The Complainant is Six Continents Hotels, Inc., of Atlanta, Georgia, of the United States of America, represented by The Gigalaw Firm, LLC, of the United States of America.
The Respondent is GBT - Domains For Sale and Lease, of the Bailiwick of Jersey.
The disputed domain name <holidayinnphiphi.com> is registered with Tucows Inc..
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2008.
On August 28, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue.
On August 28, 2008, Tucows 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”), 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 September 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2008.
The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 24, 2008.
The Center appointed James Bridgeman as the sole panelist in this matter on October 7, 2008. 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 and 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 of America:
|
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 registrar's Whois database, the Respondent in this administrative proceeding is “GBT - Domains For Sale and Lease” with an address on the Island of Jersey.
In the absence of any Response there is little information available about the Respondent except that it has been a respondent in a number of other proceedings under the Policy referred to in the Complaint and 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 February 9, 2004.
The Complainant submits that the domain name <holidayinnphiphi.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 viz. 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 <holidayinnphiphi.com> consists of a combination of the Complainant's HOLIDAY INN trademark together with the geographic term “phiphi”. The Phi Phi Islands are located in Thailand, between the large island of Phuket and the western Andaman Sea. The Complainant operates a HOLIDAY INN hotel in the Phi Phi Islands, Thailand.
The Complainant further refers to decisions of previous panels appointed under the Policy that have found that the use of the Complainant's HOLIDAY INN trademark in its entirety in combination with a geographic term in a domain name creates a domain name that is confusingly similar to the relevant mark. The Complainant refers in particular to the decisions of the learned panels in 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 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 and service marks.
Furthermore the Complainant refers to the reasoning of the panel in Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC, WIPO Case No. D2007-0034 and submits that “adding an additional word or phrase when the dominant feature of the domain names is complainant's mark does not obviate any confusion.”
The Complainant also submits that in any event, “[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 <holidayinnphiphi.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 learned 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 <holidayinnphiphi.com> or any name corresponding to the domain name <holidayinnphiphi.com> in connection with a bona fide offering of goods or services.
The Complainant further alleges that the Respondent has used the domain name <holidayinnphiphi.com> in connection with a website that offers services in competition with Complainant. A printout of the home page of Respondent's website using the domain name <holidayinnphiphi.com> has been furnished as an annex to the Complaint. The printout shows links to hotels in the Phi Phi Islands other than the Complainant's hotel.
The Complainant cites the following decisions under the Policy to support its submission that such use demonstrates that the Respondent has no rights or legitimate interest in the domain name at issue: Six Continents Hotels, Inc. v. TRANSLINER CONSULTANTS, WIPO Case No. 2008-0502 (finding no rights or legitimate interests where “it appears that Respondent has used the disputed Domain Name [<holidayinntombstone.com>] to direct consumers to websites that offered hospitality services in competition with Complainant.”); Nationwide Mutual Insurance Company v. Domain Administration Limited, c/o David Halstead, WIPO Case No. D2006-1490 (agreeing with the complainant's contention that a website with no connection to the complainant “other than to profit from misdirecting those looking for information on the Complainant” is not a bona fide offering of goods or services); Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922 (“us[ing] the domain names to divert traffic to websites that offer… services in competition with the Complainant… is not a bona fide offering of goods or services.”); MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550 (“the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant's trademark, do not confer a legitimate right to or interest in a domain name.”); and Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan, WIPO Case No. D2004-0366 (“a skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors” is not a bona fide offering of goods or services).
After counsel for the Complainant sent a demand letter to the Respondent about the domain name in dispute on July 18, 2008, a copy of which is annexed to the Complaint, the Respondent deleted the website associated with the disputed domain name. The Complainant submits that this action however, does nothing to negate Respondent's prior activity.
The Complainant furthermore argues that inactivity with respect to a domain name may still violate the Policy, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding “passive holding” of a domain name in violation of the Policy); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468 (ordering a transfer even though the respondent “ha[d] not used the domain name to develop a website”); and Fulham Football Club (1987) Limited v. fulhamfc.com/Belize Domain Services, WIPO Case No. D2001-0335 (complainant “need not wait for direct harm before seeking redress in [a Policy] proceeding.”).
The Complainant states that to its knowledge, the Respondent has never been commonly known by the domain name <holidayinnphiphi.com> and has never acquired any trademark or service mark rights in the domain name <holidayinnphiphi.com>.
