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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels Inc. v. Mindwerk, Kevin M. Manhan

Case No. D2006-1074

1. The Parties

The Complainant is Six Continents HotelsAtlanta, Georgia, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Mindwerk, Kevin M. Manhan, Fargo, North Dakota, United States of America.

2. The Domain Names and Registrar

The disputed domain names <candlewoodfargo.com>, <candlewoodsuitesfargo.com>, <staybridgefargo.com>, and <staybridgesuitesfargo.com> (collectively, the “Disputed Domain Names”) are all registered with The Name IT Corporation DBA Name Services.net (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2006. On August 25, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names at issue. On September 13, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center 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”).

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 September 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on October 18, 2006.

The Center appointed Steven Auvil as the sole panelist in this matter on November 1, 2006. 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.

4. Factual Background

Complainant is one of a number of companies collectively known as the InterContinental Hotels Group (“IHG”), purportedly the world’s largest hotel group by number of rooms. Companies within IHG own, manage, lease, or franchise, through various subsidiaries, more than 3,600 hotels and 537,500 guest rooms in nearly 100 countries and territories around the world. IHG owns a portfolio of well-recognized and respected hotel brands, including without limitation, InterContinental Hotels & Resorts, Crowne Plaza Hotels & Resorts, Hotel Indigo, Holiday Inn Hotels and Resorts, Holiday Inn Express, Staybridge Suites and Candlewood Suites.

Complaint owns at least 118 registrations or applications in at least 60 countries or geographic regions worldwide for trademarks that consist of or contain the mark STAYBRIDGE (the “STAYBRIDGE Trademarks”). Complainant is the owner of the following U.S. Federal Registrations for trademarks consisting of the word STAYBRIDGE: Reg. No. 2,908,784 for STAYBRIDGE (Date of Registration: December 7, 2004; Date of First Use: December 2, 1988); Reg. No. 2,257,830 for STAYBRIDGE SUITES (Date of Registration: June 29, 1999; Date of First Use: December 2, 1988); and Reg. No. 2,304,373 for STAYBRIDGE SUITES logo (Date of Registration: December 28, 1999; Date of First Use: December 2, 1988). Complainant is also the registrant of at least 122 domain names that consist of or contain the mark STAYBRIDGE, STAYBRIDGE SUITES, or variations thereof.

Complainant also owns at least 63 registrations or applications in at least 34 countries or geographic regions worldwide for trademarks that consist of or contain the mark CANDLEWOOD (the “CANDLEWOOD Trademarks”). Complainant is the owner of the following U.S. Federal Registrations for trademarks consisting of the word CANDLEWOOD: Reg. No. 2,025,101 for CANDLEWOOD (Date of Registration: December 24, 1996; Date of First Use: August 7, 1995); Reg. No. 2,463,743 for CANDLEWOOD CUPBOARD (Date of Registration: June 26, 2001; Date of First Use: October 10, 1997); Reg. No. 2,282,959 for CANDLEWOOD SUITES (Date of Registration: October 5, 1999; Date of First Use: December 23, 1997); and Reg. No. 2,555,801 for EGUARANTEE A SUITE ANYTIME: “www.candlewoodsuites.com” (Date of Registration: April 2, 2002; Date of First Use: May 16, 2001). Complainant is also the registrant of at least 29 domain names that consist of or contain the mark CANDLEWOOD, CANDLEWOOD SUITES, or variations thereof.

Respondent did not respond to Complainant’s contentions. However, Complainant submitted evidence that Respondent is a founder of a company known as Mindwerk, Inc. (“Mindwerk”), which has an office in Fargo, North Dakota. Complainant also submitted evidence that Mindwerk created a website for a Homewood Suites hotel, a competitor of Complainant, doing business in Fargo, North Dakota. Respondent also has a mailing address in Fargo, North Dakota.

