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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Leading Hotels of the World Ltd v. Interdynamic S.A.
Case No. D2001-1435
1. The Parties
The Complainant is The Leading Hotels of the World Ltd, a New York
corporation with its principal place of business at New York, NY, U.S.A.
The Complainant is represented by Abelman, Frayne & Schwab, Attorneys
of New York, NY, U.S.A.
The Respondent is Interdynamic S.A., a Greek corporation with an address
in Heraklion, Crete, Greece. The Respondent is represented by its Managing
Director, Mr. Jimmy Sophios.
2. The Domain Names and Registrar
The domain names at issue are <worldleadinghotels.net>, <leading-hotels.net>
and <greekleadinghotels.com>. The domain names are registered with
Tucows Inc. of Toronto, Canada ("the Registrar"). The three
names were first registered with the Registrar on June 11, 2000,
June 15, 2001 and June 15, 2001 respectively.
3. Procedural History
The Complaint submitted by the above Complainant was received on December 7, 2001,
(electronic version) and December 11, 2001, (hard copy) by the
World Intellectual Property Organization Arbitration and Mediation Center
On December 17, 2001, a request for Registrar verification was
transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the
Complainant as requested by WIPO Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy ("Supplemental Rules"), paragraph
- Confirm that the domain names at issue are registered with it.
- Confirm that the person identified as the Respondent is the current
registrant of the domain names.
- Provide full contact details, i.e., postal address(es), telephone
number(s), facsimile number(s), email address(es), available in the Registrar’s
WHOIS database for the registrant of the disputed domain names, the technical
contact, the administrative contact and the building contact for the domain
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP")
was in effect.
- Indicate the current status of the domain name.
By email dated December 17, 2001, the Registrar advised WIPO
Center as follows:
- It is the Registrar of the domain names in question.
- The Respondent is shown as the "current registrant" of
the domain names. Mr. Jimmy Sophios is shown as the administrative
and billing contact.
- The UDRP Policy is in effect.
- The domain name registrations are currently on "hold"
- The Registrar has currently incorporated in its agreements for Uniform
Domain Name Dispute Resolution Policy adopted by the Internet Corporation
for Assigned Names and Numbers ("ICANN") (hereinafter simply
The advice from the Registrar that the domain names in question are on
"hold" status indicates the Respondent has not requested that
the domain names at issue be deleted from the domain name database. The
Respondent has not sought to terminate the agreement with the Registrar.
Accordingly, the Respondent is bound by the provisions of the Policy. The
Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of
the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy
("Rules"), the WIPO Center on December 18, 2001, transmitted by
post-courier and by email a notification of the Complaint and Commencement
of Administrative Proceedings to the Respondent. A copy of the Complaint
was also emailed to the Registrar and ICANN.
- The Complainant elected to have its Complaint resolved by a sole
Panelist; it has duly paid the amount required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was
required within 20 calendar days. The Respondent was also advised
that any Response should be communicated, in accordance with the Rules,
by four sets of hard copy and by email. A Response was filed by the Respondent
on January 6, 2002 (electronic) and January 6, 2002 (hard
- WIPO Center invited the Honorable Sir Ian Barker QC
of Auckland, New Zealand, to serve as Panelist in the case.
- The Panelist duly advised acceptance and forwarded to the WIPO Center
an executed declaration of impartiality and independence. The Panel finds
that the Administrative Panel was properly constituted in accordance with
the Rules and the Supplemental Rules.
- On January 15, 2002, WIPO Center forwarded to the Panel
by courier the relevant submissions and the record. In terms of Rule 5(b),
in the absence of exceptional circumstances, the Panel is required to
forward its decision by January 29, 2002.
- However, on January 17, 2002, the Center received an e-mail communication
from the Complainant with a further statement in accordance with the UDRP
Policy. The e-mail noted that in the Response dated January 5, 2002,
the Respondent omitted the concluding statement required under Paragraph
5(b)(viii) of the Rules. The e-mail was forwarded to the Panel. The Panel
therefore instructed WIPO Center to issue an order that the Respondent
provide the concluding statement under Paragraph 5(b)(viii) of the Rules
within 2 working days. No response was received from the Respondent.
4. Factual Background
(1) The Complainant is the registered owner of the following service
marks in the United States of America registered by the United States
Patent and Trademark Office under the Principal Register:
- THE LEADING HOTELS OF THE WORLD, Trademark Registration No. 1433355;
- THE LEADING HOTELS OF THE WORLD (SPECIAL SCRIPT), Trademark
Registration No. 1516816;
- THE LEADING HOTELS OF THE WORLD (AND DESIGN), Registration No. 1520255.
