The Complainant is InterContinental Hotels Group of Atlanta, Georgia, United States of America, represented by Gigalaw Firm, LLC, United States of America.
The Respondent is Dennis Stewart of Summerville, South Carolina, United States of America.
The disputed domain name <holidayinn.sc> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2008. On December 11, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On December 11, 2008, Dotster, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2009. The Response was filed with the Center on December 26, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 26, 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.
On December 31, 2008, prior to the appointment of the Panel, Complainant submitted a supplemental filing (“Complainant's Supplemental Filing”). The Panel has discretion whether to accept a submission that is not called for in the Rules. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2. Because Complainant's Supplemental Filing deals with matters initially raised in the Response, the Panel exercises its discretion to accept and consider Complainant's Supplemental Filing.
On January 9, 2009, prior to the appointment of the panel, Respondent submitted a Supplemental Response. The Panel has discretion whether to accept a submission that is not called for in the Rules. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2. The Response addresses only questions raised in Complainant's Supplemental Filing. The Supplemental Response also attaches the contract referenced in the Response, but which Respondent did not previously submit, because, although Respondent “requested that Complainant provide the Respondent with permission from the Holiday Inn located in South Carolina to release a copy of the Contract for services,” Complainant did not provide such permission. Respondent was unsure of its right to produce the contract “because of the rights of the company that signed the contract, and because the Respondent's Company has a “Privacy Policy” which states that the Respondent will not release this information to Third parties.” Accordingly, the Panel exercises its discretion to accept and consider the Supplemental Response.
Complainant is a member of InterContinental Hotels Group, the world's largest hotel group when measured by the number of rooms. The HOLIDAY INN mark has been in use since 1952, and has been used in connection with more than three thousand hotels worldwide. Complaint, Annex 3. Complainant has registered its HOLIDAY INN mark and the family of marks which include HOLIDAY INN in more than 180 countries and owns more than 1,500 trademark and service mark registrations, with registrations in the United States Patent and Trademark Office of the HOLIDAY INN mark dating back to July 13, 1954, and which marks show first use in commerce dating back to 1952. Complaint, Annex 4
Complainant has registered 950 domain names that include the HOLIDAY INN mark as part of the domain name. Complaint, Annex 5. Previous panels have found that the HOLIDAY INN marks are “entitled to a high level of protection due to [their] fame and notoriety.” Six Continents Hotels, Inc. v. Jan Pavlik, WIPO Case No. D2007-0472. To the same effect, see 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; SixContinents Hotels, Inc. v. The Omnicorp., WIPO Case No. D2005-1249.
Complainant's franchisor enters license agreements with the operators of Holiday Inn and Holiday Inn Express hotels. In the license agreement with the franchisee located at Charleston-Mt. Pleasant, South Carolina, who contracted with Respondent, there is a provision which prohibits the franchisee from using Complainant's name, or any other trademarks of Complainant, nor authorizing any third party to use such trademarks. The franchisee agrees “not to promote, maintain, implement or be responsible for any web site in connection with the licensed Hotel without the prior written approval of Licensor.” Complainant's Supplemental Filing, Annex B. Complainant has never given its franchisee or Respondent any right, permission, or license to use its trademark or to maintain a web site in connection with the licensed Holiday Inn hotel.
Respondent registered the domain name at issue on February 28, 2007. Respondent uses the domain name at issue to a web page on which Complainant's trademark is featured prominently. Complaint, Annex 8. The web site features a map of South Carolina divided into five regions. The user is invited to click on a region to find Holiday Inn hotels in the user's area. The HOLIDAY INN mark is used repeatedly in the text, which describes various services typically offered by any HOLIDAY INN franchisee. The Respondent has offered Holiday Inn franchisees the right to list their franchise and its services on the web site for USD 99 per month. Complaint, Annex 9.
Respondent apparently contracted with Complainant's franchisee in Charleston-Mt. Pleasant, South Carolina, for a fee of USD 290 per year. Supplemental Response, Annex A. If one clicks on the regional areas on the map, only one of the links is active, that for the “Charleston” region. Clicking on the map link for “Charleston” on is taken to the web site of the Mt. Pleasant Holiday Inn with which Respondent has a contract. The contract between Respondent and Complainant's franchisee provides that Respondent will redirect users from its web site to that of Complainant's franchisee. The contract contains no reference to or permission to use Complainant's trademarks or intellectual property. The contract appears to be a form contract developed by Respondent. It contains no privacy or confidentiality provisions. Supplemental Response, Annex A.
Complainant contends that the domain name at issue is identical to Complainant's HOLIDAY INN trademark, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that he is using the domain name at issue in good faith in connection with a contractual relationship that Respondent has with Complainant's franchisee.
Seychelles has adopted the Policy, the Rules, and the Supplemental Rules, and has selected the WIPO Arbitration and Mediation Center to provide dispute resolution services. See https://www.wipo.int/amc/en/domains/cctld/sc/index.html. 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.”
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 rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
The domain name at issue consists of Complainant's famous HOLIDAY INN trademark and the ccTLD .sc, the country code for the country of the Seychelles.1
Where a registrant selects and uses a trademark as the sole selected element in the domain name, the domain name has been found to be identical to the trademark so selected. SimthKline Beecham (Cork) Limited, SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean, WIPO Case No. D2006-1185. The Panel finds that the domain name at issue is identical to Complainant's HOLIDAY INN mark.
The fact that Respondent has entered into a contract with Complainant's franchisee to redirect users who access Respondent's web site to the web site of Complainant's franchisee does not give Respondent per se a right or legitimate interest in the use of Complainant's trademark in the domain name at issue, absent some license, permission, or authorization from Complainant or (possibly the showing of some right in Complainant's franchise, which right may be transferable). Respondent has failed on the present record to establish any of these bases, and the provided evidence shows no such right, license, permission or authorization exists. The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent is using the domain name to resolve to a web site on which Complainant's famous trademark is featured prominently and repeatedly and which gives every indication of being operated by or with the permission of Complainant. Respondent, who appears to have no license from Complainant to use their mark, is being paid by Complainant's franchisee to redirect users which arrive at the web site to which <holidayinn.sc> resolves to the web site maintained by Complainant's franchisee. Even if the precise circumstances of the registration of the domain name were not entirely clear, if Respondent had registered on instruction from the franchisee this would have breached the terms of the franchisee's license agreement with Complainant. If Respondent had registered on its own account such registration by Respondent would appear to be entirely opportunistic. In any event the above facts bring Respondent squarely within paragraph 4(b)(iv) of the Policy and constitute bad faith registration and use under the Policy.
Moreover, Complainant's trademark is famous around the world and has long been famous in the United States and in South Carolina. Respondent, a resident of South Carolina and the United States had to be aware of Complainant's famous mark at the time it registered the domain name at issue and must have known that it (Respondent) had no right or legitimate interest in the use of the mark in the domain name absent some permission, authorization, or license flowing from Complainant.
Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
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, <holidayinn.sc>, be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: January 30, 2009
1 As Complainant points out, “SC” is also the United States abbreviation for the state of South Carolina. See “Official USPS abbreviations,” from the United States Postal Service. Complaint, Annex 7.