WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G6 Hospitality IP LLC v. Anthony Fischler
Case No. D2019-1481
1. The Parties
Complainant is G6 Hospitality IP LLC, United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Anthony Fischler, United States.
2. The Domain Name and Registrar
The disputed domain name <motel6token.com> 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 June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2019, 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 sent Complainant a request for clarification on June 27, 2019, and Complainant submitted an amended Complaint on June 28, 2019.
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 Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. The Center received informal communications from Respondent on July 23 and 30, 2019, described below.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 31, 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
Complainant owns several registrations for its MOTEL 6 family of trademarks, dating back to 1967 for motel services. For example, Complainant is owner of the MOTEL 6 service mark, U.S. Trademark Registration No. 1816233, registered January 11, 1994, in International Class 42.
The disputed domain name was registered on November 27, 2018, and does not currently route to an active webpage. According to a screen shot annexed to the Complaint, the disputed domain name previously routed to a webpage displaying links promoting various hotel and motel accommodations, among other things.
5. Parties’ Contentions
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
Complainant avers that it sent Respondent cease and desist letters on April 2 and 15, 2019. Respondent’s answers to Complainant’s second letter, and Respondent’s further correspondence, are described below.
On the above grounds, Complainant requests transfer of the disputed domain names.
Respondent submitted no formal response to the Complaint. However, he sent several relevant email communications.
Answering Complainant’s second cease and desist letter, Respondent wrote the following on April 15, 2019: “To whom it may concern, Not giving up my URL I’m not using it for trading purposes. You care to buy the URL I’d be happy to sell it to you. My lawyer is on standby. Thank you, [Respondent].”
In response to a further communication in which Complainant’s representative stated that Complainant would not pay for the disputed domain name and instead would file under the UDRP if necessary, on April 22, 2019, Respondent simply replied: “See you in court. Thank you, [Respondent].”
In response to the Center’s Notification of Respondent Default on July 22, 2019, Respondent on July 23, 2019, emailed the following to the Center, with a copy to Complainant’s corporate domain name management representative: “I’m prepared to settle with you for $50,000. Otherwise this Kangaroo Court doesn’t interest me. Thank you, [Respondent].”
In response to a further administrative notification by the Center, on July 30, 2019, Respondent emailed the Center with a copy to Complainant’s corporate domain name management representative as follows: “Since I didn’t hear back from your group I have gone ahead and sold the URL to another company. I'll be transferring ownership in the next few days unless I hear from you in the next 24 hours.”
6. Discussion and Findings
Complainant must establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy paragraph 4(a).
Complainant must establish these elements even if Respondent submits no response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425.
A. Identical or Confusingly Similar
The Panel agrees that the disputed domain name <motel6token.com> is confusingly similar to Complainant’s trademarks in the sense of the Policy.
Panels usually disregard the domain name suffix (or generic Top-Level Domain (“gTLD”)) in evaluating identity and confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri‑La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Omitting the “.com” gTLD suffix, the disputed domain name adopts Complainant’s servicemark in its entirety, adding only the term “token”.
The Panel finds that the addition of this single descriptive word does not prevent the confusing similarity created by Respondent’s reproduction of the trademark in the disputed domain name. E.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (citing decisions).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non‑exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of production passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
The Panel accepts Complainant’s undisputed allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not commonly known by the disputed domain name. The Panel agrees that Respondent is not making a bona fide use of the disputed domain name.
The Panel accepts into evidence the screen shot annexed to the Complaint, displaying the website to which the disputed domain name formerly routed. The Panel notes that Respondent’s webpage contained numerous referring links. In all likelihood, Respondent was receiving pay-per-click revenues when Internet users activated those links in their browsers, precluding any possibility of noncommercial or fair use. See WIPO Overview 3.0, section 2.8. Along with the fact that the webpage now simply displays an error notice without substantive content, this further demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Significantly, in the email quoted above, Respondent offered the sale of the disputed domain name to Complainant for USD 50,000, a sum greater than any conceivable out-of-pocket costs directly related to registration of the disputed domain name. Respondent’s offer falls directly within one of the circumstances that the Policy uses as an example of registration and use in bad faith under paragraph 4(a)(iii) of the Policy.1
The Panel also finds that Respondent was undoubtedly aware of Complainant’s MOTEL 6 mark, which had been registered and enjoyed widespread use for many years before Respondent registered the disputed domain name. The Panel finds that Respondent deliberately included the mark in the disputed domain name to create confusion or unfairly to exploit the value of Complainant’s marks. This is a direct indication that the disputed domain name was registered in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).2
Respondent’s failure to reply to the Complaint and the fact that disputed domain name currently routes to an inactive webpage are held by the Panel to be additional evidence of bad faith in the present case. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, the Panel concludes that paragraph 4(b)(iii) of the Policy is satisfied.
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 <motel6token.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: August 13, 2019
1 To illustrate bad faith, Policy paragraph 4(b)(i) describes “circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name”.
2 There is ample further evidence suggesting use in bad faith. For instance, as noted above, the links on the webpage screenshot annexed to the Complaint are likely to have generated revenue. Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Moreover, if the links routed to competitors of Complainant, that would be further evidence of bad faith. Unfortunately, however, the annexes to the Complaint do not show where the Respondent’s links directed Internet users.