Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America, represented by The Giga Law Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondents are Domain Admin - Privacy Protection Service Inc d/b/a PrivacyProtect.org of Queensland, Australia / Raajganesh, RKPlanet of Salem, Tamil Nadu, India.
The disputed domain name <sivarajholidayinn.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2014 providing the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 4, 2014.
On April 5, 2014, the Center received an email communication from Respondent Raajganesh confirming that said Respondent is the holder of the disputed domain name.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on April 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2014. Respondents did not submit any Response. Accordingly, the Center notified Respondents’ default.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 15, 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.
Complainant is a subsidiary of InterContinental Hotels Group, an entity that owns a portfolio of several hotel brands. Complainant owns, inter alia, the following brands:
Registration No. | Trademark | Country and Region | Registration Date |
|
592541 |
HOLIDAY INN |
United States of America |
July 13, 1954 |
|
592539 |
HOLIDAY INN |
United States of America |
December 30, 1899 |
|
864359 |
HOLIDAY INN |
United States of America |
December 30, 1899 |
|
1243330 |
HOLIDAY INN |
United States of America |
December 30, 1899 |
|
1275560 |
HOLIDAY INN |
United States of America |
December 30, 1899 |
|
1281008 |
HOLIDAY INN |
United States of America |
May 6, 1984 |
|
226267B |
HOLIDAY INN |
India |
December 30, 1899 |
Complainant is the owner of several HOLIDAY INN hotels throughout the world.
The disputed domain name <sivarajholidayinn.com> was registered on February 28, 2013.
The Complainant argues the following:
That Complainant’s HOLIDAY INN brand was founded in 1952, and that said brand is used today in connection with 1,168 hotels around the world.
That it owns more than 1,700 registrations in at least 200 countries or geographic regions worldwide for trademarks that consist of, or contain the mark HOLIDAY INN.
That several UDRP panels have found that Complainant has strong rights in and to the HOLIDAY INN trademark.
That the disputed domain name wholly incorporates Complainant’s registered trademark which is sufficient to establish identity or confusing similarity, because the dominant portion of the disputed domain name is the term “Holiday Inn”.
That the term “Sivaraj” contained in the disputed domain name, consists of a personal name that does nothing to eliminate confusing similarity. Complainant asserts that even if said personal name held some trademark significance the disputed domain name would nevertheless still be confusingly similar to the Complainant’s trademarks.
That, even though the disputed domain name contains Complainant’s trademark plus a personal name, the overall impression left by the disputed domain name belongs to Complainant.
That Complainant has never assigned granted, licensed, sold, transferred or in any way authorized to Respondents the registration or use of the HOLIDAY INN trademark in any manner which is sufficient to prove the second criterion of the Policy.
That Respondents have never used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, because Respondents are using the disputed domain name in a manner that constitutes trademark infringement of the HOLIDAY INN mark, which is a situation that can never create rights or legitimate interests in a corresponding domain name.
That Respondents have never acquired any service or trademark rights in the disputed domain name and have never been commonly known by the disputed domain name.
That Respondents are clearly making a commercial and unfair use of the disputed domain name by offering hotel services without the permission or consent of Complainant.
That by using the disputed domain name, Respondents are misleadingly diverting Internet consumers and tarnishing the HOLIDAY INN trademark.
That the disputed domain name was registered for the purpose of attracting Internet users to Respondents’ website by creating a likelihood of confusion between the disputed domain name and Complainant’s trademarks.
That creating a website that appears to be owned by Complainant, is a likely fraudulent conduct that indicates an intent to deceive or bad faith with the intention for commercial gain.
That there can be no doubt that the Respondents knew of Complainant’s HOLIDAY INN trademark and of Complainant´s related domain names when it registered the disputed domain name which constitutes strong evidence of bad faith.
That Respondents’ use of Complainant’s well-known trademark HOLIDAY INN in the disputed domain name is obviously intended to impersonate Complainant, or generate an association with Complainant, which is indicative of bad faith registration.
That, since all of Complainant’s trademarks pre-date Respondent’s registration of the disputed domain name, the registration of the disputed domain name is indicative of bad faith registration under the Policy.
That the way in which the disputed domain name is being used suggests opportunistic bad faith.
Furthermore, in its amendment to the Complaint, Complainant argues that on March 25, 2014 (date on which the Complaint was filed) the Respondent’s name was “Domain Admin/ Privacy Protection Service INC d/b/a PrivacyProtect.org” and that in an obvious attempt to engage in cyberflight after the Complaint was filed, Respondent’s name was changed to “Raajganesh, RKPlanet” which constitutes as further evidence of bad faith and violates paragraph 8(a) of the Policy.
