WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Finlaw Agency and ResS, Inc.
Case No. D2002-1159
1. The Parties
The Complainant is Six Continents Hotels, Inc., whose principal place of business is in Atlanta, Georgia, United States of America, and which is represented by Mark L. Seigel, Esq. of Needle & Rosenberg, P.C., Atlanta, Georgia, United States of America.
The Respondents are Finlaw Agency, C/O Mr. Arthur Finlaw of Panama City, Florida, United States of America and ResS, Inc. C/O Mr. Arthur Finlaw of Panama City, Florida, United States of America (for convenience the Respondents shall be referred to collectively hereinafter as the "Respondent").
2. The Domain Names and Registrar
The disputed domain names and are registered with B, Inc., Baltimore, Maryland, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002, by e-mail and on December 23, 2002, in hard copy. On December 23, 2002, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the domain names at issue. On December 23, 2002, B, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. The contact information shows the Respondents are in fact the same person or entity. 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 December 30, 2002. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 19, 2003. The Respondent did not submit any response by the due date, and the Center in consequence notified the Respondent�s default on January 24, 2003.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 30, 2003. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, also on January 30, 2003, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is one of the largest international hotel operators. Its trademark, "Holiday Inn", is one of the most well-recognized marks in the world. The Complainant also owns a valid United States trademark in the name, "Holiday Inn Family Suites Resort". The Complainant operates or franchises several hotels using its "Holiday Inn" trademark in the Orlando, Florida area.
The Respondent is listed as the Registrant of the disputed domain names. The record of registration was created on April 27, 2001, for the disputed domain name, , and on April 8, 2002, for the disputed domain name, . The Respondent uses the disputed domain names to solicit hotel reservations.
5. Parties� Contentions
A. Complainant
With more than 150 million guests staying at its hotels worldwide, the Complainant is the world�s leading global hotel company. The Complainant operates mainly under the trademark "Holiday Inn", which it has used since at least 1952.
The Complainant owns many valid registrations for the trademark "Holiday Inn" in various countries throughout the world. The Complainant has a United States registered trademark in the name "Holiday Inn Family Suites Resort". The Complainant also offers many services related to its business through its registered domain name, , among the many domain names that it owns.
The Complainant operates, itself or through franchisees, twenty-two hotels in the greater Orlando, Florida area.
The disputed domain names are nearly identical to the Complainant's trademark. The disputed domain names include all of the Complainant's famous marks along with geographical or descriptive terms which, if anything, increase customer confusion as to ownership of the names
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with or licensed or authorized by the Complainant to use its mark. The Respondent is not commonly known by either of the disputed domain names. The Respondent is not making a legitimate non-commercial or fair use of the Domain Names.
The Respondent uses the disputed domain names to host a web site where the Respondent offers hotel room reservation services in competition with the Complainant�s own on-line hotel reservation services
The Respondent registered and is using the disputed domain names in bad faith. The Respondent has engaged in a pattern of registering domain names containing well-known hotel names. The Respondent is attempting to capitalize on the Complainant's famous mark through registration of the disputed domain names, and is intentionally attempting to attract Internet users to the Respondent's web site for commercial gain, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or of the Respondent�s hotel reservation services.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
C. Due Process
Since the Center forwarded a copy of this Complaint to the Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail, the Panel is convinced that the Respondent has been duly notified of these proceedings.
6. Discussion and Findings
To comply with Paragraph 15(a) of the Rules, the Panel should "decide this complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In accordance with Paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail in these proceedings and obtain transfer of the disputed domain names by proving the following:
- the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names were registered and are being used in bad faith
A. Identical or Confusingly Similar
The Complainant has furnished the Panel with ample evidence that the Complainant owns several registered trademarks in the name "Holiday Inn" (e.g., United States Trademark Registration No. 0592539; and United States Trademark Registration No. 1243330) and owns a United States Registered Trademark in the name, "Holiday Inn Family Suites Resort" (United States Trademark Registration No. 2640061) (Exhibit D to the Complaint). These registrations occurred years before that of the disputed domain names.
The Panel must now consider whether the disputed domain names are identical or confusingly similar to the Complainant's trademarks. The name, , differs from the mark, "Holiday Inn", by the substitution of a dash for a space between words in the mark, and the addition of the word "orlando" and the gTLD, ".com".
