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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Larry Goodwyn d/b/a Hoteldiscounters
Case No. D2003-0208
1. The Parties
The Complainant is Six Continents Hotels, Inc. ("Six Continents"), an entity organized and existing under the laws of Delaware, United States of America ("USA") maintaining its principal place of business in Atlanta, Georgia, USA.
The Respondent is Larry Goodwyn d/b/a Hoteldiscounters, an individual resident of Heath, Texas, USA.
2. The Domain Names and Registrar
The disputed domain name is <cheap-holiday-inn-hotels-accomodation.com> registered with Wild West Domains, Inc. of Scottsdale, Arizona, USA. (The domain name misspells the word "accommodation.")
3. Procedural History
Six Continents filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2003. The Center subsequently 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").
The Center notified the Respondent of the Complaint on March 20, 2003. The Respondent submitted no response to the Complaint. The Center appointed the undersigned as Sole Panelist in this matter on May 1, 2003.
4. Factual Background
Complainant is the franchisor of more than 2,900 HOLIDAY INN hotels located in more than 70 countries throughout the world. Complainant and predecessor entities have used HOLIDAY INN as a service mark in the United States since 1952. Complainant owns numerous registrations comprising the words HOLIDAY INN in the field of hotel services. Complainant sponsors an "official" online reservations website associated with the domain name <holiday-inn.com>.
Respondent operates an Internet website under the trade name and domain name <hoteldiscounters.com>. According to evidence submitted by Complainant, the website operated by Respondent characterizes itself as a "global reservations network" offering "Cheap & Budget Hotel Accomodations Worldwide" (Complaint Ex. F). Visitors to the "hoteldiscounters.com" site are able to place online reservations with HOLIDAY INN and other well-known hotel brands, allegedly at the "lowest rates" available.
In December 2002, Respondent registered the domain name <cheap-holiday-inn-hotels-accomodation.com>. As of May 15, 2003, that domain name resolved to the "hoteldiscounters.com" website operated by Respondent. When entered in the YAHOO! search engine on May 15, 2003, the query, "CHEAP HOLIDAY INN HOTELS ACCOMMODATIONS", resulted in a display of both (a) the "hoteldiscounters.com" website in the number 1 position and (b) banner advertising for the "Holiday Inn Official Site."
Complainant does not allege that HOLIDAY INN franchisees are prohibited from doing business with Respondent or listing their HOLIDAY INN hotels with Respondent. Complainant nevertheless alleges that Respondent registered and is using the domain name <cheap-holiday-inn-hotels-accomodation.com> in bad faith within the meaning of the Policy, because according to Complainant, Respondent’s registration and use of that name creates "a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or of Registrant’s hotel reservation services provided by its Website" (Complaint ¶ 11.C.w), because Respondent is allegedly "diverting Internet traffic intending to go to Complainant’s website for hotel reservation services to Respondent’s own Website" (id. ¶ 11.C.x), and because "Internet users who reserve rooms for a HOLIDAY INN hotel through Respondent’s website may not receive the same benefits they would if they reserve rooms through Complainant’s authorized websites" (id. ¶ 11.C.aa).
5. Parties’ Contentions
Complainant contends that the domain name <cheap-holiday-inn-hotels-accomodation.com> is confusingly similar to registered service marks comprising HOLIDAY INN in which Complainant has rights. Complainant further contends that Respondent has no rights or genuine interests in the domain name <cheap-holiday-inn-hotels-accomodation.com>. Finally, Complainant alleges the domain name <cheap-holiday-inn-hotels-accomodation.com> was registered and is being used in bad faith.
Respondent has served no response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy entitles a Complainant to seek an administrative transfer of a second level Internet domain name in the event that it "proves," to the satisfaction of the Panel, three predicates: (1) an accused domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) a registrant has no rights or legitimate interests in respect of the accused domain name; and (3) a registrant’s domain name has been registered and is being used in bad faith. A fact is "proved," for purposes of the Policy, when it is "more likely to be true than not true based on the evidence." Ciccone v. Parisi, WIPO Case No. D2000-0847 (October 12, 2000).
The Respondent has served no response to the Complaint. The failure of a Respondent to controvert facts alleged in a Complaint permits, but does not require, an inference that the Respondent admits the truth of a Complainant’s allegations. E.g., Cingular Wireless LLC v. Aceves, WIPO Case No. D2003-0154 (April 21, 2003). Under the Policy, the Complainant bears the burden of proving facts sufficient to justify an administrative transfer of the disputed domain name.
The Panel is fully satisfied that HOLIDAY INN constitutes a famous mark and is entitled to a high degree of protection. But even giving Complainant the benefit of inferences permissible from the Respondent’s failure to serve a Response to the Complaint, the Panel is not satisfied that the evidence submitted by Complainant is sufficient to carry its burden of proof in this proceeding.
A. Similarity of the Disputed Domain Name and Complainant’s Marks
With regard to the issue of confusing similarity, the accused domain name does, as Complainant alleges, incorporate the HOLIDAY INN mark owned by Complainant. But contrary to Complainant’s view, this fact does not ipso facto render the accused domain name "identical or confusingly similar" to the service mark HOLIDAY INN.
The accused domain name comprises a phrase that describes services offered by Respondent at the "hoteldiscounters.com" site. Cf. Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 351-52 (9th Cir. 1969) ("Modern Volkswagen Porsche Service" for a repair shop held not to infringe the admittedly famous VOLKSWAGEN mark owned by the plaintiff). See also Giddings & Lewis LLC v. McKean, WIPO Case No. D2000-1150 (March 14, 2001) (registration and use of domain name <used-fadals.com>, by a dealer of used FADAL machine tools, did not violate the Policy; Complaint dismissed).
