MARK	Reg. No.	Date of First Use	Date of Registration
HOLIDAY INN	592,541	July 1, 1952	July 13, 1954
HOLIDAY INN	592,539	March 1, 1952	July 13, 1954
HOLIDAY INN	864,359	1957	January 28, 1969
HOLIDAY INN	1,061,893	1949	March 22, 1977
HOLIDAY INN	1,243,330	May 19, 1982	June 21, 1983
HOLIDAY INN	1,275,560	December 1, 1982	April 24, 1984
HOLIDAY INN	1,281,008	July 13, 1982	June 5, 1984
HOLIDAY INN	1,330,101	October 31, 1983	April 9, 1985

5. Parties’ Contentions

A. Complainant

The Complainant claims it has a presence in more than one hundred countries, and is the largest hotel chain by the number of hotel rooms. It states that approximately 4,000 rooms and 585,000 guest rooms are managed, leased or franchised by the Complainant’s group of companies and its various subsidiaries.

The Complainant states its HOLIDAY INN brand was founded in 1952 and is presently used along with its HOLIDAY INN EXPRESS brand in connection with 3,190 hotels and 413,306 hotel rooms. The Complainant and its affiliates hold 1,515 registrations in 184 countries for the HOLIDAY INN trademark. The Complainant states it is also the owner of 950 domain names that contain the HOLIDAY INN mark or its variations.

The Complainant cites several previous domain name cases that have recognized the fame of the HOLIDAY INN trademarks. These cases have held that the use of the HOLIDAY INN mark in a domain name, along with a common descriptive term is confusingly similar to the mark. The Complainant therefore alleges that adding a word or phrase, when the dominant part of the domain name is the mark, does not prevent finding confusing similarity with the mark. The Complainant contends that a domain name which wholly incorporates a well-known mark is itself sufficient to establish confusing similarity with the mark.

The Respondent has no rights and legitimate interests in the domain name, as the Complainant states it has not assigned or licensed the use of its mark to the Respondent. The Respondent is not known by the domain name, as the record clearly shows the Respondent’s name is Marketing Visions Tenerife S.L. The Complainant further contends the Respondent uses the disputed domain name for commercial activity, as an apartment rental site, therefore such use is not noncommercial or fair use. Further, the unauthorized use of the Complainant’s mark, in direct competition with the Complainant’s business does not constitute a bona fide offering of goods or services.

The Respondent has registered and uses the domain name in bad faith, according to the Complainant, as it is being used to disrupt the Complainant’s business. This is in violation of paragraph 4 (b)(iii) of the Policy, as the Complainant’s mark is used by the Respondent to offer lodging services in direct competition to the Complainant’s business. The Respondent’s opportunistic bad faith is apparent, alleges the Complainant, as the HOLIDAY INN mark is used in the disputed domain name.

Finally, the Respondent offered to sell the domain name to the Complainant for EUR 1,000, in response to a demand letter sent by the Complainant. The Complainant compares the figure of EUR 1000 in the present case to that in Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, where the amount of USD 750 requested by the Respondent in that case, was found to be in excess of documented out of pocket costs and held to constitute bad faith under the Policy. The Complainant argues that the Respondent’s demand for EUR 1,000 is in excess of its documented out of pocket costs and bad faith ought to be found in the present case.

The Complainant has requested for the transfer of the disputed domain name for the above stated reasons.

B. Respondent

The Respondent did not file a response or otherwise reply to the Complainant’s contentions.

6. Discussion and Findings

The UDRP Policy requires the Complainant in a domain name dispute to establish three aspects given in paragraph 4(a). These are:

(a) The domain name which is registered by the Respondent is identical or confusingly similar to a mark in which the Complainant has rights; and

(b) The Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The Policy paragraph 4(a)(i), requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.

The Complainant has provided evidence of its rights in the HOLIDAY INN mark and has furnished details of its registered trademarks. The Panel finds that the Complainant’s use of its mark predates the domain name registration by almost forty five years. The Panel is convinced that the Complainant’s extensive use of its mark for a considerable length of time undoubtedly establishes its strong rights in the HOLIDAY INN mark. Further, the Panel notes with approval, the numerous cases referred to by the Complainant, where its well-known mark was used with additional words or phrases and was inter-alia, found to be confusingly similar to its mark.