Respondent registered all of the Disputed Domain Names with the Registrar on October 6, 2005. Complainant has submitted documentation evidencing that at one time three of the Disputed Domain Names (<candlewoodfargo.com>, <candlewoodsuitesfargo.com> and <staybridgessuitesfargo.com>) were previously used by Respondent in connection with the website for the Homewood Suites hotel that Respondent designed (Respondent used the domain names to point to this web site). Complainant has submitted documentation evidencing that, on June 26, 2006, Complainant’s counsel sent a letter to Respondent regarding the Disputed Domain Names demanding that Respondent cease and desist from using the Disputed Domain Names and agree to transfer the Disputed Domain Names to Complainant. Complainant states that, in response to this letter, Respondent ceased using the Disputed Domain Names in connection with the web site for a Homewood Suites hotel in Fargo, North Dakota. However, Respondent did not agree to transfer the Disputed Domain Names to Complainant. Instead, Complainant submitted documentation evidencing that, on the very same day that Complainant sent its cease and desist letter, Respondent responded by e-mail as follows:

“This is my official response. The domains do not point to a site for the Homewood like you have said, or listed. I don’t know where you are getting this from, anyone can make a screenshot. The domains are for sale, if your client would like to buy them, I would consider selling them. Let me know.”

Complainant submitted documentation evidencing that one month later, on July 26, 2006, Complainant’s counsel sent an e-mail to Tom Kasper, general manager of the Homewood Suites hotel in Fargo, North Dakota, regarding the Disputed Domain Names. Complainant’s counsel also copied Rebecca S. Wyatt, Senior Vice-President of Homewood Suites Brand Management. The e-mail stated, in pertinent part:

“[G]iven your hotel’s apparent relationship with Mr. Mahan [he designed the hotel’s web site], I request that you contact Mr. Mahan and urge him to transfer the domain names <candlewoodfargo.com>, <candlewoodsuitesfarvo.com>, <staybridgefargo.com>, and <staybridgesuitesfargo.com> to IHG, as stated in my letter to him.”

Complainant submitted documentation evidencing that, on the very same day, Mr. Kasper replied:

“Kevin Mahan did create a web site for the Homewood Suites in Fargo. I will pass this letter on to the investment group for the Homewood Suites as no one in my office authorized or was aware of these other sites being created and utilized to redirect potential customers to our web site. If I can be of further assistance please let me know.”

Complainant submitted documentation evidencing that, on the very same day, Ms. Wyatt replied via e-mail, copying Respondent, and stating in pertinent part:

“Kevin [Mahan], as someone acting on behalf of one of our hotels, we [Homewood Suites] expect you to adhere to both our standards and to operate in an ethical manner. I look forward to hearing that this has been amicably resolved.”

On August 2, 2006, Respondent replied via e-mail as follows:

“Homewood Suites by Hilton of Fargo, had no knowledge of our firm buying domain names. As for them forwarding to the Homewood Website, that is completely untrue and no one here would partake in such unethical behavior. I would appreciate it if your demands were geared towards Mindwerk, and once again if you would like to engage in the legalities of the matter, you may do so. The comments you have made below are slanderous towards me and my firm, so like I said before if you want to buy them you are more than able to make an offer on the domain names. If you think that these threats are going anywhere, they are not, and if you engage in anymore slanderous activities, you will be hearing from my lawyers.”

Complainant brought this proceeding seeking to gain control of the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are confusingly similar to their STAYBRIDGE Trademarks and CANDLEWOOD Trademarks, respectively, and that Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized Respondent to register or use any of the STAYBRIDGE Trademarks or the CANDLEWOOD Trademarks in any manner. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that the Disputed Domain Names were registered and are being used in bad faith. Complainant requests that the Disputed Domain Names be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain names registered by Respondent; and

(3) that the domain names registered by Respondent have been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed representations, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Complainant owns the STAYBRIDGE Trademarks and the CANDLEWOOD Trademarks, providing them with federal rights under the Lanham Act. The Disputed Domain Names literally incorporate Complainant’s STAYBRIDGE, STAYBRIDGE SUITES, CANDLEWOOD, and CANDLEWOOD SUITES trademarks, respectively, and were registered several years after Complainant began using and obtained federal trademark registrations for the STAYBRIDGE Trademarks and the CANDLEWOOD Trademarks. The only differences between Complainant’s STAYBRIDGE, STAYBRIDGE SUITES, CANDLEWOOD, and CANDLEWOOD SUITES trademarks and the Disputed Domain Names are the Disputed Domain Names’ references to the city of Fargo and the functional “.com” domain name suffix.

