The Complainant is Six Continents Hotels, Inc., of Georgia, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, of United States.
The Respondent is EnterSports Inc., of Florida, United States.
The disputed domain name <holidayinnsc.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 22, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 22, 2009, GoDaddy.com, Inc. 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 December 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 21, 2009.
The Center appointed Ira S. Sacks as the sole panelist in this matter on January 28, 2009. 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.
The Complainant in this administrative proceeding is a Delaware corporation and is one of a number of companies collectively known as the InterContinental Hotels Group. Companies within that group own, manage, lease or franchise, through various subsidiaries, more than 4,000 hotels and 585,000 guest rooms in nearly 100 countries and territories around the world.
The InterContinental Hotels Group owns a portfolio of hotel brands including “Holiday Inn Hotels and Resorts”, “Holiday Inn Express”, “InterContinental Hotels & Resorts”, “Crowne Plaza Hotels & Resorts”, “Hotel Indigo”, “Staybridge Suites” and “Candlewood Suites”, and also manages the hotel loyalty program, Priority Club Rewards.
The Complainant's HOLIDAY INN brand was founded in 1952 and today is used (along with the “Holiday Inn Express” brand) in connection with 3,223 hotels worldwide, which collectively offer 416,975 hotel rooms.
The Complainant (or its affiliates) own more than 1,515 trademark registrations in at least 184 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOLIDAY INN, including the following registrations in the United States:
Mark | Reg. No. | Date of First Use | Date of Registration |
|
HOLIDAY INN |
592,541 |
July 1, 1952 |
July 13, 1954 |
|
HOLIDAY INN |
592,539 |
March 1, 1952 |
July 13, 1954 |
|
HOLIDAY INN |
864,359 |
1957 |
January 28, 1969 |
|
HOLIDAY INN |
1,061,893 |
1949 |
March 22, 1977 |
|
HOLIDAY INN |
1,243,330 |
May 19, 1982 |
June 21, 1983 |
|
HOLIDAY INN |
1,275,560 |
December 1, 1982 |
April 24, 1984 |
|
HOLIDAY INN |
1,281,008 |
July 13, 1982 |
June 5, 1984 |
|
HOLIDAY INN |
1,330,101 |
October 31, 1983 |
April 9, 1985 |
Furthermore, the Complainant is the registrant of at least 950 domain names that consist of or contain the mark HOLIDAY INN or variations thereof and has submitted a list of the registrations in an annex to the Complaint.
According to the concerned registrar's WhoIs database, the Respondent in this administrative proceeding is “EnterSports Inc.” with an address in Jacksonville, Florida.
In the absence of any Response, there is little information available about the Respondent except that it has used the domain name in issue as the address of a website that at one time advertised hotels in direct competition with the Complainant's business.
The domain name at issue was registered on October 12, 2002.
The Complainant submits that the domain name <holidayinnsc.com> is identical or confusingly similar to the HOLIDAY INN trademark in which the Complainant has rights.
Previous panels appointed under the Policy have found that the Complainant has strong rights in and to the HOLIDAY INN trademark. Six Continents Hotels, Inc. v. TRANSLINER CONSULTANTS, WIPO Case No. D2008-0502; Six Continents Hotels, Inc. v. Jan Pavlik, WIPO Case No. D2007-0472; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659; and Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249.
The Complainant submits that the domain name <holidayinnsc.com> consists of a combination of the Complainant's HOLIDAY INN trademark in its entirety and the letters “sc” an abbreviation for the state of South Carolina in the United States. The Complainant owns or operates approximately 49 “Holiday Inn” and “Holiday Inn Express” hotels in South Carolina.
The Complainant further refers to decisions of previous panels appointed under the Policy that have found that the use of one of the Complainant's HOLIDAY INN trademarks in its entirety in combination with a geographic term in a domain name creates a domain name that is confusingly similar to the relevant HOLIDAY INN trademark. The Complainant refers in particular to the decisions of the panels in Six Continents Hotels, Inc. v. GBT Domains For Sale and Lease, WIPO Case No. D2008-1309 (in ordering transfer of domain name <holidayinnphiphi.com>); Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (in ordering transfer of domain name <holidayinnmanassas.com>); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987 (in ordering transfer of domain name <holidayinnexpressnewnan.com>; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986 (in ordering transfer of domain name <watsonvilleholidayinn.com>; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388 (in ordering transfer of domain name <dubaiholidayinn.com>; and Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384 (in ordering transfer of domain name <holidayinnexpressburl.com>).
The Complainant refers to each of the cases mentioned in the previous paragraph and submits that the addition of a geographical name to its trademarks actually serves to increase the likelihood of confusion rather than distinguishing the domain name from the Complainant's trademarks or service marks.
