WIPO Arbitration and Mediation Center

EXPERT DECISION

Choice Hotels International, Inc. v. Evgenij Uzhegov

Case No. DCH2018-0005

1. The Parties

The Claimant is Choice Hotels International, Inc. of Rockville, Maryland, United States of America, represented by Isler & Pedrazzini AG, Switzerland.

The Respondent is Evgenij Uzhegov of Russian Federation.

2. Domain Name

The dispute concerns the domain name <comfortinn.ch> (the “disputed domain name”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2018. On March 8, 2018, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On March 9, 2018, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the disputed domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on March 1, 2004.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the dispute resolution proceedings commenced on March 15, 2018. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was April 4, 2018.

No Conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of Procedure. The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.

On April 5, 2018 the Center notified the Claimant accordingly, who on the same date made an application for the continuation of the dispute resolution proceedings in accordance with paragraph 19 of the Rules of Procedure and paid the required fees.

On April 12, 2018 the Center appointed Philippe Gilliéron as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

The Claimant operates a worldwide hotel chain under the name COMFORT INN since 1982.

It owns numerous trademarks on a worldwide basis, including the international combined trademark no 856096 that was registered on June 1, 2005, under class 43 (hotel and motel services; hotel and motel reservation services for others; online hotel and motel reservation services for others), whose scope of protection is extended to Switzerland.

The Claimant has been operating hotels under the trademark COMFORT INN in Switzerland since 1986, notably in Egerkingen and Zurich, with more than 160,000 nights booked over the last five years, including more than 100,000 by Swiss residents. The exploitation of the hotel in Zurich ended in 2018.

As a result of its reputation, the Claimant’s COMFORT INN trademark was listed in 2015 in position 47 of a global brand index named Global Brand Simplicity Index, available at “www.rankingthebrands.com”.

The Respondent registered the domain name <comfortinn.ch> on September 14, 1998.

5. Parties’ Contentions

A. Claimant

The Claimant first argues that the Respondent does not own any trademark rights in the COMFORT INN designation. Its capture within the disputed domain name would amount to a trademark infringement within the meaning of Art. 13 of the Swiss Trademark Act as well as a breach of Art. 2 and 3 lit. d of the Swiss Unfair Competition Act, as such registration was meant to exploit the reputation of the Claimant’s trademark and further prevents the Claimant’s franchisees to continue the use of the domain, thus obstructing the Claimant’s in its activities. This is all the more true than the Respondent uses the disputed domain name to display and/or link to sexually inappropriate content, which will inevitably tarnish and damage the Claimant’s reputation.

B. Respondent

The Respondent did not reply to the Claimant’s contentions.

6. Discussion and Findings

In accordance with paragraph 24(c) of the Rules of Procedure, the Expert shall grant the Request if the registration or use of the disputed domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.

Paragraph 24(d) of the Rules of Procedure further adds that in particular, a clear infringement of an intellectual property right exists when:

(i) both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and

(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defense; and

(iii) the infringement of the right justifies the transfer or deletion of the disputed domain name, depending on the remedy requested in the request.

A. The Claimant has a right in a distinctive sign

In the present case, the Claimant demonstrates to enjoy exclusive rights in the term COMFORT INN as a trademark validly registered internationally on June 1, 2005 (no 856096), whose scope of protection extends to Switzerland.

B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right

In the present case, the Expert has no difficulty in holding that the registration or use of the disputed domain name constitutes a clear infringement of this right.

While the Claimant cannot prevail under a trademark claim absent convincing evidence that its trademark would amount in Switzerland to a well-known trademark within the meaning of Art. 15 of the Swiss Trademark Act, which the Expert considers inapplicable considering the limited exploitation of the COMFORT INN trademark in Switzerland, the Claimant prevails under Art. 2 of the Unfair Competition Act.

The exploitation of the website attached to the disputed domain name, which leads to pornography and prevents Claimant to further use its trademark, distorts the competition in an unfair manner, a behavior that will typically fall under Art. 2 of the Unfair Competition Act.

The Respondent, which did not take part in the proceedings, did not come forward with any explanation to rebut these findings and explain the reason why it would have chosen a domain name consisting of the Claimant’s trademark to display pornography. This might be for good reasons, as the Expert finds it hard to believe that the Respondent could come with any convincing explanation. The infringement of Art. 2 of the Swiss Unfair Competition Act is clear and leaves no room for discussion.

As a result, the overall circumstances of the case thus make it clear that the requirements of paragraph 24 of the Rules of Procedure have been fulfilled, and that both the registration and use of the disputed domain name clearly fall under Art. 2 of the Swiss Unfair Competition Act.

7. Expert Decision

For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name <comfortinn.ch> be transferred to the Claimant.

Philippe Gilliéron
Expert
Dated: April 25, 2018