WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Patrick Ory
Case No. D2003-0098
1. The Parties
The Complainant is Six Continents Hotels, Inc., Three Ravinia Drive, Atlanta, Georgia 30346, of United States of America, represented by Needle & Rosenberg, P.C., of United States of America.
The Respondent is Patrick Ory, Calle 16, Cancun, CP 77500, Mexico.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with CSL Computer Service Langenbach GmbH dba J.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2003. On February 12, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the domain name at issue. On February 13, 2003, CSL Computer Service Langenbach GmbH dba J 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. On February 13, 2003, the Complainant�s Representatives confirmed the name of the Complainant in this case. 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 February 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was March 6, 2003, but the Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 7, 2003.
The Center appointed Jacques A. Léger, Q.C., as the sole panelist in this matter on March 12, 2003. 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.
The Panel has reviewed the documentary evidence provided by the Center and the Complainant (as the Respondent failed to do so) and agrees with the Center�s assessment that the Complaint complies with the formal requirements of the Rules and the Supplemental Rules.
The Panel is obliged to issue a decision on or prior to March 26, 2003, in the English language.
4. Factual Background
The following uncontested and unchallenged facts appear from the Complaint and the supporting documents submitted with it:
- The Complainant owns numerous U.S. and foreign registrations for its service marks incorporating HOLIDAY INN in association with hotel services (see the Complaint, Exhibits C and D).
- The Complainant owns numerous Internet domain names including the HOLIDAY INN mark (see the Complaint, Exhibits C and E).
- The Complainant operates its Web site at the domain address , providing on-line reservation services for all HOLIDAY INN hotels worldwide (see the Complaint, Exhibit C).
- The Respondent, through his Web site www., re-sells room reservations for many different hotels and hotel chains around the world, including the Complainant and many others not affiliated with the Complainant, including the Complainant�s primary competitors, such as Sheraton, Hyatt and Best Western (see the Complaint, Exhibit F).
- The Domain Name was registered on May 31, 2002, by the Respondent (see the Complaint, Exhibit A).
- The Respondent, through his Web site www., provides car reservation and airline ticket reservation services for companies that are not affiliated or associated with the Complainant (see the Complaint, Exhibit F).
- The Respondent holds his business out as "HOLIDAY INN HOTELS" on the "About Us" page of his Web site (see the Complaint, Exhibit H).
- On November 18, 2002, the Complainant sent a cease and desist notice, by letter and email, to the Respondent, demanding that the Respondent transfer the Domain Name to the Complainant (see the Complaint, Exhibit I).
- On December 2, 2002, the Complainant sent a follow-up inquiry by email regarding its letter of November 18, 2002 (see the Complaint, Exhibit I).
- The Respondent uses numerous iterations of the Complainant�s HOLIDAY INN mark in the meta-tag fields of the Web page at www. (see the Complaint, Exhibit J).
- The Respondent has registered several other domain names that incorporate the trademarks of well-known hotel brands, including , and (see the Complaint, Exhibit K).
5. Parties� Contentions
A. Complainant
Over and above the uncontested and unchallenged factual background as noted above, it has been contended by the Complainant, that:
- The Complainant, itself, or through an affiliate, is the franchisor of the HOLIDAY INN and HOLIDAY INN EXPRESS marks, which include, in addition to the well known HOLIDAY INN hotels, HOLIDAY INN EXPRESS hotels, HOLIDAY INN SELECT hotels, and HOLIDAY INN SUNSPREE Resorts (collectively "HOLIDAY INN Hotels"). In addition to franchised hotels, the Complainant owns and operates numerous HOLIDAY INN and HOLIDAY INN EXPRESS branded hotels worldwide.
- The Complainant owns one thousand, two hundred thirty-seven (1,237) registrations for its numerous HOLIDAY INN Hotels service marks in one hundred eighty-two (182) countries. In the United States, fourteen (14) registrations are incontestable pursuant to Section 15 of the U.S. Trademark Act, 15 U.S.C. �1065.
- The HOLIDAY INN marks are the most recognized hotel brands in the world. More travelers have stayed at HOLIDAY INN Hotels than any other hotel brand in the world. Every year, in the United States, 50% of all hotel guests stay in a HOLIDAY INN Hotel at least one night. 90% have stayed in a HOLIDAY INN Hotel at some time in their lives. The HOLIDAY INN brands have 100% name recognition in the U.S.
- The Complainant, directly or through its predecessors in interest, has used the HOLIDAY INN marks since at least as early as 1952. Today, there are over two thousand nine hundred (2,900) HOLIDAY INN Hotels in over seventy (70) countries throughout the world and HOLIDAY INN is the most global hotel mark.
