The Complainant is Inter-Continental Hotels Corporation of Atlanta, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Mr. Tuan of Nha trang, Viet Nam / Mr. Miko of Ho Chi Minh, Viet Nam / Miss Ha Phuong of Nha Trang, Viet Nam.
The disputed domain name <intercontinental-nhatrang.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2014. On November 12, 2014, the Center transmitted by email to the registrar Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 18, 2014, the registrar Moniker Online Services, LLC transmitted by email to the Center its verification response informing that the disputed domain name was no longer registered with it and providing the relevant WhoIs.
On November 18, 2014, the Center transmitted by email to the Registrar Turncommerce, INC. DBA Namebright.Com a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar Turncommerce, INC. DBA Namebright.Com 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 the Complainant on November 24, 2014, providing the registrant and contact information disclosed by the Registrar, as well as the new Registrar information and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 2014.
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 November 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on December 23, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on January 14, 2015. 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.
A preliminary procedural issue arises in this case with reference to the identification of the proper Respondent, in light of the transfer of the disputed domain name after the filing of the Complaint to the Center, which is apparently in violation of both paragraphs 8(a) and 8(b) of the Policy and in the Panel’s opinion constitutes cyberflight. See, amongst others, LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387 and Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (defining cyberflight as “an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint”).
The Panel notes that, at the time of the filing of the Complaint by the Complainant (November 11, 2014), the disputed domain name was registered in the name of Mr. Tuan of Nha Trang, Viet Nam, through the registrar Moniker Online Services, LLC. After sending several email communications to said registrar, the Center ascertained that, on November 16, 2014, the disputed domain name had been transferred to the current Registrar and the registrant’s data were shielded through the Registrar’s privacy service. According to an email sent by the current Registrar to the Center on November 18, 2014, Mr. Miko was identified as registrant of the disputed domain name. Following the Center’s notice of change in registrant information dated November 24, 2014, the Complainant submitted an amendment to the Complaint naming Mr. Miko as second Respondent. On November 26, 2014, Mr. Tuan sent email communications to the Center stating that he no longer owned the disputed domain name as he had sold it to a third party which transferred the disputed domain name to an organization.
On the same day, the Center verified that the publicly available WhoIs records for the disputed domain name were changed, as they showed as registrant Miss Ha Phuong of Nha Trang, Viet Nam, and thus requested the Registrar to restore the registrant’s contact details as previously disclosed to the Center. The Registrar replied indicating that, due to an error in the lock of the disputed domain name, the registrant had been allowed to modify the contact information, but confirmed that, as requested by the Center, the previous disclosed data were restored, in order to have Mr. Miko as registrant of the disputed domain name, and that the disputed domain name had been locked.
On November 27 and 28, 2014, a person writing from Mr. Miko’s email address, but whose name in the email’s header was “Mr. Jack”, sent 4 email communications to the Center, and in particular the Panel notes the following communication to the Center:
“Please contact (…)@gmail.com for detail with real customer, We only buy domain for my customer...We
are a internet service company..
Thanks”
On the same day, the following message was addressed to the Center from the email address of Miss Ha Phuong (whose name in the email’s header was “Mr. Bubu”):
“Okie and Wipo and Law company Gigalaw note that: ( We do not know what is happen with Old Owner of this domain)
1) I am a new owner of this domain and but I do not send email, or call phone to IHG for sale
2) Website in [<]intercontinental-nhatrang.com[>] belong to old owner, transfer to me and I do not time
to fix and repair them
3) In website express clearly this is not a official website of IHG
4) We do not use any service to get money from customer or to do anything harmful with IHG
5) This is only a news website and No service index...
6) In footer and Introduce of website express that this is not a IHG website, very clearly
Please note all information...!
(pay attention, I am a new owner of this domain, I buy them from Travel forum on Internet, I do not
know what is action of old owner ), and Now at this time, we do not cause anything make the
confusion..!!!
