WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESH Strategies Branding, L.L.C. v. Shami Khokar, Integrity Net Solution & Services
Case No. D2018-1615
1. The Parties
The Complainant is ESH Strategies Branding, L.L.C. of Charlotte, North Carolina, United States of America ("United States"), represented by Deborah Lee-Serafini of Johnson & Martin, P.A., United States.
The Respondent is Shami Khokar, Integrity Net Solution & Services of Batangas City, Philippines.
2. The Domain Name and Registrar
The disputed domain name <extended-stay-america.info> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2018.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 27, 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
According to the Complainant it owns and operates over 40,000 hotel rooms in the United States which it operates using the brand "Extended Stay America". It has registered numerous trade marks in the United States and Canada for EXTENDED STAY AMERICA, details of which are set out in Annexes 4 and 5 to the Complaint.
It relies upon specific registrations including, for example, United States Registration No. 2021504 registered on December 3, 1996 for EXTENDED STAY AMERICA. In addition the Complainant has registered and owns numerous domain names including the trade mark EXTENDED STAY AMERICA.
In summary the Complainant with its extensive hotel network has registered and applied worldwide for numerous trade marks incorporating EXTENDED STAY AMERICA so as to protect its brand worldwide. It also invests significant resources to advertise and promote the brand "Extended Stay America" worldwide.
It has fostered and maintained significant and valuable goodwill as well as acquiring an outstanding reputation in EXTENDED STAY AMERICA around the world. As a result the Complainant's brand is associated globally with its hotel product and is a famous trade mark worldwide.
The Respondent registered the disputed domain name <extended-stay-america.info> on April 24, 2018, 22 years after the Complainant first registered its United States Mark Registration No. 2021504. Twice, on June 27 and July 9, 2018, the Complainant contacted the Respondent regarding the unauthorized use of the disputed domain name and requested a transfer. Copies of the correspondence are set out at Annex 7 to the Complaint. No response was received.
As of the date of the Complaint, the Respondent's website displayed links to the Complainant's hotels as well as other unrelated third party hotels. More recently it forwarded to a site advertising another hotel at "www.luksloft.com". This is set out at Annex 8 to the Complaint. The website stated that "Extended Stay America has everything you need for short term, weekly or long term stays". It further made reference to
"Extended Stay America , Inc., is the operate [sic] of an economy, extended-stay hotel chain consisting of 629 .properties in the US and Canada. It is listed one extended stay America Biltmore on the New York Stock Exchange as a paired share with the real investment trust ESH Hospitality, Inc, the owner of the hotels".
Also exhibited at Annex 8 are advertisements for foreign and United States hotels including hotels in Oakland, Almeda, Jacksonville, and Washington D.C.. Currently the disputed domain name redirects to the website "www.google.com.ph".
In the absence of a Response and evidence to the contrary, the Panel accepts the truth of the evidence submitted by the Complainant and proceeds to decide the Complaint on that evidence.
5. Parties' Contentions
The Complainant submits;
1. The disputed domain name <extended-stay-america.info> is confusingly similar to the trade mark EXTENDED STAY AMERICA in which the Complainant has rights predating the date of registration of the disputed domain name.
2. The Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no obvious connection with the disputed domain name, has not been granted rights in the Complainant's mark and has not used its associated website for any legitimate business purpose.
3. The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Having considered the evidence of the Complainant's trade mark rights (which also predate the date of registration of the disputed domain name), the Panel finds that the Complainant owns trade mark rights in the mark EXTENDED STAY AMERICA.
The disputed domain name wholly incorporates the mark EXTENDED STAY AMERICA and differs only by the incorporation of hyphens between the words and the generic Top-Level Domain ("gTLD") ".info". The gTLD is a common Internet address identifier and is therefore disregarded by the Panel.
Moreover the hyphens do not distinguish the disputed domain name from the Complainant's trade mark. They are a minor feature, do not dispel the confusing similarity with the mark, and can therefore be disregarded.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark EXTENDED STAY AMERICA, and in which it has rights.
B. Rights or Legitimate Interests
The evidence adduced by the Complainant and referred to above shows that the Respondent has made no legitimate use of the disputed domain name since its date of registration in April 2018. This is shown by the evidence that it refers to competitor third party hotel sites.
There is no evidence to the contrary and, in particular, evidence of a bona fide offering of goods and services by the Respondent. It is well established that "parking" or merely offering a link to other competitor websites is not a bona fide offering of goods or services. Rather the use of the disputed domain name is attempting to profit from users attempting to access the Complainant's website. This has not been authorized by the Complainant.
On the basis of the evidence, with no evidence to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits that there is substantial authority that the registration of a domain name confusingly similar to a famous trade mark by an entity that has no relationship with that trade mark is itself sufficient evidence of bad faith registration and use. It cites a number of previous UDRP panel decisions to support this proposition which this Panel follows.
The Complainant relies upon the well-known decision in Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003 that registration of a domain name identical to the complainant's mark despite actual knowledge of the complainant's trade mark rights is evidence of bad faith registration.
That is the evidence (and which is referred to above) in this case.
The Panel agrees with the Complainant's submission that the widespread fame of the Complainant's trade mark EXTENDED STAY AMERICA in the hotel industry in addition to the fact that the Respondent's website contains factual information relating to the Complainant indicating that it is affiliated or sponsored by the Complainant leads to the conclusion that the Respondent registered and used the domain name with actual knowledge of the Complainant's trade mark rights . This was done presumably with intent to profit from the Complainant's "good name and reputation". The Complainant's actions in registering and using the disputed domain name constitute bad faith.
The Panel therefore finds for the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
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 <extended-stay-america.info> be transferred to the Complainant.
Clive Duncan Thorne
Date: September 10, 2018