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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. TRANSLINER CONSULTANTS

Case No. D2008-0502

 

1. The Parties

Complainant is Six Continents Hotels, Inc., of Georgia, United States of America, represented by The GigaLaw Firm, LLC, United States of America.

Respondent is TRANSLINER CONSULTANTS, of Koh Samui, Thailand.

 

2. The Domain Name and Registrar

The disputed Domain Name <holidayinntombstone.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2008. On April 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name at issue. On April 2, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on April 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2008.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 7, 2008. 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”). IHG owns a portfolio of hotel brands including HOLIDAY INN HOTELS and HOLIDAY INN EXPRESS. The HOLIDAY INN brand was founded in 1952 and today is used worldwide. Complainant (or its affiliates) owns over 1,500 registrations worldwide for trademarks that consist of or contain the mark HOLIDAY INN. The HOLIDAY INN mark has been registered in the United States of America since 1954. Complainant is the registrant of almost a 1,000 domain names that consist of or contain the mark HOLIDAY INN.

Respondent registered the disputed Domain Name <holidayinntombstone.com> on June 20, 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant claims that:

1) The use of the trademark HOLIDAY INN in its entirety plus the geographic term “tombstone” (i.e., the name of the city Tombstone which is located in Arizona, United States of America), creates a Domain Name that is confusingly similar to the HOLIDAY INN trademark;

2) Adding an additional word or phrase when the dominant feature of the disputed Domain Name is Complainant’s mark does not obviate any confusion;

3) The disputed Domain Name is confusingly similar to Complainant’s trademark;

4) Respondent has no rights or legitimate interests whatsoever with respect to the disputed Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorised Respondent to register or use any of the HOLIDAY INN trademarks in any manner;

5) 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;

6) Respondent, before being contacted by Complainant’s counsel, was using the disputed Domain Name in connection with a website that falsely appeared to be a website affiliated with Complainant but in actuality offered services in competition with Complainant;

7) 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;

8) Respondent is making an illegitimate, commercial, unfair use of the disputed Domain Name, with the intent for commercial gain to misleadingly divert consumers, specifically, Respondent has used the disputed Domain Name to direct consumers to websites that offered hospitality services in competition with Complainant;

9) Respondent has registered and is using the disputed Domain Name in bad faith;

10) Respondent knew of Complainant’s HOLIDAY INN trademarks when it registered the disputed Domain Name;

11) Respondent’s failure to reply to Complainant’s communication about the disputed Domain Name indicates evidence of bad faith registration and use of the disputed Domain Name.

Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the disputed Domain Name be transferred to the Complainant.

 

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the Domain Name registered by Respondent be transferred to Complainant:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it has rights in the trademark HOLIDAY INN in connection with motor hotel services – namely, providing lodging and restaurant services in motels and hotels, worldwide.

Complainant claims that the addition of the geographic term “tombstone” to its HOLIDAY INN trademark is not enough to avoid the likelihood of confusion between the disputed Domain Name and the HOLIDAY INN trademark. In support of this, Complainant refers to a number of previous UDRP decisions where it was found that by itself, the addition of descriptive and or geographic terms to a trademark is not a distinguishing feature. See Six Continents Hotels, Inc. v. CredoNic.com/Domain For Sale, WIPO Case No. D2005-0755, (<holidayinnmanassas.com>) where the panel found that “Respondent has simply appended the geographic term “Manassas” to Complainant’s HOLIDAY INN mark. This increases the likelihood of consumer confusion”; Six Continents Hotels, Inc. v. CredoNic.com/Domain For Sale, WIPO Case No. D2004-0987, (<holidayinnexpressnewnan.com>) where the panel affirmed “there is sufficient precedent for finding that the addition of a geographic term or name to a distinctive mark suggests that the domain name is the domain name of Complainant in that particular location”. In this sense Six Continents hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986, (<watsonvilleholidayinn.com>), where the panel said: “Several Panels have underlined that the use of a Complainant’s trademark in connection with a geographic term does not prevent confusing similarities.” See also Advance Magazine Publishers Inc. v. Chinavogue.com, WIPO Case No. D2005-0615 (finding the domain name <chinavogue.com> confusingly similar to Complainant’s VOGUE trademark).

This Panel agrees with Complainant’s thesis and the above quoted previous decisions, it therefore finds that the disputed Domain Name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Complainant may do so by establishing a prima facie case that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Section 2.1. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(i) that before any notice to the respondent of the dispute, he or she used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

(iii) that the respondent intends to make a legitimate, non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed Domain Name. Respondent does not appear to make any legitimate use of the Domain Name for non commercial activities. On the contrary, it appears that Respondent has used the disputed Domain Name to direct consumers to websites that offered hospitality services in competition with Complainant.

Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a right or legitimate interest under paragraph 4(c) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.

As regards Respondent’s use of the Domain Name, it appears that Respondent’s website was used to direct consumers to websites that offered hospitality services in competition with Complainant. By so deflecting Internet users, Respondent has shown bad faith use of the Domain Name that clearly falls within the example given in paragraph 4(a)(iv) of the Policy (quoted above).

In addition, the contents which relate to Complainant’s field of activity, set by Respondent on the website “www.holidayinntombstone.com” are also an inference of Respondent’s knowledge of Complainant’s trademarks and activity at the time it registered the disputed Domain Name. In Credit Industriel et Commercial S.A. v. La Porte Holdings, Inc., WIPO Case No. D2004-1110, it was affirmed “It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both Complainant’s identity and activities”. This is even more true in this case, considering, that Complainant operates a Holiday Inn Express hotel in the city Tombstone, Arizona, United States of America.

In view of the above, considering the notoriety of Complainant’s trademarks and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant’s trademark when it registered the disputed Domain Name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed Domain Name may be considered in an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409, “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.

In addition, it is the Panel’s opinion that not replying in anyway to the warning letter of the Complainant’s representative is further inference of bad faith. In this sense Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (failure to positively respond to a complainant’s efforts to make contact provides strong support for a determination of bad faith); See also RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant.)

Besides, as evidenced by Complainant, this same Respondent has already been recognized as having registered and used several domain names in bad faith. This Respondent has in fact been involved in at least the following UDRP proceedings : F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1359 and F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1347. These UDRP proceedings ended with the transfer of the disputed domain names to Complainants.

In view of the above, it appears that Respondent’s registration and use of the disputed Domain Name are part of a pattern of conduct, since Respondent appears to be engaged in the registration of a series of third party trademarks.

It is the Panel’s opinion this kind of behavior evidences bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy. In this sense, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, where the panel affirmed that the fact that Respondent had been involved in a large number of cases under the UDRP proved that Respondent’s use and registration of the disputed Domain Names fell within the concept of bad faith.

Finally, Respondent has not denied Complainant’s assertions of bad faith, has not given any justification for the registration of the disputed Domain Name nor substantiated or at least alleged any concurrent right or legitimate interest to the disputed Domain Name which would give rise to good faith registration or use of the disputed Domain Name.

Considering the foregoing, the Panel concludes that Respondent registered and is using the disputed Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <holidayinntombstone.com> be transferred to Complainant.


Fabrizio Bedarida
Sole Panelist

Dated: May 21, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0502.html

 

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