WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Order Inn, Inc. v. Domains By Proxy, LLC, Quazi Hossain, Food Order INN LLC

Case No. D2014-0720

1. The Parties

The Complainant is Order Inn, Inc. of Las Vegas, Nevada, United States of America (“USA”), represented by Weide & Miller, Ltd., USA.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, USA, Quazi Hossain, Food Order INN LLC of Duluth, Georgia, USA.

2. The Domain Name and Registrar

The disputed domain name <foodorderinn.com> (the “Domain Name”) 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 May 2, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 8, 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”).

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 May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2014.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 10, 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 corporation organized under the laws of the State of Nevada, USA, with its principal place of business in Las Vegas, Nevada. The Complainant operates a website at “www.orderinn.com”, which describes the Complainant’s business as follows:

“Order Inn is an in-room meal service provider for the limited service hotel industry. Simply put, our network of quality-controlled restaurants bring room service to guests staying in hotels where freshly-prepared meals may not be available.”

The Complainant places menus and advertising in hotels and provides a central telephone number for guests to call in meal orders. According to the Complainant’s website, meals are delivered to “thousands of hotels nationwide”, including 17 hotels in Duluth, Georgia, where the Respondent is located, and many more in the greater Atlanta, Georgia metropolitan area. The business is promoted online on the Complainant’s website, which also serves as a portal for online hotel and travel reservations and meal vouchers offered by a third party.

The Complainant holds two United States trademark registrations for ORDER INN as a standard-character mark: Registration No. 2801951 (registered on January 6, 2004) and Registration No. 3194903 (registered on January 2, 2007).

The Domain Name was created on February 9, 2013 and registered in the name of the Registrar’s domain privacy service. On the commencement of this proceeding, the Registrar identified the owner of the Domain Name as the Respondent Quazi Hossain, Food Order INN LLC, of Duluth, Georgia, USA, a suburb of Atlanta. The online database operated by the Georgia Secretary of State shows that Food Order Inn, LLC is an active limited liability company registered in Georgia since January 2, 2013, a month before the Domain Name was created. The postal address is the same as is given for the registrant of the Domain Name in the Registrar’s WhoIs database. The Registrar and domain privacy service have not claimed an interest in the Domain Name. Accordingly, the “Respondent” refers hereafter collectively to Mr. Hossain and Food Order INN LLC. Neither has replied to the Center’s communications or submitted a Response in this proceeding.

The Domain Name resolves to a website headed “Food Order Inn”, which displays photos of sandwiches, pizzas, and other meals available to order online or by calling a toll-free telephone number, along with a list of menu items and prices. The website appears to be incomplete in several respects. The home page refers to “Fast, Delivery & Carry Out”, and a pop-up online order form allows users to enter food choices and a delivery address, but the website does not indicate where the service is available. The “About Us” page has no descriptive text and merely cycles through photos of some of the menu items. In addition to the toll-free telephone number, the “Contact Us” page displays a map linked from Google Maps, showing where pizza take-out and delivery stores are located near the airport and convention center in Atlanta, Georgia. There is otherwise no reference to possible sources of the food items listed on the website, and there is no third-party advertising on the website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered ORDER INN mark and that the Respondent has not been licensed to use the mark. The Complainant argues that the Respondent had constructive notice of its registered mark and likely had actual knowledge of it, because the Respondent chose a similar name for a similar business, both promoted online.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name 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; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant holds trademark registrations for ORDER INN. The Domain Name incorporates this mark in its entirety, including the distinctive spelling of “inn” (referring to hotels) rather than the preposition “in”. The addition of the generic word “food” is not distinctive, especially as it would appear to an Internet user to be relevant to the Complainant’s business of delivering room service meals to hotel guests.

UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no Response in this proceeding asserting the Respondent’s rights or legitimate interests in the Domain Name. The Panel notes that the Domain Name corresponds to the name of a limited liability company that was established shortly before the Domain Name was registered, with the same postal address. The Domain Name has been used since for a website (which may still be under development) offering telephone and online ordering of meals for delivery in an unspecified geographic area. These facts could evince a legitimate interest in the Domain Name. However, if the record indicates that the Respondent likely selected both the company name and Domain Name to exploit the Complainant’s mark, the Panel would have to conclude that the Domain Name was not chosen for use in connection with a bona fide commercial enterprise. The Panel subscribes to the reasoning of an early and frequently cited UDRP decision, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847: “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. . . . [T]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” This issue is more fully addressed in the following section, on the question of bad faith, as the same facts are apposite in this case to both elements of the Complaint.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant invokes this example of bad faith, inferring both that the Respondent was aware of the Complainant’s mark and that the Respondent chose the Domain Name for its commercial value in attracting Internet users familiar with that mark. The Complaint refers to its trademark registrations and cites the principle of “constructive notice”. This Panel, like many others, is unwilling to base a conclusion of actual bad faith for Policy purposes simply on the assumption that domain name registrants should be aware of relevant trademark registrations in their own country. See WIPO Overview 2.0, paragraph 3.4.

But the Respondent has not come forward to deny prior knowledge of the Complainant’s mark or assert legitimate reasons for selecting a confusingly similar Domain Name for a competing business, and the Panel finds that there are other indicia of bad faith in this case. As outlined above, the Complainant has a strong presence in the geographic area where the Respondent is located, and the Respondent’s website offers a food delivery service as the Complainant does, apparently based on a central ordering facility with a website and toll-free telephone number. The Respondent might reasonably be expected to have looked into the competition for its new business, especially in its own region. The Panel notes that the Complainant’s service appears at the top of search engine results for “order inn” and has been featured in national media stories for its innovative business model and fast growth. Thus, it is likely that the Respondent was in fact aware of the Complainant’s trademark and recognized its value in promoting a food delivery service.

If the Complainant’s trademark and the Domain Name both simply used a common, descriptive phrase for such a business, it would be difficult to demonstrate a bad faith effort to target the Complainant’s mark. But the extra letter “n” in both names is hard to explain away. “Order in” is a common phrase in American English, referring to the act of telephoning to order food for delivery, as opposed to dining in the restaurant. See, e.g., the online MacMillan Dictionary, “order in”. “Order Inn” is a clever variation on that phrase, suggesting a facility for taking orders for meals to be delivered to a hotel, or “inn”, which is precisely the Complainant’s core business. The Respondent’s website does not appear to be focused on meal delivery to hotels, so the choice of “inn” rather than “in” is inexplicable – except as an attempt to trade off the reputation associated with the Complainant’s better known meal delivery service. This represents bad faith for purposes of the third element of the Complaint, and it also undermines any claim to a legitimate interest in the Domain Name under the second element of the Complaint.

The Panel concludes that both the second and third elements of the Complaint have been established.

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, <foodorderinn.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: June 30, 2014