Thanks!”
The Panel notes that the above-cited named registrants, Mr. Tuan, Mr. Miko and his alleged client, are all located in Viet Nam, and that the nameservers indicated in the WhoIs records as well as the use of the disputed domain name before and after the transfer of the disputed domain name from Mr. Tuan to Mr. Miko and/or his alleged client, have remained unvaried. In view of the above, the Panel is inclined to conclude that they are indeed the same person or entity or at least a group of persons acting in concert and, therefore, will consider them as a single respondent in this case.
The Panel further notes that the Panel’s findings under section 6 would not be different should they be considered as unrelated individuals, since the Complainant, as mentioned below, has proven all the substantive requirements in respect of both the previous and the current named registrant and/or his purported customer.
The Complainant belongs to the InterContinental Hotels Group (“IHG”), one of the world’s leading hotel companies. The companies within IHG own, manage, lease or franchise, through various subsidiaries, 4,760 hotels and 697,048 guest rooms, serving more than 161 million guests annually in nearly 100 countries and territories around the world.
IHG owns a portfolio of well-recognized hotel brands including InterContinental Hotels & Resorts,
Holiday Inn Hotels and Resorts, Holiday Inn Express, Crowne Plaza Hotels & Resorts, Hotel Indigo, Staybridge Suites and Candlewood Suites, EVENTMHotels and a specific China-focused brand, HUALUXE Hotels & Resorts.
The Complainant’s trademark INTERCONTINENTAL was founded in 1948 and is used today in connection with 178 hotels worldwide, including a hotel in Nha Trang, Viet Nam.
The Complainant is the owner of, amongst others, the following United States trademark registrations: No. 890271 for INTERCONTINENTAL (word mark), registered on April 28, 1970, in International classes 35, 36, 37, 38, 39, 40, 41 and 42; 3486561 for INTERCONTINENTAL (word mark), registered on August 12, 2008, in International class 43; and 2005852 for I INTERCONTINENTAL HOTELS AND RESORTS (figurative mark) registered on October 8, 1996, in International classes 35, 39, 41 and 42.
In addition, the Complainant owns the Vietnamese trademark registration No. 10576 for INTERCONTINENTAL (word mark), with priority date March 30, 1993, in classes 39 and 42.
The disputed domain name <intercontinental-nhatrang.com> was registered on November 19, 2013 and is currently not pointed to an active website. According to the screenshots submitted by the Complainant, it was used in the past in connection with a website that provided information on the InterContinental hotel in Nha Trang, viet Nam, as well as on the city of Nha Trang itself and contained also commercial links to competitive hotels.
The Complainant contends that the disputed domain name is confusingly similar to the trademark INTERCONTINENTAL, as it contains the Complainant’s trademark in its entirety in addition to the name of a city in Viet Nam, Nha Trang, where the Complainant operates a hotel, and a dash or hyphen.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name since:
- The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the trademark INTERCONTINENTAL in any manner;
- Upon information and belief, the Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
- The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name;
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark;
- The Respondent has stated that it is a “distributor” of Booking.com, an online travel agency and, as a previous panel held, “offering for sale… hotel reservations on its website [is an] activity [that] does not amount to a fan site, criticism or other activity that may be considered [noncommercial] or fair”;
With reference to the circumstances evidencing bad faith, the Complainant asserts that:
- By using the Complainant’s trademark on a website offering hotel services, the Respondent quite obviously has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the trademark INTERCONTINENTAL as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy;
- The presence of blog-like content that refers to both the Complainant’s own InterContinental hotel in Nha Trang, Viet Nam, as well as the city of Nha Trang, itself, is evidence of bad faith. The Complainant contends that this type of website has been referred to as a “splog” – that is, “[a] spam blog… which the author uses to promote affiliated websites, to increase the search engine rankings of associated sites or to simply sell links/ads”;
- The Respondent knew of the Complainant’s trademark INTERCONTINENTAL when it registered the disputed domain name, since all of the Complainant’s trademarks pre-date the Respondent’s registration of the disputed domain name, the trademark is a well-known, internationally recognized mark registered in many countries or geographic regions worldwide, including in Viet Nam, and the Complainant’s use of the disputed domain name is obviously intended to create an association with Complainant;
- Given the Complainant’s established rights in the trademark INTERCONTINENTAL in many countries or geographic regions worldwide and the fact that the disputed domain name is “so obviously connected with” the Complainant, the Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy;
- The Respondent has offered to sell the Disputed Domain Name to Complainant for USD 500.
