WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G6 Hospitality IP LLC v. Protection Domain

Case No. D2019-2666

1. The Parties

The Complainant is G6 Hospitality IP LLC, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Protection Domain, Panama.

2. The Domain Name and Registrar

The disputed domain name <motel-6.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2019, the Registrar 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 4, 2019, 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 8, 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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 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 owns, operates, and franchises more than 1,400 motels and operates in 49 states in the United States and five Canadian provinces. The Complainant is currently the largest operator in the United States in the economy-lodging segment. The Complainant employs more than 10,000 people. In 2018, the Complainant ranked among top ten hotel companies by Hotel Management Survey.

The Complainant is the owner of trademark registrations, such as MOTEL 6 registration number USPTO 1816233, registered on January 11, 1994, and MOTEL 6 registration number USPTO 4997433, registered July 12, 2016. The Complainant owns <motel6.com>, which received 1.74 million unique visitors between February and July 2019. The Complainant owns over 540 other domain names that contain its trademarks.

According to the Registrar, the Domain Name was registered on September 2, 2000. According to the Complainant, the Respondent registered the Domain Name between September 19, 2015, and April 30, 2016. The Domain Name has redirected Internet users to third party websites offering price comparison services and promoting competitors of the Complainant. At the time of drafting the decision, the Domain Name redirected this panel to a Norwegian online newspaper.

5. Parties’ Contentions

A. Complainant

The Complainant has documented trademark registrations. According to the Complainant, the Domain Name is identical to its trademark MOTEL 6, except for the Respondent’s addition of a hyphen that does nothing to distinguish the Domain Name from the Complainant’s trademarks.

The Complainant argues that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, and the Respondent is not commonly known by the Domain Name. The Respondent has used a privacy service. Prior to receiving the Complainant’s cease and desist letters, the Domain Name occasionally redirected internet users to third party websites offering price comparison services and promoting competitors of the Complainant. This is not bona fide use in the meaning of the Policy.

The Complainant argues that the Respondent must have had knowledge of the Complainant’s rights at the time of registration of the Domain Name. The Domain Name was first registered on September 2, 2000, but to the best of the Complainant’s knowledge, the Domain Name only came to the Respondent between September 19, 2015, and April 30, 2016. The Respondent’s registration and use falls after the Complainant filed for registration of its trademark, long after the Complainant first used the trademark in 1965, and also after the Complainant first registered its <motel6.com> domain name on November 14, 1997. Moreover, by registering a domain name that incorporates the Complainant’s trademark in its entirety, the Respondent has demonstrated familiarity with the Complainant’s brand. By creating a confusion between the Complainant’s trademark and the Domain Name, the Respondent has demonstrated an intent to capitalize on the goodwill of the Complainant’s trademark to increase traffic to the Domain Name’s website. Finally, the Complainant argues that the Respondent’s current use of the Domain Name constitutes a disruption of the Complainant’s business, and that the Respondent has engaged in a bad faith pattern of cybersquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark MOTEL 6.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark, save the addition of a hyphen. This addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no registered trademarks or trade names corresponding to the Domain Name. Nor is there any evidence suggesting that the Respondent has any legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Respondent has used a privacy service. Prior to the cease and desist letters, the Domain Name redirected Internet users to third party websites including those promoting competitors of the Complainant. At present, the Domain Name redirects to random websites. Such use of the Domain Name is obviously not bona fide, rather evidence of bad faith.

The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Complainant’s trademark rights predate the Domain Name registration. This is supported by the fact that the Domain Name has been used to redirect Internet users to third party websites including those promoting competitors of the Complainant.

In the absence of any credible explanation from the Respondent, the Panel agrees that the Domain Name has been registered and used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <motel-6.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: December 11, 2019