WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel
Case No. D2004-0246
1. The Parties
The Complainant is Six Continents Hotels, Inc., Atlanta, Georgia, United�States�of�America, represented in this proceeding by Mr.�Douglas�M.�Isenberg,�Esq., of Needle�&�Rosenberg, PC, United�States�of�America.
The Respondents are Trasporto di Networ, Rome, Italy; and Pro Intel, Hector, Minnesota, United�States�of�America.
2. The Domain Names and Registrars
The disputed domain names are , , , , , , , , registered with F Pty�Ltd, of Brisbane, Queensland, Australia, and , registered with Dotster�Inc., Vancouver, Washington, United�States.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on March�31,�2004. On April�1,�2004, the Center acknowledged receipt of the Complaint, and transmitted by email to F and Dotster, Inc., a request for registrar verification in connection with the domain names at issue. On April�1 and April�16,�2004, Dotster, Inc. and F, respectively, transmitted by email to the Center their verification responses, confirming that the Respondents are listed as the registrants, and providing the contact details for the administrative, billing and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on April�22,�2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was May�12,�2004. The package containing the complaint and its annexes was sent by the Center both to Trasporto di Networ and to Pro Intel. The package could not be delivered to Trasporto di Networ (apparently recipient was not at home during several DHL’s visits to its address). Furthermore the Complaint was notified by fax and email. The package was received by Pro Intel. The Respondents did not submit any response. Accordingly, the Center notified the Respondents default on May�13,�2004. The Panel is satisfied that the Center made all efforts to notify the Complaint and the commencement of the proceeding to the Respondents, pursuant to Rules, Paragraph�2(a).
The Center appointed Roberto Bianchi as the sole panelist in this matter on May�19,�2004. 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.
Because both registration agreements are in English, the language of the proceeding shall be English (Rules, Paragraph�11).
4. Factual Background
The following facts have not been contested by Respondent, and have been evidenced by means of copies of the certificates of registration or printouts from the T database attached as Exhibit�E to the Complaint, establishing Complainant’s ownership of these registrations or applications in the United�States for use in connection with lodging and restaurant services, as follows:
TRADEMARK
U.S. REG. NO.
HOLIDAY INN
592,539
HOLIDAY INN (and Design)
592,541
HOLIDAY INNS OF AMERICA (and Design)
708,521
HOLIDAY INN (Stylized)
864,359
HOLIDAY INN THE WORLD’S INNKEEPER (and Design)
1,059,639
HOLIDAY INN (and Design)
1,243,330
HOLIDAY INN PREFERRED CORPORATE TRAVELER (Stylized)
1,261,925
HOLIDAY INN (and Design)
1,275,560
HOLIDAY INN (and Design)
1,281,008
HOLIDAY INN EXPRESS
1,651,851
HOLIDAY INN SUNSPREE
1,806,858
HOLIDAY INN SELECT
2,034,107
HOLIDAY INN EXPRESS (and Design)
2,207,318
HOLIDAY INN SELECT (and Design)
2,370,049
HOLIDAY INN FAMILY SUITES RESORT
2,640,061
HOLIDAY INN CROWNE PLAZA (and Design)
1,281,951
HOLIDAY INN CROWNE PLAZA
1,301,022
HOLIDAY INN CROWNE PLAZA (and Design)
1,555,275
CROWNE PLAZA
1,297,211
CROWNE PLAZA (and Design)
2,329,872
CROWNE PLAZA HOTPHONE
2,361,552
CROWNE PLAZA HOTELS & RESORTS (application)
Ser. No. 78/230,041
STAYBRIDGE SUITES
2,257,830
STAYBRIDGE SUITES (and Design)
2,304,373
Complainant and its affiliates own, manage, lease or franchise HOLIDAY�INN, HOLIDAY�INN�EXPRESS, CROWNE�PLAZA, STAYBRIDGE�SUITES brand hotels in the United States and around the globe. Complainant, either directly or through affiliates, operates, manages, or franchises more than 3,500 hotels worldwide, with more than 536,000 guest rooms, in nearly 100 countries, making Complainant the world’s leading global hotel company. The Panel accepts that the HOLIDAY INN Hotels are one the most recognized hotel brands in the world, and that as a result of Complainant’s continuous, widespread and exclusive promotion and use, the marks HOLIDAY�INN, HOLIDAY�INN�EXPRESS, CROWNE�PLAZA and STAYBRIDGE�SUITES have developed significant goodwill worldwide. Furthermore, Complainant has registered more than 2,900 domain names and operates websites using the domain names , , and , among other domains, including some misspellings of the Complainant’s marks, providing online reservation services for all Complainant’s Hotels worldwide, as illustrated in Exhibit F to the Complaint.
