WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours
Case No. D2004-0388
1. The Parties
The Complainants are Six Continents Hotels, Inc and Inter-Continental Hotels Corporation, Atlanta, Georgia, United States of America represented by Needle & Rosenberg, PC, United States of America.
The Respondent is South East Asia Tours of Sharjah, United�Arab Emirates.
2. The Domain Names and Registrar
The disputed domain names ; , are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May 26, 2004. On May 27, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On May 27 2004, Go Daddy Software 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 June 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�22,�2004. An informal Response was filed with the Center on June 8, 2004. The Complainant replied by e-mail on June 22, 2004, although it was not necessary to consider the additional submissions made in that supplemental filing for the purpose of this decision.
The Center appointed Dawn Osborne as the sole panelist in this matter on June�29,�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.
4. Factual Background
Complainant owns numerous trade mark registrations for the HOLIDAY INN, CROWNE PLAZA and INTERCONTINENTAL marks in the United States and across the world including the UAE for use in connection with lodging and restaurant services in motels and hotels.
The Respondent registered the Domain Names on December 24, 2001, for use in relation to its business as travel agents.
5. Parties’ Contentions
A: Complainant
The Complainants contentions can be summarized as follows:
The Complainants are part of the InterContinental Hotels Group (“IHG”), the world’s leading hotel company IHG and/or its affiliates own, manage, lease or franchise the HOLIDAY INN, HOLIDAY INN EXPRESS, CROWNE PLAZA and INTERCONTINENTAL (“the IHG marks”) brand hotels in the United States and around the globe – around 3,500 hotels worldwide, with more than 536,000 guest rooms in nearly 100 countries. IHG’s brands serve more than 150 million guests per year globally.
In addition to owning trade mark registrations in the United States and across the world including in the UAE for the IHG marks, the Complainants have accrued trade mark rights by virtue of their long and continuous use of the IHG marks.
Complainants, directly or through their predecessors in interest, have used the INTERCONTINENTAL mark in commerce since at least as early as 1948, the HOLIDAY INN mark since at least as early as 1952, and the CROWNE PLAZA mark since at least as early as 1983.
The HOLIDAY INN hotel brand is the most recognized hotel brand in the world. The HOLIDAY INN hotels have 100% name recognition in the United States.
In the last 50 years Complainants or their predecessor in interest have spent more than $1 billion advertising and promoting the IHG marks worldwide and currently spend many millions of dollars annually on advertising, marketing and promoting its brands. IHG franchisees spend additional sums of money advertising their individual hotels.
As a result of Complainants’ continuous, widespread and exclusive promotion and use of the IHG marks, the marks HOLIDAY INN, CROWNE PLAZA and INTERCONTINENTAL have developed significant goodwill in the minds of consumers worldwide and are famous marks.
Complainants have registered more than 2,900 domain names including those containing the IHG Marks and operate websites providing online reservation services for all IHG hotels worldwide. IHG Brand websites received 7 million visits in January�2004, alone averaging more than 225,000 visits per day. In 2003, online reservations for HOLIDAY INN brand hotel rooms through IHG Brand websites generated more than 6% of IHG’s total HOLIDAY INN reservations and nearly $400 million in revenue for IHG. HOLIDAY INN is routinely one of the top 20 most commonly searched travel related terms on the Internet, averaging more than 400,000 search queries per month.
At any of IHG’s websites Priority Club Members can also link to the websites of IHG’s strategic affiliates allowing them to make airline and car rental reservations.
The domain names and incorporate IHG’s registered and famous marks in their entirety and include the additional geographically descriptive term “Dubai”. The use of another’s trade mark in connection with a geographic term increases the likelihood of consumer confusion. This is exacerbated by the fact that the Complainants have hotels in Dubai. A consumer looking to stay at the Dubai Holiday Inn hotel or the Crowne Plaza hotel in Dubai will be confused by Respondent’s website and may believe that it is associated with, related to or somehow affiliated with Complainants.
The domain name incorporates a common abbreviation of Complainants’ registered mark INTERCONTINENTAL with the descriptive term “hotels” intended to elicit consumer confusion in that the website associated with the domain name sells INTERCONTINENTAL hotel rooms and hotels is the business of the Complainants.