As all domain names must include a gTLD, the addition of ".com" to a trademark is not relevant in distinguishing the name from the mark. Moreover, the addition or substitution of spaces or punctuation marks is equally inconsequential in determining identity or confusing similarity. See Laerdal Medical Corporation v. Locks Computer Supply, WIPO Case No. D2002-0063 (April 18, 2002), and Louis Vuitton Malletier v. Enrico Villa, WIPO D2000-0722 (October 13, 2000). While the addition of the geographical word, "orlando", prevents the Panel from concluding that this disputed domain name is identical to the Complainant's trademark, it does not prevent a finding of confusing similarity. The addition of a geographical name to a trademark does not necessarily reduce confusion among consumers, particularly when, as is the case here, the Complainant does a substantial amount of business in and around that geographical area (see Exhibit F of the Complaint). See also Educational Testing Service v. TOEFL USA, WIPO Case No. D2002-0380 (July 11, 2002) and BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097 (November 14, 2001).
Per the foregoing, the Panel concludes that the disputed domain name, , is confusingly similar to the Complainant's trademark, "Holiday Inn". Applying the same reasoning, the Panel concludes also that the disputed domain name, , is confusingly similar to the Complainant's trademark, "Holiday Inn Family Suites Resort". Therefore, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has established beyond doubt its ownership of trademarks that are very similar to the disputed domain names. The Complainant has asserted, without contradiction, that it has never authorized, licensed or permitted the Respondent to use those trademarks. Furthermore, there is nothing else in the Complaint which suggests that the Respondent has any rights or legitimate interests in the disputed domain names.
The Complaint does contain evidence that Respondent uses the names to assist consumers in making hotel reservations (Exhibits G, H, I and J to the Complaint), but that use is not consistent with a "bona fide offering of services or goods" (a criterion, listed in Paragraph 4(c)(i) of the Policy, which might have otherwise established Respondent's rights and legitimate interests in the disputed domain names) because this use corresponds exactly to the field of endeavor that Complainant is in and for which Complainant uses its trademarks. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002) ("�using the contested domain name�in the exact same field of endeavor as the Complainant�can not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.")
In light of this record, the Panel believes that the Complainant has made the threshold case that the Respondent does not have rights or legitimate interests in the disputed domain names. It then falls upon the Respondent to produce evidence that it does possess such rights and interests. Having declined to file a Response, the Respondent has failed to rebut the Complainant on this issue.
Accordingly, the Panel concludes that the Complainant has carried its burden to show that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Bad Faith
As referred to previously, the Complainant has presented the Panel with solid evidence that the Respondent is using the disputed domain names to offer products and services similar to those offered by the Complainant under its trademark. Some of that evidence indicates that the Respondent even utilizes the Complainant's logo in such offerings (Exhibit I of the Complaint). Moreover, there is no denying that the Complainant's trademark is internationally famous, and that the Respondent is undoubtedly aware of that fact.
This evidence persuades the Panel to find that the Respondent's use of the disputed domain names is an intentional attempt to attract, for commercial gain, internet users to its web site, by creating the likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its web site or of a product or service on its web site. Such use coincides with the criterion listed in Paragraph 4(b)(iv) of the Policy regarding a sufficient basis for establishing bad faith registration and use of a domain name.
Thus, the Panel concludes that the Complainant has sustained its burden of proof to show that the domain names were registered and are being used in bad faith.
7. Decision
The Panel concludes that the disputed domain names, and , are confusingly similar to the Complainant�s "Holiday Inn" and "Holiday Inn Family Suites Resort" trademarks, respectively. The Panel has also determined that the Respondent has no rights or legitimate interests in the disputed domain names. Finally, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith because the Respondent's primary intent in registration and use of those names was to benefit commercially from the likelihood of confusion between it and the Complainant's trademarks.
In accordance with the above and Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred from the Respondent, Finlaw Agency and ResS, Inc., to the Complainant, Six Continents Hotels, Inc.
Dennis A. Foster
Sole Panelist
Dated: February 13, 2003
Full & Egal Universal Law Academy