The domain name was registered on February�4,�2003. The domain name was registered on January�15,�2003. The domain names , , and were registered on February�19,�2003. The domain name was registered on May�28,�2003; and the domain name was registered on October�24,�2003. The domain name was registered on September�30,�2003.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain names at issue are identical or confusingly similar to the trademarks or service marks in which Complainant has rights; that the Respondents have no rights or legitimate interests in respect of the domain names, and that the domain names were registered and are being used in bad faith. Further contentions will be examined under section 6 below.
B. Respondent
The Respondent did not reply to the Complainant’s allegations, and is therefore in default.
6. Discussion and Findings
Before proceeding to other issues this Panel shall first consider whether - as contended in the Complaint - Trasporto di Networ and Pro Intel are “the same person or entity, or entities controlled by the same person or entity” and should therefore be referred to collectively as the “Respondent.” This contention is based on the following arguments:
(a) A review of the Whois record for the domain name , which displays PRO Intel as the registrant, lists the identical name servers (NS0.DNSMADEEASY.COM, NS1.DNSMADEEASY.COM, NS2.DNSMADEEASY.COM, NS3.DNSMADEEASY.COM and NS4.DNSMADEEASY.COM) as the other disputed domain names where the Whois record displays Transporto di Networ as the registrant, except for one.
(b) Each of the domain names at issue resolves to the same IP addresses (63.219.151.3; 69.10.137.166; 63.219.151.4; 64.246.42.123 and 205.177.124.51) on the same network (CAIS-CIDR-BLK1) located in McLean, Virginia.
(c) The domain name and all except for one of the domain names have been directed or are currently directed to the same websites of a third-party commercial website that is a competitor of the Complainant.
(d) All, except for one, of the disputed domain names are registered with the same registrar.
(e) Each of the challenged domain names incorporates a trademark owned by Complainant.
The Panel accepts these arguments as true, and concludes that both Trasporto di Networ and Pro Intel are either alter egos of the same person or entity, or are controlled by the same person or entity. It is therefore indifferent whether the complaint is addressed against one of the two or both Respondents. As found in Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654, a panel may consolidate the claims against multiple respondents in accordance with Paragraph�10(e) of the Rules, (“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”). The contention by Complainant that Trasporto di Networ and Pro Intel are “the same person or entity, or entities controlled by the same person or entity” and should therefore be referred to collectively as the “Respondent” is equivalent to a request that parallel claims against each of the two Respondents be consolidated in a single action, a request that this Panel would be ready to grant under the circumstances of this case. Accordingly, the following use of plural form “Respondents” in this decision is equivalent to the singular form which could have been used to point at the unity of control.
A. Identical or Confusingly Similar
Complainant has evidenced that it, directly or through its predecessors in interest, has used the HOLIDAY INN mark since at least as early as 1952 (see Annex�D, Eric�Pearson’s Declaration, para.�7). Complainant has used its CROWNE PLAZA mark since at least 1983 and has used its STAYBRIDGE SUITES mark since at least 1998. With the registration certificates attached to the Complaint it has shown that it has rights in the HOLIDAY INN, CROWNE PLAZA and STAYBRIDGE SUITES marks, all of them pre-dating the registrations of the domain names at issue.
As regards identity or similarity the Panel finds as follows:
(1) . This domain name is confusingly similar to Complainant’s HOLIDAY INN and CROWNE PLAZA trademarks in that the domain name incorporates two of Complainant’s marks in their entirety. Complainant has correctly cited Six Continents Hotels, Inc. v. Frequent Flyer Depot, WIPO Case No. D2003-0550, where the panel found that the domain name consisting of two of Complainant’s marks - “HOLIDAY INN” and “PRIORITY CLUB” - was identical to Complainant’s marks.
(2) . This domain name is confusingly similar to Complainant’s trademark STAYBRIDGE SUITES. In fact it is almost identical to the trademark except that the last letter has been deleted from the domain name. Minor spelling and punctuation differences have been held to make a domain name confusingly similar to a trade or service mark. See Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548, finding confusingly similar to MICROSOFT.
(3) , , and . These domain names are confusingly similar to Complainant’s HOLIDAY INN and HOLIDAY INN EXPRESS trademarks because they are misspellings or because they add the generic terms “hotel,” “hotels” and “suite” to the famous marks of Complainant. Such common words refer precisely to the field of activity distinguished by the trademarks or service marks (lodging industry). See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431, finding confusingly similar to FAIRMONT. This Panel coincides with Complainant that the addition of the word “hotels” reinforces a likelihood of confusion between HOLIDAY INN and HOLIDAY�INN�EXPRESS marks and Respondent’s domain names.
(4) and . These domain names are confusingly similar to Complainant’s HOLIDAY�INN and CROWNE�PLAZA trademarks because they incorporate such marks in their entirety and include the geographically descriptive terms “Mt. Kisco” and “New York.” In Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922, the panel found that “the addition of a geographically descriptive term to a mark does not exclude confusing similarity with the mark.” Because Respondent did not contest the allegation that Complainant or its franchisees own a Holiday Inn hotel in Mt. Kisco and that they own several Crowne Plaza hotels in New�York the Panel accepts that such facts increase the likelihood of confusion between the domain names and the marks.
