WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESH Strategies Branding, L.L.C. v. WhoisGuard / Andi Perdana, andirich
Case No. D2011-2162
1. The Parties
The Complainant is ESH Strategies Branding, L.L.C. of Charlotte, North Carolina, United States of America (“United States”), represented by Lydecker Diaz, United States.
The Respondent is WhoisGuard of Los Angeles, California, United States / Andi Perdana, andirich of Sumatera Utara, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <extended-stay-america.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against WhoisGuard on December 8, 2011. On December 8, 2011, NameCheap Inc.1 sent an email to the Complainant copying the Center disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amendment to the Complaint on December 8, 2011. On December 9, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 9, 2011, eNom transmitted by email to the Center its verification response confirming the information provided by NameCheap Inc.
The Center verified that the Complaint together with the amendment to 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”).
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 December 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2012.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 12, 2012. 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.
As is being apparent from the above there is a potential issue as to the identity of the proper Respondent in this administrative proceeding. At the time of filing the Complaint, the WhoIs database indicated WhoisGuard as the registrant. The concerned registrar, eNom, in response to the Center’s request for registrar verification sent an email communication informing that the underlying registrant name was Andi Perdana with address in Utara, Indonesia.
As a result of the above, the Complainant proceeded to send an email to the Center, with an amended Complaint, requesting to allow such correspondence to serve as its amendment to the recently submitted Complaint, to remove WhoisGuard submitted as the owner of the disputed domain name and to include the new disclosed registrant’s information as the Respondent.
Now such scenarios raise important issues, such as if both the initially listed registrant and the subsequently disclosed registrant should be treated both as Respondents or not. In this particular case, though the Complainant requested the elimination of the name of the first mentioned Respondent and to treat only the Respondent mentioned in the amended Complaint as the Respondent, the Center, proceeded to notify both Respondents.
Firstly, the Panel is satisfied that the Complainant filed its Complaint against the correct Respondent and that there was no necessity for it to amend its Complaint to render it compliant with the Policy and Rules. Notwithstanding the aforementioned the Panel has no objection with the amended Complaint provided by the Complainant designating the name of the disclosed registrant behind the privacy shield and thereafter to treat Andi Perdana as the Respondent, and subsequently copying him in all communications in this administrative proceeding.
It is important to highlight that to date panels in similar cases have treated both initial and disclosed registrants as respondents and this Panel has proceeded on this basis and will for convenience refer to a single Respondent.
4. Factual Background
The Complainant is the owner of the trademark EXTENDED STAY AMERICA. Since 1996 the Complainant has owned and operated its hotels under its trademarked EXTENDED STAY AMERICA name. The Complainant owns, operates, and manages over 40,000 “Extended Stay America” hotel rooms in the United States.
The Complaint is based on the Complainant’s United States and Canadian trademark registrations and applications. In addition, the Complainant has registered numerous domain names in connection with its services.
The disputed domain name was created on March 2011.
On June 1, 2011 and then again on June 8, 2011, the Complainant contacted the Respondent regarding the unauthorized use of the EXTENDED STAY AMERICA trademarks, and to request a transfer of the disputed domain name. (Annexes 7(a)-7(b)) Despite the Complainant’s attempts to contact the Respondent the Complainant has received no response.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name <extended-stay-america.net> wholly incorporates the Complainant’s trademark EXTENDED STAY AMERICA in its entirety.
The Complainant states that the only differences between the Complainant’s domain name <extendedstayamerica.com> and the disputed domain name <extended-stay-america.net> are that the disputed domain name, <extended-stay-america.net>, contains hyphens which separate each word and the domain name designation “.net”. The Respondent’s use of hyphen to separate “extended”, “stay” and “america” does not make a sufficient difference between the disputed domain name and the Complainant’s trademark.
The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name <extended-stayamerica.net> is a URL which has failed to resolve to a website with web content since its registration.
The Complainant states that the Respondent offers no services and makes no reference to a brand of its own, which presumably does not exist, on the website affiliated with the disputed domain name.
The Complainant in addition states that the Respondent is not making a legitimate, noncommercial fair use of the domain name and intends to receive commercial gain from the Complainant’s name and goodwill.
The Complainant states that the Respondent has made no lawful use of the disputed domain name and cannot possibly use it legitimately in the future as the Complainant has long established rights in and to “Extended Stay America” in connection with hotel services.
Finally the Complainant states that substantial authority holds that registration of the disputed domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. It continues to state that the widespread fame of the EXTENDED STAY AMERICA trademark in the hotel industry and the Complainant’s prior disputed domain name registrations and trademark registrations leads to the necessary conclusion that the Respondent registered and used the disputed domain name with actual knowledge of the Complainant’s trademark rights and thus in bad faith, presumably with the intent to profit from the Complainant’s good name and reputation.
As a conclusion, the Complainant states that the Respondent has exploited the Complainant’s name and goodwill for its own profit. Essentially, the Respondent has created the disputed domain name using the Complainant’s trademarked EXTENDED STAY AMERICA name which the Complainant has failed to use for any bona fide purpose in the nine months since its registration. The preceding facts and legal authority establish the Complainant’s contention that (1) the Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s mark; (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.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name in question; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark EXTENDED STAY AMERICA based on the evidence provided by the Complainant (Annex 4).
The disputed domain name consists of the trademark EXTENDED STAY AMERICA with the sole inclusion of hyphens between the words. Therefore the issue turns to the question of whether the addition of these hyphens would change the overall impression of the disputed domain name as being identical or confusingly similar to the trademark owned by the Complainant. The Panel considers that the disputed domain name in the exclusion of gTLD, “.net” is identical to the Complainant's trademark, the addition of the hyphens is not sufficient to avoid confusion, and there is no substantial, etymological or definitional difference between the disputed domain name and the Complainant’s trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant; however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to the Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name “extended-stay-america.” The Complainant has never authorized the Respondent’s use of its EXTENDED STAY AMERICA trademarks. There is no current relationship between the Complainant and the Respondent.
There is no evidence of the Respondent’s use, or preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent has not provided any response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a response this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
The disputed domain name is <extended-stay-america.net>. From the evidence sent by the Complainant, there is no doubt that it is the owner of trademark registrations identical to the disputed domain name and other domain names owned by the Complainant.
Furthermore, the Panel finds difficult to believe that registering a domain name, practically identical to a well-known trademark, is a mere coincidence; therefore one can only conclude that the Respondent had knowledge of the existence of this trademark owned by the Complainant, clearly demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademark, though one can only infer the contrary, it was known to him since the day the Complainant’s counsel contacted the Respondent and informed him of the Complainant’s prior rights. Therefore all use after such notification suggests use of the disputed domain name in bad faith.
Moreover, the Complainant sent a cease and desist letter to the Respondent requesting the transfer of the domain name; however until date the Respondent remains using the trademark of the Complainant, infringing its trademark rights to this Panel’s view, since the Complainant has clearly stated that it has never given the Respondent authorization to use such trademark.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website. In addition the registration of the disputed domain name clearly prevents the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and is being used in bad faith.
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 disputed domain name <extended-stay-america.net> be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Dated: January 16, 2012
1 According to the public WhoIs database, NameCheap Inc. is a registration service provider.
