WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotel Services Company LLC v. Jay Chow, Mediaelite
Case No. D2011-1828
1. The Parties
The Complainant is Hotel Services Company LLC of Creve Coeur, Missouri, United States of America, represented by Senniger Powers LLP, United States.
The Respondent is Jay Chow, Mediaelite of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <druryinnandsuites.com> (the “Domain Name”) is registered with RegisterMatrix.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011 against PrivacyProtect.org. On October 25, 2011, the Center transmitted by email to RegisterMatrix.com Corp. a request for registrar verification in connection with the Domain Name. On November 2, 2011, RegisterMatrix.com Corp. 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 the Complainant on November 2, 2011, 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 November 2, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Response was filed with the Center on November 19, 2011.
The Center appointed Jon Lang as the sole panelist in this matter on December 5, 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 Complainant provides motel services. It has rights in the service marks DRURY INN & SUITES, DRURY SUITES, DRURY INN, and DRURY, which the Complainant and its predecessors have used in connection with its motel services since at least as early as 1995, 1992, 1973, and 1986, respectively. The Complainant has developed significant goodwill and fame in the marks.
The Complainant owns United States Service Mark Registration No. 2091304, registered on August 26, 1997 for DRURY INN & SUITES; United States Service Mark Registration No. 1772627, registered on May 18, 1993 for DRURY SUITES; United States Service Mark Registration No.1092983, registered on June 6, 1978 for DRURY INN; United States Service Mark Registration No. 1463125, registered on October 27, 1987 for DRURY INN; and United States Service Mark Registration No. 1874354, registered on January 17, 1995 for DRURY.
The Complainant, or one of its predecessors, first used its DRURY INN & SUITES mark on August 15, 1995; its DRURY SUITES mark on July 1, 1992; its DRURY INN mark on April 2, 1973; and its DRURY mark in January 1986.
According to the public WhoIs database, the Domain Name <druryinnandsuites.com> was created on February 4, 2003.
5. Parties’ Contentions
The Domain Name is identical/confusingly similar to service marks in which the Complainant has rights.
- The Domain Name is identical to the Complainant’s DRURY INN & SUITES mark except for the replacement of “&” with “and”, and the addition of “.com.” As is not possible to use the “&” character in a domain name, “druryinnandsuites” is as close to the Complainant’s mark as it could possibly be. As such, the Domain Name is confusingly similar to the Complainant’s DRURY INN & SUITES mark.
- The Domain Name is also confusingly similar to the Complainant's DRURY SUITES, DRURY INN, and DRURY marks.
- Accordingly, the Domain Name is identical and confusingly similar to service marks in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
- The Respondent has not made a bona fide use, or any preparations for any bona fide use, of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
- The Domain Name resolves to a website that is deceptively designed to appear to be a legitimate website for selling various services, including hotel services, but in fact it is merely a parking site that is being used to deceive consumers and direct them to competitors of the Complainant and to other parties. Thus the Respondent is using the Domain Name as bait to attract customers to the Respondent’s website and to other parties’ goods and services. Use of a domain name in such a manner is not a bona fide offering of goods and services.
- The Respondent has no relationship whatsoever with the Complainant. The Complainant (nor any predecessor) has ever authorised the Respondent to use the Domain Name or any other domain name.
- The Respondent has not at any time been commonly known by the Domain Name.
- The Respondent has not made a legitimate noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith.
- The Respondent registered the Domain Name on February 4, 2003, which is significantly later than when the Complainant began using and registered its DRURY INN & SUITES, DRURY SUITES, DRURY INN, and DRURY marks.
- The Respondent has selected, registered, and used the Domain Name to attract customers to its website in an effort to trade on the Complainant’s goodwill, in order to provide commercial gain for the Respondent. Accordingly, the Respondent’s registration and use of the Domain Name was in bad faith.
- The Respondent obtains commercial gain by deceptively luring visitors to its website, which is in reality merely a parking site that offers links to other websites. The Respondent gains revenue by obtaining click-through commissions from the owners of the websites to which it offers links. Such use has been found to be evidence of bad faith registration and use.
- Moreover, the Respondent’s website links unsuspecting Internet users to websites offering services that compete with Complainant’s services.