The Complainant therefore concludes that the disputed domain name was registered and is being used in bad faith.
The Respondent did not submit a formal Response. However, as mentioned in the Procedural History (section 3), informal email communications were sent to the Center by the Respondent within the due date for Response.
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of several trademark registrations for INTERCONTINENTAL, including word trademark registrations in the United States and in Viet Nam.
The Panel finds that the disputed domain name <intercontinental-nhatrang.com> is confusingly similar to the Complainant’s marks as the additions of the dash and of the geographic term “Nha Trang” in the disputed domain name are not sufficient to distinguish the disputed domain name from the Complainant’s marks.
Moreover, the incorporation of a name of a city where the Complainant operates one of its InterContinental hotels is apt to increase the likelihood of confusion among Internet users, who might be induced to believe that the disputed domain name and corresponding website are actually operated by, or affiliated with the Complainant. See, amongst others, OLX, Inc. v. Berry Mhlongo, WIPO Case No. D2014-1657 (<olx-bangalore.com>, <olx-chennai.com>, <olx-mumbai.com> and <olx-olx.com>): “the addition of the name of a city to ‘olx’ would, as the Complainant has asserted, signify to most Internet users that any website to which such a domain name pointed comprised a website operated by the Complainant in order to provide services to that city”.
Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademark according to paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Panel notes that there has never been any relationship between the parties and that the Respondent has not been authorized to use the Complainant’s trademarks.
In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name or by a name corresponding to the disputed domain name.
According to the documents and statements submitted by the parties, there is no evidence that the disputed domain name might have been used in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Indeed, while, at the time of the drafting of this decision, the disputed domain name is not actively used, the screenshots provided by the complainant on record show that the disputed domain name was pointed in the past to a website displaying information on the Complainant’s hotels, without any clear and prominent disclaimer, and publishing links to competitive hotels. The Panel finds that such use of the disputed domain name does not qualify as bona fide and that the content published on the site was apt to mislead Internet users as to the source or affiliation of the site.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
The Complainant’s trademark INTERCONTINENTAL has been used for six decades in connection with hotel activities and enjoys a high reputation worldwide, as highlighted also in prior UDRP decisions (see, amongst others, Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661). Moreover, the Complainant operates one of its InterContinental hotels in Nha Trang, Viet Nam, where the Respondent appears to be based.
In view of the above, the Panel finds that the Respondent was or ought to be aware of the Complainant’s trademark when registered the disputed domain name, on November 19, 2013, incorporating both the Complainant’s trademark and the geographic term “Nha Trang”.
Furthermore, the pointing of the disputed domain name to a website providing information on the Complainant’s hotel in Nha Trang, along with links to competitive hotels, demonstrates that the Respondent was actually aware of the Complainant and its trademark.
The Panel shares the view of a number of panels finding “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868, “it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to the use of the disputed domain name, in light of the content of the Respondent’s website, as described above and evidenced by the printouts submitted by the Complainant, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the cyberflight occurred in the present case is a further indication of bad faith registration and use under paragraph 4(b). See, e.g., Dr. lng. h.c. F. Porsche AG v. PrivacyProtect.org and Nikolay Belomelski, WIPO Case No. D2013-0978.
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <intercontinental-nhatrang.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: January 27, 2015