When Complainants first discovered the Respondent’s website it also included the mark and logo INTERCONTINENTAL at the top with the introduction “Welcome to the Hotel InterContinental Dubai” with a photo of a room of the INTERCONTINENTAL hotel. The fact that Respondent included the Complainants’ INTERCONTINENTAL logo on its website supports the fact that the Respondent was well aware of the Complainants when it registered the domain name and intended to trade on the goodwill associated with the Complainants’ INTERCONTINENTAL mark in connection with the sale of hotel rooms.
The Respondent has no rights or legitimate interests in the Domain Names. Respondent is not affiliated with the Complainants, is not a licensee of Complainants and is not authorized by the Complainants to use any of the Complainants’ trade marks as a domain name or otherwise.
The Respondent has never used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services. On the Respondent’s website the user may reserve rooms at any number of hotels including those of the Complainants’ competitors. The Respondent is using the Domain Names to divert traffic to websites that offer hotel reservation services in competition with Complainants, which is not a bona fide offering of goods or services.
The Respondent is not and never has been commonly known by the Domain Names.
The Respondent is not making a legitimate non commercial or fair use of the Domain Names. It is using them to resell services in the exact same field as the Complainants.
The IHG Marks are well known and the Respondent knew of the Complainants’ mark when it registered the Domain Names, leading to evidence of bad faith.
When Complainants visited the Respondent’s website initially the websites associated with the Domain Names used exact replicas of the Complainants’ trade marks and logos.
Respondent is using the worldwide fame of the IHG marks to attract for commercial gain Internet users to its website where it provides hotel reservation services for hotels in Dubai, including those not connected with the Complainants.
The Respondent is also the registrant of the following domain names: ; , and . In a similar pattern to the present case the Respondent has registered variations of third party marks belonging to third parties with descriptive terms in an effort to divert Internet users searching for other well known hotel brands to its own website.
B. Respondent
The Respondent’s contentions can be summarized as follows:
The Respondent is an authorized travel agent authorized to use hotel logos and names to promote their products and obtain commission from this business.
The Domain Names were registered solely for the relevant 3 hotel properties to promote them. Once the Complaint was received they were redirected to the main website in the absence of the General Manager on vacation.
The Respondent is not a hotel or a competitor of the Complainants but rather helping them to promote their products on a commission basis. They would be willing to do this to the Complainants’ standards. If there can be no agreement the Respondent can release the Domain Names as then the Respondent will stop selling the Complainants’ hotels worldwide. The Complainants should pay the expenses that the Respondent incurred while promoting the Domain Names to search engines as well as the domain yearly fees.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names and consist of the Complainants’ well known registered marks and the geographic designation Dubai. The addition of “dubai” does not serve to distinguish these domain names from the Complainants’ well known marks, but indeed compounds the likelihood of confusion between these domain names and the Complainants’ trade marks given that the Complainants’ have CROWNE PLAZA and HOLIDAY INN hotels in Dubai.
The domain name consists of an abbreviation and the first two syllables of the Complainant’s INTERCONTINENTAL trade mark combined with the descriptive term “hotels”, hotels being the primary business of the Complainants. As such the Domain Name is confusingly similar to the Complainants’ INTERCONTINENTAL trade mark and will be presumed by customers to be affiliated with the Complainants.
B. Rights or Legitimate Interests
The Respondent has explained that it is a travel agent promoting the Complainants’ hotels and services on a commission basis. The Complainants state that they have not authorized the use of the IHG marks for this purpose and there appears to be no relationship between the Respondent and the Complainants which would entitle the Respondent to register domain names containing the Complainants’ marks.
Further, the Respondent has used the Domain Names to point to websites which offer competing hotel services to that of the Complainants.
As such, the Panel holds that the Respondent has not used the Domain Names in relation to the bona fide offering of services and has no other right or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.”
The Respondent has engaged in the practice of registration of domain names containing the trade marks of others including misspellings and the combination of well known trade marks with descriptive or geographical terms. The Domain Names have been used to link to a website offering competing hotel services to those of the Complainants. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites, by creating confusion as to the source, sponsorship, affiliation or endorsement of its products or services. The Panel, therefore, finds that bad faith has been demonstrated under Paragraph 4(b) (iv) 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 , and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: July 15, 2004
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