|Kläger||RRI Financial, Inc.|
|Entscheider||Page, Richard W.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RRI Financial, Inc., v. Ray Chen
Case No. D2001-1242
1. The Parties
Complainant is RRI Financial, Inc. ("Complainant" or "RRI") a corporation of the State of Nevada located at 2835 South Jones Boulevard, Suite 8, Las Vegas, Nevada 89146, USA.
Respondent is Ray Chen ("Respondent" or "Chen") an individual located at 20380 Town Center Lane, Suite 270, Cupertino, California 95014, USA.
2. The Domain Names and Registrar
The domain names at issue are <1800redroof.com>, <1888redroof.com> and <1877 redroof.com> (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.
3. Procedural History
On October 12, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On October 16, 2001, the Center received hardcopy of the Complaint. On October 16, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On October 18, 2001 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On October 19, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On November 9, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On November 21, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
Complainant has seven registered trademarks ("RED ROOF Trademarks"), each registered for "motel services" with the United States Trademark Office:
1. RED ROOF
Reg. No. 1,579,616
2. RED ROOF INN
Reg. No. 984,159
3. RED ROOF INNS
Reg. No. 2,225,575
4. RED ROOF INNS
Reg. No. 2,224,076
5. RED ROOF INN & SUITES
Reg. No. 2,285,336
6. RED ROOF INN
Reg. No. 2,319,148
7. THE ROOF
Reg. No. 1,580,823
Complainant RRI Financial, Inc., and its predecessors in interest, have been using the RED ROOF Trademarks since at least as early as 1972 in connection with hotel and motel services.
Respondent Ray Chen registered <1800redroof.com>, <1888redroof.com> and <1877redroof.com> ("the Domain Names") with Network Solutions, Inc., on January 6, 2000.
Since learning of Mr. Chens registrations, the Complainant, through its attorneys, has tried repeatedly to contact Mr. Chen and inform him that he is infringing on the Complainants RED ROOF Trademarks. On April 25, 2001 and again on May 21, 2001, cease and desist letters were sent to Mr. Chen and, on July 26, 2001, to Mr. Chens administrative contact identified for each of the Domain Names.
The Complainants first cease and desist letter (sent on April 25, 2001 by Federal Express to the address Mr. Chen provided to Network Solutions) was returned to the Complainant with a notation that Mr. Chen is no longer with the company located at that address. The Complainants second cease and desist letter, sent on May 21, 2001 to the same address, was refused because, according to the receptionist at that location, there is no one named Ray Chen at that address. The Complainants third cease and desist letter, sent on July 26, 2001 to Mr. Chens administrative contact for the Domain Names, was signed for by Li Chen on July 30, 2001, but Complainant has yet received no response to the letter.
Complainant learned of the third Domain Name, <1877redroof.com>, after sending the second cease and desist letter, but before sending the letter of July 26, 2001. Therefore, <1877redroof.com> is mentioned in the July 26, 2001 letter only.
5. Parties Contentions
A. Complainants contentions
i) Complainant contends that it has numerous registrations of the RED ROOF Trademarks.
ii) Complainant argues that the Domain Names are confusingly similar to the RED ROOF Trademarks, pursuant to Paragraph 4(a)(i) of the Policy. The Domain Names only distinguishable characteristic from the Complainants registered trademark is that the Domain Names add an "18**" prefix to the Complainants RED ROOF Trademarks. However, Complainant uses "1800REDROOF" in its various Red Roof Inn advertising, promotional materials and on Complainants website. In addition, the Complainants operating affiliates currently use all three of the telephone numbers, 1-800-REDROOF, 1-888-REDROOF, and 1-877-REDROOF (identical to those contained in the Domain Names), to provide customers with toll-free telephone access to general hotel information and reservations.
Complainant further argues that the RED ROOF Trademarks and the Domain Names are confusingly similar because the "18**" prefix has no trademark significance. In other words, the Domain Names "18**" prefix, not found in the registered mark RED ROOF, does not make the Disputed Domain Names "different" for purposes of trademark protection. Complainant alleges that the test for likelihood of confusion is whether the marks create the same overall impression. Visual Information Institute v. Vicon Industries, 209 USPQ 179 (TTAB 1980). Complainant concludes that "Red Roof" and "18**redroof.com" give the same overall impression and thus, RED ROOF and 18**REDROOF.COM are confusingly similar.
Complainant further argues that the likelihood of confusion between the Domain Names and the RED ROOF Trademarks is heightened due to the fact that the Complainants affiliates use 1-8**-REDROOF as their own telephone number. In fact, the domain name registration of a corporations own name or trademark in the form of "1800[name/trademark].COM" is a common practice among large corporations, as is illustrated by the following list of domain names and registrants:
Domain Name Owner
<1800gillette.com> The Gillette Company
<1800hitachi.com> Hitachi America, Ltd.
<1800landsend.com> Lands End, Inc.
<1800metlife.com> Metropolitan Life Insurance
<1800thrifty.com> Thrifty Rent-A-Car System, Inc.