The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the domain name <holidayinnphiphi.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 <holidayinnphiphi.com>, with intent for commercial gain misleadingly to divert consumers. Specifically, the Complainant submits that the Respondent has used the domain name <holidayinnphiphi.com> to direct consumers to websites that offer hospitality services in competition with Complainant. Such use clearly is for commercial gain. “Merely using a disputed domain name in connection with a ‘portal site' does not establish a legitimate interest in respect of the disputed domain name. Decisions under the Policy are replete with examples of such uses by respondents who fail to establish legitimate interests.” Grundfos A/S v. Manila Industries Inc., WIPO Case No. D2006-1295; see also True Value Company v. Jucco Holdings, NAF Case No. 684382 (“Respondent likely receives click-through fees for diverting consumers” to websites of the complainant's competitors). By using the domain name <holidayinnphiphi.com> in connection with a website that offers sponsored links, “Respondent is clearly making a commercial use of the domain name, with intent for commercial gain”. ALK-Abelló A/S v. Manila Industries Inc., WIPO Case No. D2006-1033; see also Wal-Mart Stores, Inc. v. Modern Limited – Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322 (“DomainSponsor apparently pays money to affiliated websites when they are apt to derive Internet traffic to third parties' websites, by using ‘Pay Per Click as the primary means of generating revenue'. This fact strongly supports Complainant's contention that Respondent is using the Domain Name for the purpose of making a profit.”).
Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name <holidayinnphiphi.com>.
The Complainant submits that the domain name <holidayinnphiphi.com> was registered and is being used in bad faith.
The Complainant submits that the Respondent has registered the domain name <holidayinnphiphi.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 <holidayinnphiphi.com> in connection with a website that offers services competitive with those offered by the Complainant, namely, hospitality services. This usage clearly indicates that the Respondent “intentionally uses the domain name… aiming to profit from Complainant's renowned trademark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant's, disrupting Complainant's business.” Six Continents Hotels, Inc. v. NA InterMos, WIPO Case No. D2006-1313. This constitutes bad faith in violation of the Policy.
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 <holidayinnphiphi.com>, leading to evidence of bad faith. The Complainant's HOLIDAY INN trademarks are well-known, internationally recognized marks registered in 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 Case No. 95573.
The Complainant further 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 <holidayinnphiphi.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 <holidayinnphiphi.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.
Additionally, the Complainant submits that the Respondent has acted in bad faith because it registered the domain name in order to prevent the owner of the trademark or service mark [Complainant] from reflecting the mark in a corresponding domain name… [and has] engaged in a pattern of such conduct under paragraph 4(b)(ii) of the Policy.
Clearly, the Complainant is prevented from registering the domain name <holidayinnphiphi.com> to identify its own HOLIDAY INN hotel in the Phi Phi Islands, and the Respondent's pattern of conduct is indicated by at least 16 other domain names it registered that were the subject of proceedings under the Policy (each of which targeted, as here, the owners of trademarks in the hospitality industry). ACCOR v. GBT, WIPO Case No. D2005-0809 (transfer of <novotelgarden.com> and <novotelgardenplaza.com>); and Marriott International, Inc. v. GBT - Domains For Sale and Lease, NAF Claim No. 1153595 (transfer of <marriottbangkok.com>, <bangkokmarriott.com>, <pattayamarriott.com>, <krabimarriott.com>, <chinamarriott.com>, <marriottchina.com>, <marriottsydney.com>, <renaissanceharbourview.com>, <marriottchateau.com>, <ledramarriott.com>, <jwmarriotthongkong.com>, <jwmarriottresort.com>, <marriottsingapore.com>, and <courtyardberlin.com>). Such “prior decisions against the Respondent on the issue of bad faith do constitute a pattern of the kind referred to in paragraph 4(b)(ii) of the Policy.” Usborne Publishing Limited v. Texas International Property Associates - NA NA, WIPO Case No. D2007-1913.
Finally, counsel for Complainant sent a demand letter to Respondent on July 18, 2008. The Respondent replied on July 26, 2008, stating: “We have contacted the respective parties to remove the site and this should be operational within 24 hours.” Although, as stated above, the Respondent did in fact remove the website, Respondent has failed to transfer the domain name <holidayinnphiphi.com> to Complainant and has failed to respond to further communications from counsel for Complainant.
The Complainant submits that such failure by the Respondent to positively 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 <holidayinnphiphi.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, <holidayinnphiphi.com>, is comprised of a combination of the words “holiday”, “inn” and the geographical place name “phiphi”. 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 the Phi Phi Islands, where one of the Complainant's hotels is located, 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.
It is notable that the Respondent has an address in Jersey and there is no apparent connection between the Respondent and Thailand.
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 <holidayinnphiphi.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 the Phi Phi islands, where the Complainant has established a hotel business, 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 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 web site.
This Panel is satisfied that the Respondent chose and registered this particular Internet domain name in order to take predatory advantage of the Complainant's 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.
While each complaint under the Policy stands on its own merits, a panel is entitled to take a pattern of registrations into consideration in certain circumstances. This Panel is further affirmed in concluding that the domain name was registered and is being used in bad faith by the fact that the Respondent was found to have engaged in similar activity in relation to other hotel groups in previous proceedings under the Policy viz. ACCOR v. GBT, WIPO Case No. D2005-0809; and Marriott International, Inc. v. GBT - Domains For Sale and Lease, NAF Claim No. 1153595, referred to in the Complaint.
The Complainant has therefore also established the third element of paragraph 4(a) of the Policy and is entitled to succeed in its application.
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 <holidayinnphiphi.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: October 22, 2008