- In the last fifty (50) years, the Complainant or its predecessors in interest has spent nearly one billion dollars advertising and promoting the HOLIDAY INN marks worldwide, and currently spends many millions of dollars annually on advertising, marketing, and promoting its marks, in addition to what its franchisees spend on advertising their individual hotels.
- As a result of the Complainant�s widespread and exclusive promotion and use of the HOLIDAY INN mark, the mark has developed significant goodwill in the minds of consumers world wide, and is a famous mark.
- The Complainant owns over one thousand one hundred (1,100) Internet domain names.
- The Complainant�s Web site has been on-line since at least June 1995, and consumers have been able to reserve hotel rooms through the Web site since at least July 1995. This Web site has received approximately one hundred and fifty-six million (156,000,000) visits since March 1999. Approximately two hundred and sixty thousand (260,000) Internet browsers visit this Web site every day.
- HOLIDAY INN is routinely one of the top twenty most commonly searched travel-related terms on the Internet, averaging over three hundred thousand (300,000) queries per month.
- On-line reservations for HOLIDAY INN brand hotel rooms through the Complainant�s numerous Web sites generate over four hundred million dollars ($ 400,000,000) in revenue annually for the Complainant.
- The Respondent is not affiliated with the Complainant, is not a licensee of the complainant, nor is it authorized by the Complainant to use any of the Complainant�s trademarks as a domain name or otherwise.
- The Respondent is not, and has never been, commonly known by the Domain Name.
- The Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
- The Respondent�s use of the Complainant�s famous HOLIDAY INN mark in its domain name is not a "nominative" use of the mark, because Internet users are likely, upon seeing this domain name among a list of search engine results, to mistakenly believe that www. is sponsored by, affiliated with, or otherwise endorsed by the Complainant whereas it is not. Internet users who then proceed to the Respondent�s Web page based upon this mistaken belief may then reserve rooms in hotels not associated or affiliated with the Complainant.
- The Respondent is intentionally attempting to attract, for commercial gain, Internet users to his Web site by creating a likelihood of confusion with the Complainant�s HOLIDAY INN mark as to the source, sponsorship, affiliation, or endorsement of his Web site or of the hotel reservation services provided via his Web site.
- The Respondent registered and is using the Domain Name for the purpose of disrupting the business of the Complainant, specially by diverting Internet traffic intending to go to the Complainant�s Web site for hotel reservation services to the Respondent�s own Web site, where an Internet user can reserve hotel rooms at hotels not affiliated with the Complainant.
- While the Respondent does sell reservations for rooms in HOLIDAY INN hotels through his Web site, he also sells reservations for hotel rooms of the Complainant�s competitors.
- Internet users who reserve rooms for a HOLIDAY INN hotel through the Respondent�s Web site will not receive the same benefits they would as if they had reserved rooms through the Complainant�s authorized Web sites. In addition, guests who reserve rooms through bulk re-sellers may be charged additional early cancellation fees above those charged by the hotel, and cannot make use of the Complainant�s toll-free, nationwide customer support system.
- The Respondent has no right nor legitimate interest in incorporating the Complainant�s famous HOLIDAY INN mark into his domain name.
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The Respondent has no rights or legitimate interests in respect of the Domain Name.
- The Domain Name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply timely to the Complainant�s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving each of the three following elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
The Complainant must meet these requirements despite Respondent�s default, on balance of probabilities.
These three elements are considered below.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily:
ii) demonstrated that it owns rights in and for the trademark HOLIDAY INN;
ii) established substantial use of both its common law and registered HOLIDAY INN trademark in connection with hotel services.
The Panel also finds that the Domain Name is confusingly similar to the Complainant�s HOLIDAY INN trademark. The Domain Name is nearly identical to the Complainant�s famous service mark HOLIDAY INN. Notwithstanding the inclusion of the word "hotel" in the Domain Name, the confusing similarity exists since the word "hotel" in the Domain Name does not have the effect of distinguishing it as in both domain names the distinctive element is clearly "Holiday Inn", "hotel" further being generic. Quite to the contrary, in the case at hand, it adds to the recognition because it refers to one of the qualified services offered by the Complainant through its Web site, i.e. providing on-line reservation services for hotels.
The Panels adopts the findings in ACCOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517:
"The Domain Name consist of the Complainant�s well known IBIS registered mark and the generic word "hotels", reflecting the very business with which the Complainant is concerned. The addition of the word "hotels" does not serve to distinguish the Domain Name from the Complainant�s well known mark, but indeed compounds the likelihood of confusion between the Domain Name and the Complainant�s trade mark."