“It has previously been held in very many other proceedings before WIPO Panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing[ly] similar to the trademark.” Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 § 6(A) (October 9, 2003) (ordering transfer of <volvopolska.com>). Moreover, Complainant’s STAYBRIDGE, STAYBRIDGE SUITES, CANDLEWOOD, and CANDLEWOOD SUITES trademarks are the dominant portions of the respective Disputed Domain Names in which each is incorporated, considering that the term “Fargo” is geographically descriptive of a location.

Further, previous WIPO panels have held that the use of a complainant’s trademark plus a geographic term in a domain name renders the domain name confusingly similar to a complainant’s trademark where the complainant has hotels in the referenced area. See Six Continents hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388 (panel transferred the domain names <crowneplazadubai.com> and <dubaiholidayinn.com> to complainant); Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (panel transferred the domain name <holidayinnmichigan.com> to complainant); Six Continents Hotels, inc. v. Albert Jackson, WIPO Case No. D2003-0922 (panel transferred the domain name <holidayinncocoabeach.com> to Complainant).

The Panel concludes that each of the Disputed Domain Names is confusingly similar to one or more of Complainant’s registered STAYBRIDGE, STAYBRIDGE SUITES, CANDLEWOOD, and CANDLEWOOD SUITES trademarks.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Complainant contends that Respondent has no rights or legitimate interests in any of the Disputed Domain Names. Respondent has not submitted any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent is commonly known by any of the Disputed Domain Names. Respondent was not licensed by Complainant to use the STAYBRIDGE Trademarks or the CANDLEWOOD Trademarks, or all or any of them.

Moreover, nothing in the record suggests that Respondent has at any time used the Disputed Domain Names in connection with a bona fide offering of goods or services, or that Respondent is commonly known by any of the Disputed Domain Names. Respondent has not presented any arguments or evidence that he is making a legitimate noncommercial or fair use of one or all of the Disputed Domain Names. Instead, it appears from the record that Respondent used at least three of the Disputed Domain Names in connection with Mindwerk’s website for the Homewood Suites hotel, a competitor of Complainant, operating in Fargo, North Dakota, the city in which Mr. Mahan himself resides. The record indicates that Respondent did this without Homewood Suites hotel management’s knowledge. In fact, the record indicates that Homewood Suites hotel management disapproved of what Respondent did. It is well-established that use of a domain name containing one entity’s trademark in connection with a web site for a competitive entity is not a bona fide offering of goods or services. See, e.g., Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922 (“us[ing] the domain names to divert traffic to websites that offer hotel reservation services in competition with the Complainant . . . is not a bona fide offering of goods or services.”).

For these reasons, the Panel concludes that Respondent has no rights or legitimate interest in any of the Disputed Domain Names.

C. Registered and Used in Bad Faith

Finally, Complainant persuasively argues that Respondent has registered and used the Disputed Domain Names in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that, with knowledge of Complainant’s trademark rights, Respondent (1) attempted to redirect web traffic from three of the Disputed Domain Names to a web site affiliated with a competitor of Complainant doing business in Fargo, North Dakota, the designation Respondent incorporated in all of the Disputed Domain Names and the city in which Respondent resides; (2) Respondent offered the Disputed Domain Names for sale to Complainant on two occasions; and (3) nothing in the record suggests that Respondent had a bona fide reason for his choice of domain names that are confusingly similar to Complainant’s trademarks.

The Panel is persuaded that Respondent knew of Complainant’s rights in the STAYBRIDGE, STAYBRIDGE SUITES, CANDLEWOOD, and CANDLEWOOD SUITES trademarks when Respondent registered the Disputed Domain Names. The notice to Respondent was both constructive and actual. As to constructive notice, the record indicates that Complainant’s word mark CANDLEWOOD was registered with the USPTO in 1996, the word mark CANDLEWOOD SUITES was registered in 1999, the word mark STAYBRIDGE was registered in 2004, and the word mark STAYBRIDGE SUITES was registered in 1999. The Disputed Domain Names were not registered until October 6, 2005. Because Complainant and Respondent reside in the United States of America, it is appropriate to apply the principle of constructive notice of Complainant’s trademark registrations established by 17 U.S.C. § 1072. See Cellular One Group v. Brien, WIPO Case No. D2000-0028 (March 10, 2000) (“Since both parties are domiciled in the United States . . . the Panel shall look to the principles of law in the United States.”). In addition, the Panel is also persuaded that Respondent had actual notice of Complainants’ rights before registering the Disputed Domain Names.

