Westmore · UDRP DecisionCandlewoodmelbournefl.com
The Panel ordered transfer of <candlewoodmelbournefl.com>. It found the Domain Name confusingly similar to the Complainant’s CANDLEWOOD marks because it incorporated CANDLEWOOD with the geographic designation “melbournefl.” The Respondent lacked rights or legitimate interests because there was no evidence of authorization, a corresponding name, or bona fide use, and the Domain Name resolved to a monetized parking page. Bad faith was established from the Respondent’s inferred knowledge of the marks, competitive parking links used for commercial benefit, disruption and confusion, and the Panel’s finding that false contact information had been provided.
The timeline behind candlewoodmelbournefl.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind candlewoodmelbournefl.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a geographic-domain fact pattern in which adding a location to a hotel mark did not reduce confusing similarity and instead corresponded to a place where the complainant asserted it operated a hotel. The decision also shows the combined significance of long-prior trademark use, a competitive pay-per-click parking page, an unrebutted prima facie case, and false contact information in establishing the three UDRP elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Six Continents Hotels, Inc. v. First Last / Personal Case No. D2014-1936 1. The Parties The Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America (“US”), represented by The GigaLaw LLC, US. The Respondent is First Last / Personal of Tokyo, Japan. 2. The Domain Name and Registrar The disputed domain name <candlewoodmelbournefl.com> (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2014, 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”). On November 5, 2014, the Center transmitted an email in English and Japanese regarding the language of the proceeding. On November 8, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments within the specified due date. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2014. The Center appointed Haig Oghigian as the sole panelist in this matter on December 19, 2014. 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 is a company incorporated in the state of Delaware, US, which owns a Candlewood Suites brand that was founded in 1995 and used in connection with 319 hotels offering 30,456 rooms. The Complainant (or its affiliates) owns more than 25 registrations in 42 countries or geographic regions for trademarks that consist of or contain the mark CANDLEWOOD (the “CANDLEWOOD Marks”). Notably, the Complainant owns the following CANDLEWOOD Marks in the US and Japan: Mark Country Registration No. Class CANDLEWOOD SUITES Japan 4919211 43 CANDLEWOOD US 2025101 42 CANDLEWOOD CUPBOARD US 2463743 35 CANDLEWOOD SUITES US 2282959 42 CANDLEWOOD CARES US 3256229 43 CANDLEWOOD SUITES US 4225049 43 The Domain Name was created on October 8, 2014. 5. Parties’ Contentions A. Complainant The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant. The Complainant argues that the Domain Name is confusingly similar to the CANDLEWOOD Marks. The Domain Name incorporates the Complainant’s trademark CANDLEWOOD and only adds a geographic designation “melbournefl” which identifies the city Melbourne in the state of Florida, US, a city where the Complainant has a Candlewood Suites hotel. The Complainant asserts that if a domain name incorporates a distinctive trademark, such as Complainant’s trademark, in its entirety, it is confusingly similar to that mark despite the addition of other words. The Complainant further argues that the addition of generic words to a trademark only increases the likelihood of confusion on the part of consumers. The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CANDLEWOOD Marks. Also, the Complainant adds that since the Respondent is using the Domain Name in connection with a monetized parking page that contains links to services which compete with those services offered by the Complainant, such use of the Domain Name is not a bona fide offering of goods or services under the Policy, and therefore, the Respondent cannot demonstrate any rights or legitimate interests in the Domain Name. The Complainant also argues that registering and using the Domain Name in connection with a monetized parking page that contains links offering services competitive with the Complainant’s services constitutes evidence of registering and using the CANDLEWOOD Marks in bad faith. The Complainant adds that use of the Domain Name is primarily for the purpose of disrupting the business of a competitor and given that the CANDLEWOOD trademark has been used by the Complainant for 19 years, it is likely that the Respondent knew of the CANDLEWOOD Marks and sought to obtain commercial benefit by attracting consumers based on that confusion. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings Paragraph 11(a) of the Rules provides that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."It is noted that the language of the registration agreement is Japanese and the default language of the proceedings would have been Japanese. The Complainant asserts that English should be the language of the proceedings. On November 5, 2014, the Center notified the Respondent in both English and Japanese that the Complaint was submitted in English, that the language of the registration agreement for the Domain Name was Japanese, and provided the parties with detailed information concerning the language of the proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions. However, the Respondent did not provide any response to the Complainant’s request that the language of the proceedings be in English. Paragraph 11(a) of the Rules provides the Panel with the authority to determine the proper language of the proceedings. In view of the above circumstances and the Complainants’ request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceedings in the present case would be a burden to the Complainant and cause undue delay to the proceedings. The Panel is therefore satisfied that English should be selected as the language of the proceedings of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark. Non-distinctive term additions will not be a defense against a finding of confusion. Research i n Motion Limited v. Louis Espinoza , WIPO Case No. D2008-0759 . Further, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp , WIPO Case No. D2005-1249 . Previous UDRP panels have found that use of the CANDLEWOOD Marks plus a geographic term in the domain name, especially a geographic term where the Complainant has a hotel, creates a domain name that is confusingly similar to the CANDLEWOOD Marks. Inter - Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof , WIPO Case No. D2009-1661 . In accordance with UDRP previous decisions and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the CANDLEWOOD Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include: - demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i)); - an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or - legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)). In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant started to use the CANDLEWOOD Marks. Thus, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the Domain Name. PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberso r , WIPO Case No. D2003-0174 . However, there has been no evidence produced by the Respondent in this regard. There is no evidence that suggests that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes. Further, the Respondent’s use of the Domain Name in connection with a monetized parking page is not a bona fide offering of goods or services under the Policy. See Western Union Holdings, Inc. v. Anna Valdieri, WIPO Case No. D2006-0884 ; and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC . , WIPO Case No. D2006-0550 . Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith registration and use of the domain name. Such circumstances include: - circumstances indicating that the registrant registered the domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (paragraph 4(b)(i)); and - registration of the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the complainant has engaged in a pattern of such conduct (paragraph 4(b)(ii)); - registration of the domain name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii)); and - use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s web site or location or of a product or service on the registrant’s web site or location. (paragraph 4(b)(iv)). In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in the CANDLEWOOD Marks when it registered the Domain Name, since the Complainant’s CANDLEWOOD Marks are unique and have been used for 19 years. The Respondent’s awareness of the Complainant’s trademark rights in the CANDLEWOOD Marks at the time of registration suggests opportunistic bad faith registration. (See BellSouth Intellectual Property Corporation v. Serena, Axel , WIPO Case No. D2006-0007 ). Also, the fact that the Domain Name is used in connection with a parking page that contains links offering services which are directly competitive with Complainant’s services is a clear indication that Respondent’s use of the Domain Name is disrupting Complainant’s business and created a likelihood of confusion with the CANDLEWOOD Marks for the commercial benefit of the Respondent. See Six Continents Hotels, Inc. v. NA InterMos, WIPO Case No. D2006-1313 ; and Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc. , WIPO Case No. D2002-1159 . Also, the fact that Respondent has provided false contact information in registering the Domain Name is further indicative of bad faith. See Mrs. Eva Padberg v. Eurobox Ltd. , WIPO Case No. D2007-1886 ; and Fifth Third Bancorp v. Secure Whois Information Service , WIPO Case No. D2006-0696 . Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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 <candlewoodmelbournefl.com> be transferred to the Complainant. Haig Oghigian Sole Panelist Date: December 25, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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