The Complainant has registered and has applied to register as trademarks
THE LEADING HOTELS OF THE WORLD, THE LEADING HOTELS OF THE WORLD (SPECIAL
SCRIPT), THE LEADING HOTELS OF THE WORLD (AND DESIGN), THE LEADING SMALL
HOTELS OF THE WORLD and THE LEADING HOTELS OF THE WORLD LUXURY ALLIANCE
(AND DESIGN) collectively referred to as the LHW trademarks)
throughout the world. In Greece, the Complainant has trademark registration
for "The Leading Hotels of the World" and "The Leading
Small Hotels of the World" plus two associated services marks.
The Complainant has used the mark THE LEADING HOTELS OF THE WORLD continuously
since January 1976 in domestic, interstate and international commerce as
a trademark to refer to its services in respect of hotel reservations, marketing,
promotion and advertising. The Complainant has invested considerable sums
in promoting the LHW trademarks. It actively monitors their
use by member hotels in order to maintain a high-end brand image of hotels
of consistent luxury standards.
As a result of its long domestic and international sales activities for
73 years, the Complainant has become well-known throughout the world,
and in particular, in the luxury travel industry, in respect of its services
offered under the LHW trademarks. The Complainant has received
numerous awards and international recognition in the travel industry. The
Complainant currently uses their LHW trademarks in approximately
380 member hotels in approximately 75 countries throughout the world, including
5. Parties’ Contentions
The domain names <worldleadinghotels.net>, <leading-hotels.net>
and <greekleadinghotels.com> are identical or confusingly similar
to the Complainant’s LHW trademarks in terms of visual, phonetic
and semantic reference in that they contain or otherwise incorporate the
Complaint’s registered trademarks. The addition of the word "Greek"
in the domain name <greekleadinghotels.com> is not distinctive and
acts only as a geographic reference in respect of the Complainant’s LHW
The Respondent has no rights or legitimate interests in respect of the
domain names that are the subject of this Complaint because:
A. The Respondent was aware of the Complainant’s rights in respect
of the LHW trademarks and deliberately adopted the disputed
domain names with the intent to trade-off the Complainant’s goodwill and
reputation in respect of its LHW trademarks. This is supported
by the following facts:
(i) The Complainant has registered or applied to register and
has used the LHW trademarks prior to the registration
of the domain names. The Complainant is well-known throughout the
world in association with the LHW trademarks, and in
particular, in the luxury travel industry.
(ii) The domain names <leading-hotels.net> and <greekleadinghotels.com>
link to the domain name <worldleadinghotels.net>. The domain
name<worldleadinghotels.net> is used to refer to an active website
for online hotel travel reservations and membership services in respect
of hotel reservations. These services which are also offered on the
Complainant’s website at <lhw.com>.
(iii) The content of the Respondent’s website at <worldleadinghotels.net>
uses the Complainant’s trademarks THE LEADING HOTELS OF THE WORLD
and THE LEADING SMALL HOTELS OF THE WORLD on the web page at the domain
name <worldleadinghotels.net>. This use of Complainant’s marks
(iv) The content of the Respondent’s website at <worldleadinghotels.net>
uses similar language to refer to its membership services as the Complainant
does for the same or similar services referred to on the Complainant’s
website at <lhw.com>, which was registered on July 16, 1996.
(v) The content of the Respondent’s website at <worldleadinghotels.net>
uses identical pictures to depict the hotels as the Complainant uses
on its website at <lhw.com> and in its trade directories and
other promotional material for the same or similar services.
B. The Respondent is not commonly known as or otherwise uses as a
company, business or trade name the domain names the subject of their
Complaint. The Respondent registered the domain name in question after
the Complainant’s mark was registered and well-established.
The Respondent is using the domain names <worldleadinghotels>,
<leading-hotels.net> and <greekleadinghotels.com> for commercial
gain at the expense of the Complainant’s accrued goodwill in respect of
their LHW trademarks and with the intent misleadingly to
divert consumers. The Respondent requests a fee for its customer membership
services and thus usurps the reservation commission systems of the Complainant
for the same or similar services.