Complainant’s reliance on the Volvo Trademark Holding AB v. E-Motor Ltd., WIPO Case No. D2002-0036 (March 22, 2002) (<volvoinsurance.com> held confusingly similar to VOLVO) and BP plc v. Kang-Sung Kun Portraits Production, Case No. D2001-1097 (November 14, 2001) (<bpjapan.com> held confusingly similar BP) is misplaced. In those cases, the disputed domain names could readily be seen as formative versions of the marks owned by the Complainants, and as falsely identifying or referring to the registrants. Here, by contrast, the domain name <cheap-holiday-inn-hotels-accomodation.com> clearly refers to a commodity, not the registrant or any other person; and the words "holiday inn" refer to genuine HOLIDAY INN hotel services that are offered for sale at the "hoteldiscounters.com" website with the consent of the participating hotels.
In sum, the Complainant has not proved, to the Panel’s satisfaction, that the descriptive phrase comprising the accused domain name is "identical or confusingly similar to" the service mark HOLIDAY INN or any HOLIDAY INN formative mark cited in the Complaint.
B. Rights or Legitimate Interests
On the face of the Complaint, the Respondent is admitted to be a legitimate reseller of hotel services rendered by, among others, authorized HOLIDAY INN franchisees. As used in the disputed domain name, the words "holiday inn" refer to the actual name and brand of hotel services that Respondent actually offers for sale via a commercially functioning website. Complainant makes no allegation that the "hoteldiscounters.com" site is deceptively dressed or marked in any way.
In these circumstances the Complainant has not proved, to the Panel’s satisfaction, that Respondent has no rights or legitimate interests in respect of the accused domain name. As in the Volkswagen case cited above, the Respondent is using "holiday inn" to identify the true origin of hotel services that Respondent is actually and legitimately offering for sale as an independent broker. Cf. Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (former Playboy Playmate of the Year permitted to use the PLAYBOY mark to identify herself on a website, notwithstanding that the defendant in that case had no ownership interest in the PLAYBOY mark); DaimlerChrysler A.G. v. Drummonds, WIPO Case No. D2001-0160 (July 11, 2001) (retail dealer of genuine MERCEDES parts and accessories had legitimate interests in domain name <mercedesshop.com>; Complaint dismissed).
C. Bad Faith Registration and Use
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances which, if found by a Panel to be present, constitute "evidence of the registration and use of a domain name in bad faith." The Policy makes clear that a "bad faith" determination can be based on circumstances other than the four examples listed in Paragraph 4(b) of the Policy.
Based on Exhibit F to the Complaint and the Panel’s independent examination of the "hoteldiscounters.com" website to which the accused domain name resolves, the Panel is not satisfied that the accused domain name was either registered or is being used in "bad faith" within the meaning of the Policy. It is doubtless true, as Complainant alleges, that the accused domain name is intended to attract consumers looking for "cheap HOLIDAY INN hotels." But if genuine HOLIDAY INN hotels are in fact offering cheap rates and advertising those rates via Respondent’s website, and if a presentation of this fact attracts visitors, such "diversion" is not the result of "confusion" and does not constitute evidence of "bad faith" conduct on the part of Respondent. The accused domain name is fully consistent with an intent on Respondent’s part to identify genuine HOLIDAY INN hotel services offered via the "hoteldiscounters.com" website. Complainant has presented no evidence that any person, "intending to go to Complainant’s website," would likely do so by typing in "cheap-holiday-inn-hotels-accomodation.com." Complainant also has been less than candid in not disclosing to the Panel that the domain name <holidayinn.com> is registered to a Canadian entity and does not resolve to "Complainant’s website."
Complainant asserts that bad faith is inferable from the fact that the "hoteldiscounters.com" website offers various third-party-branded hotel services, not merely HOLIDAY INN hotel services. In the Panel’s view, this fact tends to weaken, rather than strengthen, the Complainant’s argument. That Respondent offers, under the descriptive trade name <hoteldiscounters.com>, hotel services offered by various third parties in addition to HOLIDAY INN franchisees, tends to reinforce the already clear implication that Respondent is an independent broker not affiliated with any particular hotel brand. Complainant has proffered no evidence that Respondent has any economic incentive for its customers to prefer any one of the various well-known hotel brands offered at <hoteldiscounters.com>.
Equally unpersuasive is Complainant’s assertion that persons who make HOLIDAY INN reservation through <hoteldiscounters.com> may not receive the same benefits that they would receive if reservations were made through the "official" reservations site maintained by Complainant. The same could be said about any discount vendor of branded goods. For reasons Complainant has not attempted to explain, numerous authorized HOLIDAY INN franchisees have chosen to make their room facilities available for reservation through Respondent and the "hoteldiscounters.com" website. Complainant would have this Panel make it more difficult for Internet users to find these legitimate reservation listings offered on the "hoteldiscounters.com" website. The Panel declines to do so.
I find in favor of the Respondent. The disputed domain name comprises a descriptive phrase that is neither identical nor, in the Panel’s judgment, confusingly similar to service marks in which Complainant has rights. Complainant has not proved to my satisfaction that the Respondent has no rights or legitimate interests in the disputed domain name. Complainant also has not proved to my satisfaction that the disputed domain name was registered and is being used in bad faith. It is, therefore, ordered and adjudged that the Complaint be and hereby is dismissed.
James W. Dabney
Dated: June 6, 2003