The Panel finds, in the present case also, the phrase “on the beach”, along with the Complainant’s mark does not reduce confusing similarity with its mark. Given the distinctive nature of the Complainant’s mark, the use of the phrase “on the beach” would indicate to unsuspecting Internet users, that the domain name pertains to one of the Complainant’s hotels located at a beach side area. It is likely that Internet users would be confused into thinking that the Respondent’s website is affiliated or sponsored by the Complainant’s group of hotels.

The Panel is any event convinced, that the disputed domain name <holidayinnonthebeach.com>, which uses the descriptive phase “on the beach” along with the HOLIDAY INN mark, is on a direct comparison confusingly similar to the Complainant’s mark. It would also likely have the effect of confusing and misleading the public. The disputed domain name, due to its confusing similarity with the Complainant’s mark, is likely to attract customers to the Respondent’s website.

The Panel finds, for the reasons stated above, that the domain name is confusingly similar to the Complainant’s trademark under paragraph 4 (a)(i) of the Policy.

B. Rights or Legitimate Interests

Previous panels have found that the Complainant has to make a prima facie case that the Respondent lacks rights and legitimate interests in the domain name, under paragraph 4 (a)(ii) of the Policy, in order for the burden of rebuttal to pass to the Respondent.

The Panel finds that the Respondent in this case is not affiliated, authorized or licensed to use the Complainant’s mark. The record also shows that the Respondent is not commonly known by the domain name.

The Panel finds the Respondent has admitted using the website for apartment rentals in his reply letter to the Complainant’s demand note. This is clearly a commercial activity and the Panel agrees with the arguments put forward by the Complainant that, the domain name is not used for any noncommercial, fair use purposes or for a bona fide offering of goods or services.

Based on all the evidence on record, the Panel finds the Respondent is seeking commercial gain by using the Complainant’s mark in its domain name to confuse users. To exploit the Complainant’s mark in this manner, the Panel finds, does not constitute a bona fide offering of goods or services by the Respondent. The Panel concludes that such use is not a legitimate use but is an infringing use of the Complainant’s mark, which does not confer any rights or legitimate interests in favor of the Respondent.

The Panel finds, for the reasons mentioned above that the Respondent has no rights or legitimate interests in the domain name and the Complainant has fulfilled the requirements under paragraph 4 (a) (ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has to establish under paragraph 4(a)(iii), that domain name was registered and is being used in bad faith by the Respondent.

As discussed above, there are reasonable grounds in the present case that demonstrate the disputed domain name was registered as a confusingly similar variant of the Complainant’s famous mark. It is reasonable to infer, that the domain name was registered with prior knowledge of the Complainant’s mark and with the intention of misleading Internet users and the potential customers of the Complainant. The Panel therefore finds the Complainant’s arguments are convincing regarding bad faith registration of the domain name.

The Panel finds the Respondent’s manner of offering its lodging services in direct competition to the Complainant’s business services, by unauthorized use of the Complainant’s mark is a classic case of infringement and of bad faith use, as described under paragraph 4 (b)(iii) of the Policy.

The Respondent had demanded a sum of EUR 1,000 for sale of the domain name. The Complainant has alleged that the demand for an amount of EUR 1,000 is in excess of out of pocket expenses directly related to the domain name and therefore constitutes bad faith under paragraph 4(b)(i). The Panel finds from the Respondent’s reply letter, that the amount of EUR 1,000 has been demanded by the Respondent to cover costs which includes improving the ranking of the domain name and for removing the domain name. No documents are filed by either party to substantiate their respective statements; therefore, the Panel is unable to make an assessment whether the amount of EUR 1,000 represents an amount in excess of documented out of pocket expenses.

The Panel finds the reply letter referred to above has been marked as “without prejudice” by the Respondent. Settlement negotiations in other forum are on occasion, treated as privileged communications. However, in UDRP proceedings, such communications can be used to show bad faith. For a discussion on allowing such documents in UDRP cases see The Vanguard Group, Inc. v. Emilo Sa, WIPO Case No. D2001-1453, or Magmum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The Panel finds that the document is admissible in these proceedings. However, the Panel is unable to determine whether the demand for EUR 1,000 by the Respondent constitutes bad faith in the absence of further evidence as discussed in the preceding paragraph.

Nonetheless, based on the overall discussions and the findings made by the Panel here, it is found that the Complainant has established that the Respondent has tried to exploit the HOLIDAY INN mark for commercial gain. For the reasons discussed, the Panel concludes that the domain name was registered in bad faith and used in bad faith.

The Panels holds that the Complainant has successfully established the requirements under paragraph 4 (a) (iii) of the Policy.

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 <holidayinnonthebeach.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Date: September 11, 2008

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1116.html

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