complainant’s renowned trademark by attracting Internet users and thereby disrupting Complainant’s business. Complainant also submits that Respondent has a history of cybersquatting and has engaged in a pattern of illegitimate domain name registrations which, Complainant contends, is further evidence in support of Respondent’s bad faith registration and use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has since 1996 run a hotel operation in the United States of America, with over 40,000 rooms. It has done so under the EXTENDED STAY AMERICA trademark (“Complainant’s Trademark”). Further, since 2002 Complainant has owned Canadian domain name and trademark registrations for Complainant’s Trademark.
The Domain Name is identical and confusingly similar to Complainant’s trademark. The Domain Name incorporates the words “Extended Stay America” in their entirety but with the addition of the generic descriptor and/or prefix “www”. This self-evidently suggests a connection or association with Complainant.
As Complainant submits, Respondent is taking advantage of the typing error of eliminating the full stop between the “www” and the domain name that Internet users commonly make when searching. The Panel accepts that this is a clear case of typosquatting, which is indicative of Respondent’s wish to profit from the goodwill developed in Complainant’s Trademark.
By adopting a domain name that wholly incorporates Complainant’s Trademark and which conveys the same overall impression as Complainant’s Trademark, Respondent has registered and used a term confusingly similar to Complainant’s trademark.
Accordingly, this element is made out by Complainant.
B. Rights or Legitimate Interests
Respondent is plainly using the Domain Name for commercial purposes. Specifically, Complainant contends, without challenge, that Respondent is using the Domain Name as a parking space for Respondent offering sponsored listings. Complainant further contends that Respondent is using the Domain Name as a web portal through which Internet users can obtain information about competitive hotel offerings and compare pricing of those hotels with others and make reservations at any of those hotels.
Rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name, unless it was seeking to create a mistaken impression of identification or association with the particular complainant. Such a mistaken impression or identification with Complainant is likely to arise in this present case.
Accordingly, again Complainant makes out this element.
C. Registered and Used in Bad Faith
Given the nature and extent of Complainant’s extensive prior use and the registration of Complainant’s Trademark, it is open to the Panel to infer that Respondent registered the Domain Name in bad faith, with knowledge (actual or imputed) that using Complainant’s Trademark as a dominant part of the Domain Name would be likely to create confusion. That is, amongst Internet users visiting the web sites of Respondent’s alleged click-through affiliates, a substantial number of whom would incorrectly assume that the Domain Name is somehow sponsored by or affiliated with Complainant.
In the Panel’s view this seems to be a relatively routine click-through arrangement, of the type well established amongst certain Internet operators. Respondent’s failure to answer any of these allegations or provide any form of explanation supports the conclusion that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel concludes that Complainant is entitled to relief pursuant to the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wwwextendedstayamerica.com> be transferred to Complainant.
Clive L. Elliott
Dated: June 20, 2011