The Panel also adopts the findings in Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431, where the domain names in issue were and :
"The added words "hotel" and "-resorts", respectively, do not serve to make the inclusion of the Complainant�s trademark in the domain names non-confusing. Rather, given that the added words describe the business services for which the Complainant�s trademark is registered and used by the Complaint, the additions merely compound the confusion created by the incorporation of the Complainant�s trademark" (see also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).
Pursuant to the above mentioned reasons, the Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the onus rests upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests, once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to show otherwise. Failing to do so, in some cases, might lead to a negative inference. In the present case, as was the case in Fortuneo v. Johann Guinebert, WIPO Case No. D2001-0781, SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd. et al., WIPO Case No. D2000-0848, the Respondent having failed to reply to the Complaint or at least explain any legitimate rights or interests it might have had in the Domain Name before the due date, the Panel so finds.
There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.
The Respondent has not attempted to explain or argue that he used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. The Complaint does contain evidence that the Respondent uses the name to re-sell rooms for many different hotels, but that use is not consistent with a " bona fide offering of goods or services". It is abundantly clear to this Panel that, on balance of probabilities, the Respondent, by currently using the Domain Name which incorporates the Complainant�s HOLIDAY INN mark, to re-sell services in the exact same field of endeavor as the Complainant, i.e. hotel services, is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant's Web site to the Respondent�s Web site. Intentionally trading on the fame of a mark cannot constitute bona fide offering of goods or services (see Madonna v. Parisi, WIPO Case No. D2000-0847).
Also, in the case at hand, there is no evidence that the Respondent is or was commonly known by the Domain Name and is thus making a legitimate non-commercial or fair use of the Domain Name. The Respondent offers on his Web site reservations for hotels being the Complainant�s competitors, as well as car rental and airline ticket booking services. The fact that the Respondent might also sell HOLIDAY INN rooms at its Web site does not provide the Respondent any rights or legitimate interest to use for his own benefit the famous HOLIDAY INN mark in a domain name. In that regard, the Panel adopts the findings in Nokia Corporation v. Nick Holmes t/a Etype Media, WIPO Case No. D2002-0001:
"A licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes the trademark".
There is no justification as to why the Respondent needed to include the HOLIDAY INN mark in the Domain Name in order to carry out his business. Even if the Domain Name did not include the component HOLIDAY INN, the Respondent's Web page could be found on the Internet. The respondent has no right or legitimate interest in incorporating the Complainant�s famous HOLIDAY INN mark into his Domain Name, despite fact that he intends to re-sell room reservation services for hotels that are own or managed by the Complainant (see Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036).
In the circumstances of this case, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden as required by paragraph 4(a)(ii) of the Policy to show that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
It is quite difficult, usually, if not impossible, to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panel�s understanding of the Policy is that although the initial burden to prove the Respondent�s bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of the Complainant, such obligation is only to make out a prima facie case, and once it has done so, the Panel may find in certain circumstances, that there is a shift of onus and it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).
In the present case, in light of the evidence submitted by the Complainant, the Respondent having failed to even attempt to address the issue and reasonably explain the evidences against him, the Panel, under the circumstances, does find a negative inference (see Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 and Inter Trade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002)).
Furthermore, even if no such negative inference could have been made, probative evidence shows that the Respondent has registered the Domain Name in bad faith. The Complainant�s HOLIDAY INN mark is very well known worldwide, and it isvery unlikely that the Respondent was not aware that he was infringing it at the time he registered the Domain Name, i.e. on May 31, 2002. The Panel finds that any doubt on the Respondent�s knowledge is removed by the following facts:
i) the Respondent has intentionally attempted, and is still attempting, to attract, for commercial gain, Internet users to his Web site by creating a likelihood of confusion with the Complainant�s HOLIDAY INN mark as to the source, sponsorship, affiliation, or endorsement of his Web site or of the hotel reservation services provided via his Web site.
ii) the Respondent�s Web site is clearly intended to attract members of the public who wish to reserve HOLIDAY INN hotel rooms, and to offer them other services. Directing unsuspecting consumers to the Respondent�s on-line location is evidence of bad faith by creating confusion with the Complainant�s mark (see Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114).
iii) The Respondent also failed to respond to the Complainant�s letter and email. This provides an additional strong support for a determination of "bad faith" registration and use (see Encyclopaedia Britannica, Inc. v. John Zuccarini et al., WIPO Case No. D2000-0330).
For these reasons, the Panel concludes that the Domain Name has been registered and is being used by the Respondent in bad faith.
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, " " be transferred to the Complainant, by CLS Computer Service Langenbach GmbH dba J, forthwith.
Jacques A. Léger, Q.C.
Sole Panelist
Date: March 26, 2003
Full & Egal Universal Law Academy