The Respondent did not file a formal Response.
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
Several UDRP panels have decided that the trademark HOLIDAY INN is well known (see, e.g., Six Continents Hotels, Inc. v. Ahmed Marzooq, WIPO Case No. D2012-0757; 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). This Panel agrees.
Complainant is the owner of several trademark registrations for HOLIDAY INN. This trademark is well-known due to its global presence and consumer recognition.
The disputed domain name <sivarajholidayinn.com> is confusingly similar to Complainant’s trademark HOLIDAY INN because it wholly incorporates Complainant´s HOLIDAY INN trademarks.
The addition of the term “Sivaraj” at the beginning of the disputed domain name does nothing to eliminate the confusing similarity between the disputed domain name and Complainant’s trademark. The dominance of the Complainant’s trademark HOLIDAY INN is clear (see Six Continents Hotels, Inc. v. The omnicorp, WIPO Case No. D2000-0541).
Complainant has proven that the term “Sivaraj” is an Indian personal name. The addition of a personal name to a well-known trademark does not give sufficient distinctiveness to the disputed domain name. Furthermore it is likely that the addition of the term “Sivaraj” would only add to the potential confusion of Internet users as to the source sponsorship and/or affiliation of the disputed domain name (see Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433).
Also, the addition of the gTLD “.com” is immaterial for purposes of the Policy. To carry into effect the identity or confusing similarity analysis, a UDRP panel must generally not take into account the gTLD “.com”, because it has no legal significance. (see Diageo p.l.c. v. John Zuccarini WIPO Case No. D2000-0541)
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. The first requirement of the Policy has been fulfilled.
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where Respondents may have rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondents (as individual, business, or other organization) have been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has argued that it has not granted, assigned, licensed, sold, transferred or in any way authorized Respondents to register or use of the HOLIDAY INN trademark in any manner. This assertion has not been denied by Respondents, which determines lack of legitimate rights on their side (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272).
Respondents have not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor have Respondents demonstrated that they have been commonly known by the disputed domain name, or that they are making a legitimate noncommercial or fair use of the disputed domain name. Respondents have not proven that they have rights in the HOLIDAY INN trademarks.
On the other hand, Complainant has shown that it is the rightful owner of several HOLIDAY INN trademarks registered worldwide, including India which is the place where Respondent Raajganesh, RKPlanet is domiciled and, where it seems to be operating a hotel which is advertised on, and which offers reservations by means of the disputed domain name
From the evidence shown by Complainant it can be asserted that the HOLIDAY INN trademark was registered in India since 1964, which means that the HOLIDAY INN brand has had commercial presence in said country for more than forty years. This situation strengthens the fact that consumers in India and throughout the world would generally relate the “Holiday Inn” term to Complainant, and its trademarks.
Based on said registrations, and the recognition of the Complainant’s HOLIDAY INN trademark worldwide, it is reasonable to infer that Respondents knew or should have known about the existence of the Complainant’s trademarks, especially considering that the Respondent Raajganesh, RKPlanet seems to be in the hospitality business.
The evidence comprised in the record shows that the disputed domain name is being used to offer hotel services in the city of Salem, India. This evidences that Respondent Raajganesh, RKPlanet is causing the disputed domain name to resolve to a web site featuring hotel services under a well-known and even famous trademark, attracting Internet users for commercial gain. This cannot be seen as a fair or legitimate use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
Since Respondents are making a commercial use of the disputed domain name without permission or consent of Complainant, and considering the well-known and famous nature of the Complainant’s HOLIDAY INN trademarks, the Panel finds no rights or legitimate interests on the side of Respondents. The second requirement of the Policy has been fulfilled.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that Respondent have registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to 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) Respondent have registered the disputed 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 Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website 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 the Respondents’ website or location or of a product or service on its website or location.
The conduct of Respondents constitutes a risk of deception and confusion among consumers. Respondents knew or must have known Complainant’s HOLIDAY INN trademarks, and thus they knew that by registering the disputed domain name, they would create confusion among Internet users searching for the Complainant’s websites and services.
Since the Respondent Raajganesh, RKPlanet offers hotel services through the web site to which the disputed domain name resolves, the Panel finds that Respondents have intentionally attempted to attract, for commercial gain, Internet users to such website, by creating a likelihood of confusion with Complainant’s famous trademark (see e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA, WIPO Case No. D2007-1143).
Therefore, the Panel finds that Respondents registered and used the disputed domain name in bad faith. The third element of the Policy has been met.
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 <sivarajholidayinn.com> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: May 29, 2014