WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G6 Hospitality IP, LLC. v. WHOIS AGENT, NameSilo, LLC / Erkmen Altun
Case No. D2018-2847
1. The Parties
The Complainant is G6 Hospitality IP, LLC of Carrollton, Texas, United States of America (“United States”), represented by Johnson & Martin, P.A., United States.
The Respondent is WhoIs Agent, NameSilo, LLC of Phoenix, Arizona, United States / Erkmen Altun of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <studio9extendedstay.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 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 December 18, 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 December 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 14, 2019. 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 relevant facts are straightforward and can be summarized very briefly as follows.
The Complainant operates a chain of economy hotels and motels in North America under various brand names including “Motel 6” and “Studio 6”. It opened its first “Motel 6” in 1962 and began operation of its first “Studio 6” hotel in 1998 in the United States. Under the “Motel 6” and the “Studio 6” brands, the Complainant now owns, operates and franchises more than 1,400 economy hotels, including locations in 49 states and 5 provinces in Canada and employs more than 10,000 individuals in the United States and Canada.
The Complainant has obtained international trademark protection for its “Studio 6”, “Studio 6 Extended Stay”, “6”, “Estudio 6”, “Hotel 6” and “Motel 6” brands in the United States and in various countries for hotel services. For the purpose of this Complaint, the STUDIO 6 EXTENDED STAY trademark is most relevant – see by way of example United States registration No 2495770, registered on October 9, 2001. The Complainant’s trademarks for these words are referred to in this decision as the STUDIO 6 EXTENDED STAY trademark.
The Respondent registered the Disputed Domain Name on September 3, 2018. It links to a “parking page” where it is offered for sale for USD 950.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is confusingly similar to the STUDIO 6 EXTENDED STAY trademark in that it simply substitutes a “9” for a “6” which is a minor variation and easily confused or misremembered.
The Complainant says that the Respondent has no rights or legitimate interests in the term “Studio 6 Extended Stay” or “Studio 9 Extended Stay”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it was clearly chosen as a deliberate variation of the Complainant’s name or trademark. The Complainant refers to various previous UDRP decisions as to the deliberate registration of a variation of another person’s trademark in this regard.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“WHOIS AGENT, NameSilo, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Erkmen Altun and references to “the Respondent” are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the STUDIO 6 EXTENDED STAY trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It involves the substitution of “9” for “6”. The Panel agrees in this regard with the approach set out in section 1.9 of the WIPO Overview 3.0, namely:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the STUDIO 6 EXTENDED STAY trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using that or any similar term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the STUDIO 6 EXTENDED STAY trademark. The Complainant has prior rights in the STUDIO 6 EXTENDED STAY trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that the filed evidence raises at least an inference that (i) or (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trademark, and the Respondent hopes to derive commercial gain by sale of the Disputed Domain Name as a result. There appears to be no plausible reason for the Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s STUDIO 6 EXTENDED STAY trademark. The Panel finds that the Respondent has failed to produce any evidence to rebut that inference or to show any that the registration and use of the Disputed Domain Name was not in bad faith.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <studio9extendedstay.com> be transferred to the Complainant.
Nick J. Gardner
Date: January 23, 2019