WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Contents Hotels, Inc. v. eGO
Case No. D2003-0341
1. The Parties
The Complainant is Six Continents Hotels, Inc., Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC of United States of America.
The Respondent is eGO, Richmond, VA, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2003. On May 6, 2003, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain names at issue. On May 7, 2003, BulkR 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 May 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on June 4, 2003.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 19, 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.
4. Factual Background
Complainant is the holder of numerous registrations for the service mark "HOLIDAY INN" (word, and word and design) and various "HOLIDAY INN"-formative marks (e.g., "HOLIDAY INN EXPRESS") on the Principal Register of the United States Patent and Trademark Office (USPTO)[1]. These registrations include the words "HOLIDAY INN," reg. no. 592,539, dated July 13, 1954, service mark in International Class (IC) 42, covering "Motor Hotel Services" as further specified, claiming date of first use of March 1, 1952, and first use in commerce of July 1, 1952 (and disclaiming the word "INN" apart from the mark as shown). Complainant has submitted copies of eighteen USPTO certificates of registration (and related evidence of assignments and ownership). Complainant asserts ownership of twelve hundred thirty-seven (1,237) registrations for "HOLIDAY INN" service marks in one hundred eighty-two (182) countries. (Complaint, para. 11 & Annex D)
Complainant itself and through its licensees has used the "HOLIDAY INN" mark extensively in commerce in the United States and elsewhere. There are over two thousand nine hundred (2,900) "HOLIDAY INN" hotels in over seventy (70) countries. (Id., para. 11)
Complainant has heavily advertised and promoted the "HOLIDAY INN" mark, and continues to spend millions of dollars annually doing so (id.).
Complainant is the registrant of over one thousand one hundred (1,100) domain names, and operates an active commercial website, inter alia, at "." Complainant�s websites are used by millions of consumers of hotel services each year. Online reservations make up over five percent of Complainant�s total "HOLIDAY INN" hotel reservations, generating over four hundred million dollars ($400,000,000) in annual revenue. (Id.)
According to the Registrar�s Verification, Respondent "eGO" is the registrant of the disputed domain names. The Administrative Contact, with the same address as Respondent, is "Keith West." According to the Registrar�s Verification, the record of registration for each disputed domain name was created on November 19, 1999.
The disputed domain name directs Internet users to a web page displaying Complainant�s distinctive "HOLIDAY INN" design and word service mark and a photograph of a Holiday Inn hotel, with information for "The Holiday Inn of Suwanee" in Georgia. The header on the web page states "Atlanta, Georgia � Holiday Inn". A toll-free telephone number is included "For Toll-Free Holiday Inn Reservations Worldwide". According to Complainant, the telephone number is not that of an authorized Holiday Inn reservation center, but rather that of Respondent�s independent business. (Complaint, para. 11 & Exhibit F)
The dispute domain name directs Internet users to a web page which displays a photograph showing the exterior of the Holiday Inn in Sweetwater, Texas, along with a description of the hotel. The header of the web page states "Holiday Inn Sweetwater hotel reservations". The home page and additional web pages include instructions to "Check Availabilty/Book Online NOW". There is also information concerning the location of Holiday Inn headquarters in Atlanta, Georgia. (Id., para. 11 & Exhibit G)
Neither the "www." nor the "www." website contains any information that indicates or suggests that its operator is independent of Complainant or its licensees (id.). Respondent is not a licensee of Complainant�s HOLIDAY INN mark (id.).
Complainant believes that Respondent is "a hotel room re-seller, buying bulk quantities of hotel rooms and re-selling them through its Internet website". (id.)
The Registration Agreement in effect between Respondent and Bulkregister, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant indicates that it is the holder of rights in the service mark "HOLIDAY INN" and various "HOLIDAY INN"-formative marks in the United States and throughout the world based on its use in commerce and as evidenced by registrations in the United States and other countries (see Factual Background, supra).
Complainant asserts based on extensive use in commerce, advertising and promotion, and wide consumer recognitions that the "HOLIDAY INN" mark is famous worldwide.
Complainant alleges that the disputed domain names and are confusingly similar to the "HOLIDAY INN" mark. Complainant argues that addition of a geographic term to its famous mark does not serve to alleviate Internet user confusion.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names. It says that Respondent is not authorized by Complainant to use its mark, and has not been commonly known by the disputed domain names. Complainant asserts that Respondent�s sale of HOLIDAY INN hotel rooms does not give it rights to use its mark in domain names. Respondent�s websites that provide hotel reservation services are in direct competition with Complainant�s own online hotel reservation services. Complainant further argues that Respondent�s domain names usage is not "nominative" use "because Internet users are likely, upon visiting these websites, or on seeing these Domain Names among a list of search engine results, to mistakenly believe that Respondent�s websites are sponsored by, affiliated with, or otherwise endorsed by Complainant, when they are not. Internet users who then proceed to Respondent�s web pages based upon this mistaken belief may then reserve rooms from Respondent, rather than from Complainant�s own online reservation system."
Complainant argues that Respondent registered and is using the disputed domain names in bad faith by using its mark intentionally to attract Internet users to its websites for commercial gain by creating confusion as to Complainant�s sponsorship of or affiliation with its websites. Although Respondent does offer Complainant�s hotel room services, it has designed its websites to convey the appearance of sites operated by Complainant, while in fact it is in direct competition with Complainant�s hotel reservation services.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to it.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, para. 2(a)).