- The Respondent denies the Domain Name was registered in bad faith and states that the Complainant has not proved that it was.
- The Respondent contends that “drury” is a name for, among other things, cities in various countries as well as a university and provides the following examples: Drury, New Zealand; Drury, Flintshire, United Kingdom of Great Britain and Northern Ireland; Drury University, formerly Drury College, Springfield, Missouri; Drury Lane, a famous street in the West End of London; Drury, a bridge convention.
- The Respondent contends that the Domain Name is used to ‘redirect traffic to vistors[sic] who may look for lodging in Newzealand[sic] or UK or even visitos[sic] of Drury university looking for a place to stay. It could also be used for places to stay on Drury Lane.’
- The Respondent goes on to say that the Complainant’s property list (at https://wwws.druryhotels.com/PropertyList.aspx) ‘do not even have locations in the above places. No locations in Newzealand[sic], no locations in the UK.’
- In relation to the allegation that the Domain Name resolves to a parking page, the Respondent says that it is a ‘legitimate business to provide pages to direct users to websites they may look for and that has been proven acceptable in other domain dispute cases’.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
Under the UDRP, a comparison, on a visual or aural level, between the trade or service mark and the domain name is necessary to determine the likelihood of Internet user confusion. In order to satisfy the test, the trade or service mark would generally need to be recognisable as such within the domain name.
The only difference between the Domain Name and the Complainant’s DRURY INN & SUITES mark is the replacement of “&” with “and.” The addition of “.com” is to be ignored for the purposes of comparison. On a visual level, the Domain Name is almost identical therefore, but not quite. On an aural level, the Doman Name is identical. Accordingly, the Domain Name is identical or confusingly similar to the Complainant’s DRURY INN & SUITES mark, depending on whether one adopts a visual or aural comparison.
As to the Complainant’s other marks - DRURY SUITES, DRURY INN, and DRURY marks, the distinctive ‘drury’ word, the dominant (or only) element of the marks, is recognisable within the Domain Name and on a visual comparison it can be said that the Domain Name and the Complainant’s other marks are also confusingly similar.
Even if one were to adopt a possibly slightly higher burden and require, as some panels may have been seen to do, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s marks to which it is similar, or that there is some form of association between the Respondent and the Complainant.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests.
The essence of the Respondent’s argument is that the word “drury” can refer to other things – places, institutions, etc. rather than the Complainant. And he is of course correct about that. But that does not necessarily help his cause. More must be shown. For instance, a respondent could show that he has rights or legitimate interests in a domain name by demonstrating that he has been commonly known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. a website containing links to a parking site that can direct Internet users, directly or indirectly, to websites of others, including competitors of the Complainant, the Panel would not accept that there is legitimate noncommercial or fair use. It is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. In any event, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name he did was to deliberately create an impression of association with the Complainant.
The argument that the Domain Name could refer or be understood to refer to places or entities having or containing the name ‘drury’ (as opposed to the Complainant) has not in any sense been developed. Nor have the other arguments contained in the Response. This is no doubt because such arguments do not sit well with the facts. If the Respondent’s intention was to provide a source of information or reference point for all things ‘drury’, i.e. people visiting places or entities called ‘Drury’ who need a place to stay, the website would no doubt have a very different appearance and content. For instance, one might not expect to see links to ‘San Antonia Hotels’, ‘New Orleans Hotels’, ‘Daytona Beach’ and ‘Disney Vacation’!
In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. But it would be difficult to accept that the offering of goods and services on or through a website to which a confusingly similar domain name resolves, particularly where such goods or services compete with those of a complainant, could amount to a bona fide offering.
Despite the Response, there is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. In this Panel’s view the contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been seriously contradicted or challenged and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It seems clear, given the fame of the Complainant’s marks and the use to which the Domain Name has been put, that the Respondent must have been aware of the Complainant’s marks when the Domain Name was registered.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. The bare denial of bad faith by the Respondent is insufficient to prevent such a finding in the circumstances of this case.
Accordingly, the Panel finds that, for the purposes of paragraph 4(a)(iii) of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <druryinnandsuites.com> be transferred to the Complainant.
Dated: December 19, 2011