WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESH Strategies Branding, L.L.C. v. Quanzhongjun
Case No. D2019-0154
1. The Parties
The Complainant is ESH Strategies Branding, L.L.C. of Charlotte, North Carolina, United States of America (“United States”), represented by Johnson & Martin, P.A., United States.
The Respondent is Quanzhongjun of Xining, China.
2. The Domain Name and Registrar
The Disputed Domain Name <extendedstaymerica.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2019, 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 January 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on January 30, 2019, in which it requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2019.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 6, 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 Complainant operates over 600 hotels across the United States and operates under the brand EXTENDED STAY AMERICA. The words EXTENDED STAY AMERICA have been incorporated in trademarks registered in the United States, including the following:
December 3, 1996
June 5, 2001
Although the Complainant claims to have registered the EXTENDED STAY AMERICA trademark internationally, details and supporting evidence were not adduced in evidence. The Complainant holds numerous domain names incorporating the EXTENDED STAY AMERICA trademark as well as typographical variations (e.g., <extendedstayamerica.com> and <extendedstayameric.com>).
Very little information about the Respondent is available beyond the WhoIs information associated with the Disputed Domain Name. The Respondent appears to be an individual based in Xining, China.
The Disputed Domain Name <extendedstaymerica.com> was registered on August 15, 2018. On or before January 23, 2019, the Disputed Domain Name resolved to a website which prominently displayed the word “Extendedstaymerica” and provided links purporting to offer hotel reservation goods and services of others. One of the links described as “related links extended stay america” opens another page with the header “Extended Stary Amercia-Official Site over 600 hotels nationwide” which links directly to the Complainant’s website at <extendedstayamerica.com>.
On December 28, 2018, the Complainant sent a cease-and-desist letter by email to the Respondent by way of the Registrar requiring, inter alia, that the Disputed Domain Name be transferred to the Complainant for free and for the webpage resolved therefrom to be taken down. The Respondent did not respond to the cease-and-desist letter despite a reminder on January 7, 2019.
5. Parties’ Contentions
The Complainants contends that:
(1) The Disputed Domain Name is confusingly similar to the EXTENDED STAY AMERICA trademark. The words EXTENDED STAY AMERICA is substantially incorporated in the Dispute Domain Name. The mere omission of the letter “a” from “america” amounts to typosquatting and is insufficient to avoid a likelihood of confusion.
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence that the Respondent’s use, or preparations to use the Disputed Domain Name was in connection with a bona fide offering of goods and services. In particular, the Disputed Domain Name resolved to a parking page. The Respondent offers no services. The Complainant has never authorized the Respondent to use its EXTENDED STAY AMERICA trademarks.
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent’s registration of the Disputed Domain Name is a typosquatting practice with the intent to benefit from the goodwill and fame of the EXTENDED STAY AMERICA trademarks. There is no plausible reason for the selection of the Disputed Domain Name other than as a deliberate attempt to profit from the confusion generated with the EXTENDED STAY AMERICA trademarks. The Respondent has a history of cybersquatting (Direct Energy Marketing Limited v. quanzhongjun, NAF Claim No. FA1809001806271; Lockheed Martin Corp v. quan ZHONGJUN / quanZHONGJUN, NAF Claim No. FA1807001798410).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement is Chinese. Therefore, the default language of the proceeding should be Chinese. However, paragraph 11(a) of the Rules provides that the Panel has authority to determine otherwise, having regard to the circumstance of the administrative proceeding. In doing so, the Panel is obliged to ensure that Parties are treated with equality and that the administrative proceeding takes place with due expedition.
In the present case, the Complainant has requested for the language of the proceeding to be English. The Panel takes the following into consideration in deciding that English should be the language of the proceeding:
a) The website to which the Disputed Domain Name resolves is in English, and the Disputed Domain Name consists of Latin characters, which suggests that the Respondent is likely to be familiar with English;
b) The Respondent has not objected to the Complainant’s language request;
c) The Respondent has chosen not to participate in the proceeding despite being informed of the Complaint in Chinese and English;
d) Requiring the Complainant to translate its submissions to Chinese would cause unnecessary delay to the proceedings.
6.2 Substantive Matters
To succeed in this proceeding, the Complainant must establish the following limbs of paragraph 4(a) of the Policy:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel is satisfied that the Complainant has trademark rights in the EXTENDED STAY AMERICA trademark. While the Disputed Domain Name does not wholly incorporate the EXTENDED STAY AMERICA trademark, the Panel agrees that it is a typographical variant of the EXTENDED STAY AMERICA trademark. In comparing the Disputed Domain Name, the Panel has in accordance with established practice of past panels, ignored the top level domain component of the Disputed Domain Name. The absence of the letter “a” in “america” in the Disputed Domain Name is minor and does not prevent a finding of confusing similarity. Hence, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. The Complainant has categorically stated that it has not authorized the Respondent to use the EXTENDED STAY AMERICA trademark. There is no evidence to suggest that the website resolved from the Disputed Domain Name is other than a parking webpage. Nothing in the evidence suggests that the Respondent possesses any rights or legitimate interest in the Disputed Domain Name. The content of the webpage and its depiction of the EXTENDED STAY AMERICA trademark do not appear to be a bona fide offering of goods or services or a legitimate noncommercial use of the Disputed Domain Name.
As no response was filed, the prima facie case remains uncontroverted and the Panel holds that the second element of paragraph 4(a) of the Policy has been made out.
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) highlights a circumstance of bad faith registration and use as follows:
“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”.
The above clearly illustrates a cybersquatter who has a track record of registering the trademark of others as domain names. Although not specifically directed at typo-squatters, the registering of confusingly similar typo-variants of trademarks of others as domain names is no less reprehensible. As such, past panels have understandably held typo-squatting to constitute evidence of bad faith registration and use (e.g., Ticket Software, LLC v. Domains By Proxy, LLC / Stephen Troy, WIPO Case No. D2013-0215). Such being the case, the Panel finds the demonstrable pattern of conduct of typo-squatting exhibited by the Respondent’s history of UDRP proceedings, to be inexcusable. The Respondent has been held by previous UDRP panels to be a typo-squatter in relation to <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> (Direct Energy Marketing Limited v. quanzhongjun, NAF Claim No. FA1809001806271), and <lockhedmartinjobs.com> (Lockheed Martin Corp v. quan ZHONGJUN / quanZHONGJUN, NAF Claim No. FA1807001798410).
The Complainant’s allegation of bad faith registration and use of the Disputed Domain Name on the basis of typo-squatting is not a trifling. The Respondent’s unresponsiveness leads the Panel to draw an adverse inference that the Respondent either accepts or is unable to contradict the Complainant’s assertions. The Panel holds that the third element of paragraph 4(a) of the Policy is satisfied on the facts.
In view of the above findings, the Panel makes no comment on the Complainant’s other claims of bad faith registration and use under paragraph 4(b)(iv).
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 <extendedstaymerica.com> be transferred to the Complainant.
Kar Liang Soh
Date: April 1, 2019