In this case, the Panel is satisfied that the Center took steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The express courier tracking report shows successful delivery to Respondent�s address.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the holder of numerous registrations for the service mark "HOLIDAY INN" and "HOLIDAY INN"-formative marks in the United States and other countries. It has used the mark extensively in commerce and has heavily promoted it through advertisement to the public. Complainant has presented substantial evidence of strong consumer association of the mark with its hotel service enterprise. That evidence is not challenged by Respondent. The Panel determines that Complainant has rights in the mark "HOLIDAY INN" and that the mark is famous in the field of hotel services, at least in the United States[2].
The disputed domain names and directly incorporate Complainant�s mark as their lead term, and each adds a geographic identifier. The visual impression of the disputed domain names is strongly associated with Complainant�s mark. The addition of the geographic identifiers "suwanee" and "sweetwater", respectively, does not serve to dispel a likelihood of Internet user confusion between Complainant�s famous "HOLIDAY INN" mark and the disputed domain names. An Internet user would be likely to believe that Complainant was using or authorizing the use of its mark in the domain names in respect to hotels at the locations referred to following its mark. Addition of ".com" does not serve to dispel Internet user confusion. The Panel determines that the disputed domain names are confusingly similar to Complainant�s "HOLIDAY INN" mark.
Complainant has established the first element necessary for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c)).
Respondent has not replied to the Complaint, and has not presented a claim of rights or legitimate interests in the disputed domain names on its own behalf.
There is no suggestion in the evidence that Respondent has been commonly known by the disputed domain names.
Respondent was without doubt aware of Complainant�s rights in its mark when it registered the disputed domain names. Respondent had good reason to believe that Complainant would object to the use of its mark in connection with offering its own hotel reservation services. In these circumstances, Respondent has not established rights or legitimate interests in the disputed domain names by making a bona fide offering of services before notice of a dispute.
Complainant anticipated that Respondent might assert "nominative fair use" of its mark in the disputed domain names. The doctrine of nominative fair use has been considered with some frequency in decisions under the Policy[3], and was recently considered by this sole panelist in a separate proceeding initiated by this Complainant[4].
Whether use of a third party trademark constitutes nominative fair use involves a contextual analysis. Two recent decisions of the U.S. Court of Appeals for the Ninth Circuit, Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002) and Horphag Research v. Mario Pellegrini, 2003 U.S. App. LEXIS 8757 (9th Cir. 2003), reaffirm a useful three-prong approach:
"This court looks to three factors in determining whether a defendant is entitled to the nominative fair use defense: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids, 971 F.2d at 308."[5]
Respondent cannot readily offer "HOLIDAY INN" hotel room services on its websites without referring to "HOLIDAY INN." In addition, there does not appear to be more of the mark used by Respondent than reasonably necessary to identify Complainant�s hotel services.
However, Respondent�s use of the mark in the disputed domain names suggests to Internet users that Complainant sponsors or endorses Respondent�s hotel reservation services. The famous mark "HOLIDAY INN" appears as the initial and principal visual identifier in the disputed domain names, and the geographic identifiers added to the mark do nothing to dispel the suggestion the principal identification conveys regarding sponsorship or endorsement. A logical conclusion on viewing the disputed domain names is that Complainant itself (or through its authorized representative(s)) is offering room reservations at the locations indicated by the disputed domain names. Respondent has deliberately created the impression that hotel reservation services are being offered by Complainant, for example, by including a toll-free reservation number said to offer "Holiday Inn Reservations Worldwide" and by including information regarding Complainant�s corporate headquarters. There is no disclaimer on Respondent�s website to indicate the absence of a connection between Complainant and Respondent. Respondent can readily offer to resell "HOLIDAY INN" hotel rooms on the Internet without using Complainant�s mark in domain names, and without thereby enhancing the impression that its reservation services are sponsored or endorsed by Complainant.
An Internet user may well have a preference for making a hotel reservation directly through the owner or operator of a hotel chain rather than indirectly through a third party service provider. A third party operator does not have a nominative fair use interest in creating the impression that it is in fact the holder of a service mark, thereby misleading Internet users.
Respondent�s use of Complainant�s mark in the disputed domain names is not nominative fair use.
Respondent has failed to establish that it has rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Respondent is using Complainant�s mark in domain names as a principal identifier of its websites. Respondent is offering hotel reservation services which Complainant does not sponsor or endorse. Respondent is profiting from the confusing use of Complainant�s mark in the disputed domain names.
By registering and using and to direct Internet users to its own hotel reservation websites, Respondent has intentionally intended to attract Internet users for commercial gain by creating confusion as to Complainant�s sponsorship of or affiliation with Respondent�s websites. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third element.
The Panel will therefore direct the registrar to transfer the disputed domain names to Complainant.
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 names and be transferred to the Complainant.
Frederick M. Abbott
Sole Panelist
Dated: July 3, 2003
1. This sole panelist recently decided Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214, decided May 18, 2003. Complainant in this proceeding has furnished similar evidence to that it furnished in the prior proceeding to establish rights in a service mark, and the Panel has summarized that evidence in a similar way.
2. On the criteria for establishing that a mark is famous in the United States, see Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 (June 9, 2000), Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2000), and The Dial Corporation v. Perpetual Advantage, Inc., WIPO Case No. DBIZ2002-00100 (June 30, 2002).
3. See, e.g, HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (February 11, 2003).
4. See note 1, supra.
5. As quoted in Horphag Research. v. Mario Pellegrini, 2003 U.S. App. LEXIS 8757 (9th Cir. 2003).
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