The Complainant also submits that “[t]he 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 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Alleging that the Respondent has no rights or legitimate interests in the domain name <holidayinnsc.com>, the Complainant states that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the HOLIDAY INN trademarks in any manner. Citing the decisions of panels in Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098; and Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610, the Complainant submits that this fact, on its own, can be sufficient to prove the second criterion of the Policy.
The Complainant submits that, upon information and belief, the Respondent has never used, or made preparations to use, the domain name <holidayinnsc.com> or any name corresponding to the domain name <holidayinnsc.com> in connection with a bona fide offering of goods or services.
The Complainant further alleges that the Respondent has used the domain name <holidayinnsc.com> in connection with a website that falsely appears to be associated with the Complainant and offers services in competition with Complainant. A printout of the home page of Respondent's website using the domain name <holidayinnsc.com> has been furnished as an annex to the Complaint. The printout (which redirects to http://all-lasvegas.com/california/holiday-inn-sc.htm) shows that Respondent is displaying minimal information about a single Holiday Inn hotel along with prominent and numerous advertisements for competitive services, such as those labeled “San Clemente Inn”, “LaJolla Beachfront Hotel” and “Last-Minute Hotel deals”, plus a search engine for finding “travel deals”.
The Complainant cites the following decisions under the Policy to support its submission that such use is clearly not bona fide under the Policy and, therefore, does not confer upon Respondent any rights or legitimate interests in the domain name <holidayinnsc.com> under paragraph 4(c)(i) of the Policy: Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (“Respondent is attracting traffic by creating confusion among Complainant's customers, by using a domain name that is confusingly similar to Complainant's trademarks, and re-directing such traffic to Complainant's site for a profit. Such use cannot be deemed a bona fide offering of goods or services.”); and The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 124516 (“It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use under Policy [paragraph] 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark uses the domain name to earn a profit without approval of the holder of the mark.”)
The Complainant states that, to its knowledge, the Respondent has never been commonly known by the domain name <holidayinnsc.com> and has never acquired any trademark or service mark rights in the domain name <holidayinnsc.com>.
The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the domain name <holidayinnsc.com>, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant's HOLIDAY INN trademarks. Rather, the Respondent has made an illegitimate, commercial, unfair use of the domain name <holidayinnsc.com>, with intent for commercial gain misleadingly to divert consumers. Specifically, the Complainant submits that the Respondent has used the domain name <holidayinnsc.com> to advertise services that compete with the services offered by the Complainant under the HOLIDAY INN trademark. Such use clearly is for commercial gain and obviously misleads consumers into believing that the website is somehow associated with the Complainant. “Respondent's predatory use of the domain name as the address of a website that, at one time, advertised hotel services competing with the Complainant's business does not constitute a bona fide use of the domain name.” Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease, WIPO Case No. D2008-1309; Countrywide Financial Corporation v. Texas International Property Associates, NAF Claim No. 1075750 (“The disputed domain names in this case resolve to search engine websites, most of which appear to offer products and services in direct competition with those offered by Complainant. Respondent's use of these websites is neither a bona fide offering of goods or services pursuant to Policy, Paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, Paragraph 4(c)(iii).”); and Western Union Holdings, Inc. v. Anna Valdieri, WIPO Case No. D2006-0884 (“A respondent that has and is confident of its rights or legitimate interests in a website, might be expected to invest more in it than this Respondent. As such, the nature of the site itself is suggestive of a lack of rights or legitimate interests.”).
Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name <holidayinnsc.com>.
The Complainant further submits that the domain name <holidayinnsc.com> was registered and is being used in bad faith.
The Complainant also submits that the Respondent has registered the domain name <holidayinnsc.com> primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy.
As noted above, the Respondent has used the domain name <holidayinnsc.com> in connection with a website that falsely appears to be associated with Complainant by redirecting visitors to “http://all-lasvegas.com/california/holiday-inn-sc.htm”, a page that displays minimal information about Holiday Inn hotels along with prominent and numerous advertisements for competitive services, such as those labeled “San Clemente Inn”, “LaJolla Beachfront Hotel” and “Last-Minute Hotel deals”, plus a search engine for finding “travel deals.” Accordingly, Respondent is a competitor to Complainant because, like Complainant, Respondent is selling hotel services. And, by selling these services under Complainant's trademark (without permission), Respondent is clearly disrupting Complainant's business. “The deliberate adoption of Complainant's well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant's demonstrated use of the domain names to link to other service sites, including accommodation and vacation sites… demonstrates bad faith use.” Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996.
The Complainant furthermore submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the HOLIDAY INN trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website, in violation of paragraph 4(b)(iv) of the Policy.