C. The domain names <worldleadinghotels.net>, <leading-hotels.net>
and <greekleadinghotels.com> have been registered and are being
used in bad faith for the following reasons:
(a) the domain names <leading-hotels.net> and <greekleadinghotels.com>
link to the domain <worldleadinghotels.net>. The domain name
<worldleadinghotels.net> is being used as at the time of filing
this Complaint to refer to a web page which provides: (a) online hotel
reservation services; and (b) offers, for a fee, customer membership
services in respect of hotel reservation services.
(b) 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 mark as to the source, sponsorship,
affiliation or endorsement of the website and the products and services
offered on the website.
(c) The Complainant initially became aware of the Respondent’s
registration of the domain name <worldleadinghotels.net> on
or about July 19, 2001. The Complainant wrote to the Respondent
on August 30, 2001 and requested it cease use of THE LEADING
HOTELS OF THE WORLD and THE LEADING SMALL HOTELS OF THE WORLD and
cancel or assign the domain name <worldleadinghotels.net>. The
Complainant requested a response on October 1, 2001. No
response from the Respondent has been received.
(d) Since August 31, 2001 the Respondent has increased the scope
of its activities under the domain name <worldleadinghotels.net>
in respect of its online hotel reservation services by: (a) including
additional countries in which they offer online hotel reservation
services, and (b) including additional hotels.
(e) The Respondent’s domain names link to a website which uses
the Complainant’s registered trademarks "THE LEADING HOTELS OF
THE WORLD" AND "THE LEADING SMALL HOTELS OF THE WORLD".
The website also uses the following terms which are identical or confusingly
similar to the Complainant’s registered trademarks: "International
Leading Hotels of the World", "The Best Luxury Hotels of
the World", "The Great Hotels of the World" and "The
Finest Hotels of the World".
The use of the Complainant’s LHW trademarks, and numerous
expressions are identical or confusingly similar to the complainant’s
LHW trademarks, is intentional deception of consumers
seeking to show that the Respondent’s website is, or is affiliated
with, the Complainant.
The content of the Respondent’s website at <worldleadinghotels.net>
gives a description of the membership services similar to the description
given by the Complainant at its website at <lhw.com> for the
same or similar services and uses identical pictures to depict hotels
in respect of the same or similar services offered by the Complainant.
(f) The content of the website refers to the Complainant but does
not refer to the Complainant’s hotel reservation or membership services.
For example, the website states:
"The Elite Membership Card (that you will soon receive after
you sign up), gives you extra privileges in each Hotel you visit,
such as special discounts to the hotel’s services and facilities.
The hotels of this site are members of the best international hotel
associations such as "The Leading Hotels of the World, Ltd…"
This statement on the website suggests that the hotel reservation
services offered by the Respondent at their website are those of the
Complainant or otherwise have the sponsorship, affiliation or endorsement
of the Complainant.
(g) The Respondent’s membership services offered at the website
at <worldleadinghotels.net> are deliberately designed to deceive
consumers that such services are those of or associated with the Complainant
in respect of the Complainant’s services offered under their LHW
trademarks. The Respondent fails to state the membership services
organization involved and merely offers customers an opportunity to
become a "member".
(h) The Respondent’s services offered at the website at <worldleadinghotels.net>
are intentionally designed to trade-off the goodwill of the Complainant
in respect of the Complainant’s LHW trademarks and profit
therefrom. There is no indication of the Complainant’s services offered
under the LHW trademarks or any link to the Complainant’s
website. By taking online hotel reservations and requesting membership
fees the Respondent is attempting wrongfully to gain from the reputation
of the Complainant in respect of its LHW trademarks.
The Respondent has used the disputed domain names primarily for the
purpose of disrupting the business of a competitor and improperly
profiting from their goodwill. The domain name <worldleadinghotels.net>
is used for the same or similar services of the Complainant. The website
allows a visitor to review a hotel by reference to the Complainant’s
LHW trademarks and make hotel reservations online. By
using the Complainant’s LHW trademarks and trademarks
identical or confusingly similar thereto the Respondent is attempting
to divert customers from the Complainant and profit therefrom.
The use of the LHW trademarks by the Respondent is
unsupervised. The Complainant has established a high brand image in
respect of their LHW trademarks and actively maintains
and monitors standards for the use of the LHW trademarks
by member hotels. Hotels which fail to meet the standard of luxury
in respect of their hotel services are unable to use the LHW
The unsupervised use of the LHW trademarks by the Respondent
on the website at <worldleadinghotels.net> may dilute and tarnish
the reputation and high brand image of the LHW trademarks
and otherwise injure the Complainant’s customers and member hotels.