<1800cadillac.com> Capitol Cadillac
<1800micron.com> Micron Technology
iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Complainant alleges that the Respondent, Ray Chen, is not a licensee of the Complainant, nor is he authorized to use Complainants marks.
iv) Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Complainant alleges that the Respondents registration of domain names that resemble the trademarks of others is a pattern. For example, according to the WHOIS record, the Respondent has registered not only the three Domain Names, but also the domain name <1800princess.com>, which is the phone number used by the famous Princess Cruises and highly resembles the PRINCESS trademark (Reg. No. 1,654,535).
Complainant alleges that the Respondent has not used the Domain Names, or made preparations to use the Domain Names, prior to the initiation of this complaint.
Complainant further alleges that Respondent failed to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
Complainant further alleges that the Respondent has never been commonly known as 1800REDROOF.COM, 1888REDROOF.COM or 1877REDROOF.COM. In fact, 1-800-REDROOF, 1-888-REDROOF and 1-877-REDROOF are the telephone numbers for Complainants affiliates.
Complainant further alleges that the Respondent is not making a legitimate non-commercial or fair use of the Domain Names, without intentionally diverting customers or tarnishing the RED ROOF Trademarks.
B. Respondents contentions
i) Respondent does not dispute that the Complainant has registrations of the RED ROOF Trademarks.
ii) Respondent does not dispute Complainants allegations that the Domain Names are confusingly similar to the RED ROOF Trademarks.
iii) Respondent does not dispute Complainants allegation that Respondent has no rights to or legitimate interests in the Domain Names.
iv) Respondent does not dispute Complaints allegation that Respondent registered or used the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc., v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (WIPO April 10, 2001), n. 3.
Prove Up of Elements
Even though Respondent has failed to file a Response or to contest Complainants assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the 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) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant alleges without rebuttal that it has numerous registrations of the RED ROOF Trademarks. Registered trademarks are valid and subsisting, and serve as prima facie evidence of its ownership and the validity of the RED ROOF Trademarks. 15 U.S.C. 1115. The RED ROOF Trademarks are incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. 1065 and 115(b).
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2001). It is the Sole Panelist's belief that Respondent has not met its burden.
Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the RED ROOF Trademarks.
Identity or Confusing Similarity
Complainant further contends that the Domain Names are confusingly similar to the RED ROOF Trademarks pursuant to the Policy paragraph 4(a)(i).
Respondent has not contested the assertions by Complaint that the Domain Names are confusingly similar to the RED ROOF Trademark.
As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainants registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of descriptive or non-distinctive terms in the domain name does not affect a finding that a domain name is confusingly similar to the complainants registered trademark.
The Sole Panelist notes that the entirety of the RED ROOF Trademarks is included in each of the Domain Names.
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 23:50 (4th ed. 1998).
The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name.
Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (May 9, 2000) ("The addition of a hyphen to the registered mark is an insubstantial change.").
The phrases "1-800," "1-888" and "1-877" are commonly used toll-free numbers in the United States. Therefore, the use of these phrases is descriptive and non-distinctive.
Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the RED ROOF Trademarks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc., v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Complainant alleges that the Respondent, Ray Chen, is not a licensee of the Complainant, nor is he authorized to use Complainants marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Complainant has alleged that it has searched and found no evidence of any of the nonexclusive methods by which the Respondent can show he has rights or legitimate interest in the Domain Names. Therefore, Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names.
The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Actual or Constructive Knowledge
One factor found to support a finding of bad faith is Respondents knowledge of the Complainants mark when Respondent registered the Domain Names. Complainant has alleged, without refutation, that Respondent had constructive knowledge of the RED ROOF Trademarks.
The Sole Panelist finds that Respondent had constructive notice of the RED ROOF Trademarks, as a trademark search on the date of the registration of the Domain Names would have revealed Complainants registrations the United States. Actual or constructive knowledge of the Complainants rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondents knowledge of complainants mark at the time of registration of the domain name suggests bad faith).
Failure to Respond to Requests to Transfer
A second factor is Respondents refusal to voluntarily transfer the contested Domain Names. The Complainant alleges that it sent numerous cease and desist letters to Respondent without receiving a response.
Use of Entire Mark Without Plausible Good Faith Use
A third factor is the use of Complainants entire mark in the Domain Names, thus making it difficult to infer a legitimate use of the Domain Names by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainants entire trademark. In light of Cellular Ones trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, paragraph 7.
Respondents Domain Name uses the entirety of Complainants trademark, namely the phrase "Red Roof." No plausible explanation exists as to why Respondent selected the name RED ROOF as part of the Domain Names other than to trade on the goodwill of Complainant. Despite numerous contacts by Complainants counsel, Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Names in order to benefit from the well-known RED ROOF Trademarks.
Respondent has failed to come forward with any facts to contradict the assertions of Complainant.
The evidence establishes: (i) constructive knowledge by Respondent of Complainants rights in the RED ROOF Trademarks upon the registration of the Domain Names; (ii) Respondents failure to positively respond to Complainants request for transfer; and (iii) the use of Complainants entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith.
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainants RED ROOF Trademarks, (b) that Respondent has no rights or legitimate interests in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to RRI Financial, Inc.
Richard W. Page
December 11, 2001