(5) . This domain name is confusingly similar to Complainant’s CROWNE PLAZA mark. The Panel coincides with Complainant that the inclusion of “RAMADA,” a trademark belonging to a third-party, does not change the result of the comparison.1 Many UDRP panels have found a likelihood of confusion under these circumstances.2
The Panel considers that the requisite of Policy, Paragraph�4(a)(i), that the domain names are identical or confusingly similar to a trademark or service mark on which the complainant has rights, has been met in respect of the nine domain names in dispute.
B. Rights or Legitimate Interests
Complainant contends that Respondents have no rights or legitimate interests in the domain names, because they are not affiliated with Complainant, are not a licensee of Complainant and are not authorized by Complainant to use any of Complainant’s trademarks as a domain name or otherwise. Respondents - says Complainant - have never used, or made preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; to the contrary Respondents are using the domain names to divert Internet traffic to websites that offer hotel reservation services in competition with Complainant. This Panel agrees with Complainant that this is not a bona fide offering. Apparently Respondents are not, and have never been, commonly known by the domain names. The Panel also shares Complainant’s view that given the Complainants’ established use of its HOLIDAY INN, CROWNE PLAZA and STAYBRIDGE SUITES marks, it is unlikely that the Respondents are commonly known by any of these marks. In fact, Respondents are not making a legitimate non-commercial or fair use of the domain names, but an illegitimate commercial use with intent for commercial gain by misleading consumers looking for Complainant’s own websites. See subsection C. In addition to all this Respondents’ silence - by their default - in respect of the precise allegations of Complainant concerning their lack of rights and legitimate interests reinforces the impression of this Panel that Respondents have no rights or legitimate interests in the disputed domain names (Policy, Paragraph�4(a)(ii)).
C. Registered and Used in Bad Faith
Given that HOLIDAY INN, CROWNE PLAZA and STAYBRIDGE SUITES are well-known, internationally recognized marks the Panel believes that when Respondents registered the domain names they must have known of Complainant’s marks. This is an evidence of bad faith registration. The domain names are examples of typosquatting, by omitting just one letter of the marks, or additions of a descriptive term to Complainant’s marks. This means that Respondents must have known of Complainant’s marks and domain names, which is a further evidence of bad faith.
Complainant contends that Respondents, via the domain names and , have provided or are providing hotel reservation services for hotels around the world. It adds that one of Respondents’ websites provides links to other hotel websites, not affiliated with Complainant, and direct competitors of Complainant in the sector of hotel services. When a user types the domain names and into the web address locator, a generic portal page appears providing links to various travel-related websites. Respondents’ website provides a link titled “Hotel Reservations” for a variety of hotels, and divert brand loyal customers from finding a CROWNE PLAZA or STAYBRIDGE SUITES hotel room.
Complainant furthers contends that in another website via the domain names , , , , , and Respondents prominently display the HOLIDAY INN mark, photos of Holiday Inn hotels and the HOLIDAY INN logo. By using the domain names which incorporate Complainant’s HOLIDAY INN marks and CROWNE PLAZA mark, to re-sell hotel services - the same field of activity as the Complainant - Respondents are confusingly diverting Internet users away from the Complainant’s website to the Respondents’ websites.
Absent any contrary contention by Respondents, the circumstances of this proceeding lead this Panel to believe Complainant’s contentions in full. On May�31,�2004, this sole panelist independently attempted to connect his browser to each of the websites under the nine challenged domain names. Only two of them (“www.” and “www.”) resulted in a web page titled “Discount Hotel Room Booking and Car Rental” with the features described by Complainant. The web page includes several links pointing to various pages of the “” website, this site being of impossible access as shown by a “The page cannot be displayed” error message. The attempt to connect to the other seven websites resulted in “DNS errors” or “we cant’t find” messages. These results together with the fact that the “” page is itself inactive, and Respondents default in these proceeding are further indications of bad faith.
The Panel considers that Complainant satisfactorily proved that Respondents registered and are using the challenged domain names in bad faith (Policy, Paragraphs�4(a)(iii) and 4(b)(iv)).
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, Six Continents Hotels, Inc.
Roberto Bianchi
Sole Panelist
Dated: June�1,�2004
1 Complainant has secured the consent of Ms. Crane, Vice President (Legal) of the Cendant Corporation on behalf of Ramada Franchise Systems, Inc. and Two Flags Joint Venture LLC to file the complaint in respect of the domain name. See Annex G to the Complaint.
2 Complainant has mentioned two cases relevant in this context: Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, (respondent’s domain name was likely to be confused with complainant’s mark CHEVRON); and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793, (domain name found likely to be confused with PFIZER mark; the addition of the third-party mark does not eliminate the visual impression that the disputed domain name is associated with complainant’s trademark; NASCAR consented to transfer).
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