The holder of a trade name, registered at the Board of Trade, has the right
to file for a domain name. This just does not guarantee the use of a domain
name through the internet if the holder of the trade name has not registered
it as a domain name.
Respondent has been in the travel agency business for 30 years, providing
services to the top end of the market. Part of the service involves informing
clients about what hotels are available, including hotels that are members
of associations such as the Complainant’s. Respondent operates a number
of domain sites for various categories in the travel business. Respondent
claims the right to categorize and organize products under relative sites
as the best way of providing information to customers. The hotels involved
authorize information about themselves including photographs being displayed
on the internet.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy,
is to show:
- That the domain names registered by the Respondent are identical
or confusingly similar to a trademark or service mark in which the
Complainant has rights;
- That the Respondent has no legitimate rights or interests in
respect of the domain names; and
- The domain names have been registered and
used in bad faith.
The domain name <worldleadinghotels.net> is obviously confusingly
similar to the Complainant’s marks "The Leading Hotels of the World".
The domain name <leading-hotels.net>, although it does not specify
a global coverage, is also confusingly similar to the Complainant’s marks.
The words "leading hotels" indicate "leading hotels"
anywhere in the world.
The domain name <greekleadinghotels.com> is in a slightly different
category. However, the Panel considers that the domain name is confusingly
similar in that it indicates a particular country subset of leading hotels
of the world. In other words, an internet user, interested in accessing
detail on the Greek hotels included under the "Leading Hotels of the
World" banner, would think that the "leading hotels" of Greece
had been placed in a separate website to save the user facing a list of
numerous country sites. Similar views were reached in other WIPO decisions,
(a) British Broadcasting Corporation v Renteria (D2000-0050
– trademark BBC, offending domain names <bbclondres.com>, <bbcespanol.com>).
(b) AT&T Corp v WorldclassMedia.com (D2000-0553,
trademark AT&T, offending domain names <attmexico.com> and <att-latinamerica.com>).
(c) Axel Springer Verlaq A.G. v Fritsche (D2000-1335,
trademark BILD, offending domain name <bild-dominicanacom>).
In each of these decisions, with which the Panel respectfully agrees, there
was a geographical word alongside a well-known mark. This addition does
not sufficiently or necessarily distinguish the domain name from the brand
in the mind of consumers. In the present case, consumers of high-quality
accommodation products would assume an association with the Complainant
of a domain site for the leading hotels of a particular country which is
a well-known tourist destination, i.e. Greece.
The Response demonstrates a lack of appreciation of the Policy when it
refers to a registered trade name not guaranteeing the right to use that
trade name as a domain name. The Policy is concerned with the rights of
holders of trade and/or service marks not to have those marks reflected
in domain names with which they have no connection. The Complainant owns
marks: this fact entitles it to bring proceedings under the Policy and which
have been acquired and are being used in bad faith.
The Respondent was given no right to use the names in any way by the Complainant.
It is actively using the Complainant’s marks in its websites without
any authority from the Complainant. It offers similar services to the Complainant
and uses identical images for hotels as does the Complainant. Moreover,
the domain names <leading-hotels.net> and <greekleadinghotels.com>
link to the domain name <worldleadinghotels.net>. Since August 31, 2001,
Respondent has added further hotels to its website for which it will take
reservations. The Complainant has therefore proved the second criterion
primarily for the reasons enunciated in the Complainant’s submissions which
are accepted by the Panel.
Obviously, as a travel agent for 30 years, the Respondent knew of
the Complainant’s marks at the time of registration of the disputed domain
names. Since then, it has blatantly and actively used the Complainant’s
marks on its websites, as well as in some of its marketing strategies. The
potential for confusion and diversion of customers is obvious. Moreover,
there is a grave risk of tarnishment of the marks from such unauthorized
use, given the Complainant’s concerns to maintain quality standards amongst
the hotels in its portfolio.
In the view of the Panel, bad faith registration and use is convincingly
proved in this case. Another reason for that finding lies in the Respondent’s
disregard of the Complainant’s "cease and desist" letter. The
Respondent has offered no explanation for not replying.
For the foregoing reasons, the Panel decides:
(a) That the domain names registered by the Respondent are confusingly
similar to the trademarks to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect
of the domain names; and
(c) The Respondent’s domain names have been registered and are being
used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires
that the registration of the domain names <worldleadinghotels.net>,
<leading-hotels.net> and <greekleadinghotels.com> be transferred
to the Complainant.
Hon. Sir Ian Barker Q.C.
Dated: January 28, 2002