Complainant’s Candlewood Suites and Staybridge Suites hotel brands are widely known. There is evidence in the record demonstrating that Respondent directed three of the Disputed Domain Names to a competing hotel brand, evidencing familiarity that the Disputed Domain Names incorporated hotel brands. There is evidence in the record demonstrating that Respondent’s company, Mindwerk, designed the web site for a Fargo, North Dakota Homewood Suites hotel, a competitor of Complainant, and then that Respondent directed three of the Disputed Domain Names to the web site that Mindwerk designed for Homewood Suites hotel. Considering (1) Respondent’s failure to submit a Response in this proceeding (which permits the Panel to draw appropriate inferences pursuant to paragraph 14(b) of the Rules), (2) the fact that the CANDLEWOOD and STAYBRIDGE brands are well known and Respondent directed three of the Disputed Domain Names to a web site one of Complainant’s competitors that he himself had a hand in designing, and (3) prior WIPO decisions considering this issue, the Panel is persuaded that Respondent knew of Complainant’s rights at the time Respondent registered the Disputed Domain Names. See, e.g., Jupiters Ltd. v. Hall, WIPO Case No. D2000-0574 (August 3, 2000) (finding bad faith: “[T]he fact that Complainant’s name and trademark is so well and widely known, coupled with the fact that Respondent’s mailing address is in the same district as Complainant’s business, makes it inevitable that Respondent registered the Domain Name in full knowledge of Complainant’s rights and interests.”); See, e.g., eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (“Actual or constructive notice knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith.”); Kate Spade LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (applying principle of constructive notice in finding bad faith).

Moreover, Complainant persuasively argues that, by offering the Disputed Domain Names for sale to Complainant, Respondent registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to Complaint for valuable consideration in excess of Respondent’s documented out-of-pocket costs, in violation of Paragraph 4(b) of the Policy. See, e.g., Continents Hotels, Inc. v. Tripod UK Ltd, WIPO Case No. D2006-0041 (“Due to the worldwide reputation of the . . . trademark, the Respondent evidences its bad faith in offering the Domain Name for sale, considering that the price of the sale would clearly be based on the fame of the trademark.”). To be sure, the record does not indicate the price that Respondent would have demanded to transfer the Disputed Domain Names to Complainant. However, by choosing not to submit a response, Respondent has not presented any arguments or evidence that he would have only sought his documented out-of-pocket costs from Complainant and at least one previous panel has found bad faith in a similar situation. See Academy of Motion Picture Arts and Sciences v. This Name Is For Sale, WIPO Case No. D2005-1063 (“there would have been little economic purpose in putting the Disputed Domain Name up for sale, if this was not to be profitable, that is for valuable consideration in excess of documented out of pocket costs directly related to the Disputed Domain Name”).

Considering that (1) Respondent never filed a Response submitting any evidence that Respondent has ever made any bona fide use of the Disputed Domain Names, (2) the CANDLEWOOD and STAYBRIDGE brands are widely known and Respondent directed three of the Disputed Domain Names to a website belonging to a competitor of Complainant, a website which Respondent had a hand in designing, and (3) Respondent offered the Disputed Domain Names for sale to Complainant, the Panel finds that Respondent registered and used had no legitimate reason for his choice of the Disputed Domain Names in bad faith. See, e.g., eBay, Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Co. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”).

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain names <candlewoodfargo.com>, <candlewoodsuitesfargo.com>, <staybridgefargo.com>, and <staybridgesuitesfargo.com> be transferred to the Complainant.


Steven Auvil
Sole Panelist

Dated: November 15, 2006

 

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