There can be no doubt that the Respondent knew of Complainant's HOLIDAY INN trademarks when it registered the domain name <holidayinnsc.com>, leading to evidence of bad faith. The Complainant's HOLIDAY INN trademarks are well-known, internationally recognized marks registered in at least 184 countries or geographic regions worldwide. This demonstrates that the Respondent must have not only been aware of Complainant's marks, but even knew of Complainant's related domain names and constitutes strong evidence of bad faith. See Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; and Marriott International, Inc. v. Momm Amed Ia, NAF Claim No. 95573.
The Complainant additionally submits that a further indication of bad faith under the Policy is the fact that the Complainant's HOLIDAY INN trademarks pre-date the Respondent's registration of the domain name <holidayinnsc.com> by 50 years. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4 states that “[w]here a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant's trademark registration preceded the respondent's domain name registration, respondent was presumed to have notice of the trademark.”
Moreover, given the Complainant's established rights in the HOLIDAY INN trademarks in 184 countries or geographic regions worldwide and the fact that the domain name <holidayinnsc.com> is “so obviously connected with” Complainant, Respondent's actions suggest “opportunistic bad faith” in violation of the Policy. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
Finally, counsel for Complainant sent a demand letter to the Respondent on November 24, 2008. The Respondent has never responded to this letter, nor has the Respondent responded to any of the notices sent in relation to this proceeding. Such failure to respond provides “strong support for a determination of ‘bad faith' registration and use.” Encyclopaedia Britannica, Inc. v. John Zucarini and the Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330. See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant.)
Accordingly, the Complainant submits that the domain name <holidayinnsc.com> was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has established that it has substantial rights in the trade mark and service mark HOLIDAY INN.
The domain name at issue, <holidayinnsc.com>, is comprised of a combination of the words “holiday”, “inn” and the letters “sc” an abbreviation for the state of South Carolina in the United States of America. In the view of this Panel the domain name is confusingly similar to the trademark HOLIDAY INN in which the Complainant has rights.
In reaching this conclusion this Panel is satisfied that Complainant's trademark is the dominant element of the domain name. This Panel further accepts the Complainant's submission that the combination of its trademark with the name of South Carolina, where Complainant owns or operates approximately 49 “Holiday Inn” and “Holiday Inn Express” hotels, would serve to add to such confusion rather than distinguish the mark and the domain name.
The Complainant has therefore established the first element of paragraph 4(a) of the Policy.
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name at issue. The Complainant has argued that the Respondent could not have any such rights given the Complainant's rights in the HOLIDAY INN mark and the extent of its reputation across the world.
The Complainant has provided evidence of a substantial reputation in the use of the HOLIDAY INN mark that stretches across the globe.
The Respondent has an address in Jacksonville, Florida and there is no apparent connection between the Respondent and South Carolina.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name at issue. It has been accepted by most panelists that in such circumstances under the Policy, the burden of proof shifts to the Respondent to demonstrate that it has such rights.
The Respondent's predatory use of the domain name as the address of a website that, at one time, advertised hotel services competing with the Complainant's business does not constitute a bona fide use of the domain name.
The Respondent has failed to file any Response or to deliver any communication in this proceeding. In the circumstances the Complainant is entitled to succeed on the second element of paragraph 4(a) of the Policy also.
Given the substantial international reputation of the Complainant, it is improbable the Respondent was unaware of the Complainant's marks when he registered the domain name at issue. The Complainant's use of the HOLIDAY INN mark pre-dates the Respondent's registration of the domain name <holidayinnsc.com> by about 50 years.
In the view of this Panel, the fact that the Respondent chose the distinctive combination of the words “holiday” and “inn” in combination with the geographical place name of South Carolina, where the Complainant has established numerous hotel businesses, indicates that the Respondent was actually aware of the Complainant's rights and reputation in the use of the HOLIDAY INN mark when he registered the domain name at issue.
On the balance of probabilities the Panel finds that the Respondent chose this particular domain name because the combination of these elements was more likely to divert Internet users searching for the Complainant's enterprise to the Respondent's website.
This Panel is satisfied that the Respondent chose and registered this particular Internet domain name in order to take advantage of the Complainant's trademark rights and reputation.
The Respondent established a website at the domain name address that advertised hotels that operate directly in competition with the Complainant's business.
This Panel is therefore satisfied that, on the balance of probabilities, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's HOLIDAY INN trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on Respondent's website.
In the circumstances, this Panel is satisfied that that on the balance of probabilities the Respondent registered and is using the domain name in bad faith.
The Complainant has therefore also established the third element of paragraph 4(a) of the Policy and is entitled to succeed in its Complaint.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <holidayinnsc.com> be transferred to the Complainant.
Ira S. Sacks
Sole Panelist
Dated: February 2, 2009