WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Six Continent Hotels, Inc. v. The Omnicorp Case No. D2005-1249 1. The Parties
The Complainant is Six Continent Hotels, Inc., a Delaware corporation with its principal place of business in Atlanta, Georgia, United States of America.
The Respondent is The Omnicorp, Krankenmuth, Michigan, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Domain Names”) are registered with Wild West Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 5, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing registrant contact details for Respondent. 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 16, 2005. In accordance with the Rules, paragraph 5, the due date for a response was January 5, 2006. The Respondent has not filed a response with the Center. The Center notified the Respondent's default on January 9, 2006.
The Center appointed Maxim H. Waldbaum as the Sole Panelist in this matter on January 27, 2006. 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
The Complainant is engaged in the business of providing lodging and restaurant services under the name HOLIDAY INN.
Respondent registered the Domain Names on August 5, 2005. 5. Parties' Contentions A. Complainant
Complainant contends that:
- Complainant has used the HOLIDAY INN mark (the “Mark”) in connection with providing lodging and restaurant services, directly or through its predecessor in interest, since at least 1952;
- Complainant owns, manages, and/or franchises more than 3,000 Holiday Inn Hotels in more than 70 countries throughout the world;
- Complainant owns approximately 1,270 registrations for trademarks incorporating the Mark in approximately 150 countries;
- Complainant has developed significant goodwill in connection with the Mark throughout the world;
- The Mark is famous, and is well renowned and associated with Complainant world-wide;
- Complainant operates websites in connection with its lodging and restaurant services under the domain names and ;
- Respondent's use of the Domain Names results in consumers being initially confused and diverted to Respondents website;
- The Domain Names redirect consumers to Respondent's website which contains links offering travel and lodging services to consumers, and such services are offered in competition with those of Complainant;
- Respondent's use of the Domain Names is intended to create the possibility that, subsequent to being purposefully diverted to Respondent's website by the incorporation of Complainant's Mark in the Domain Names, consumers will abandon efforts to access Complainant's services in favor of the competing services promoted on Respondent's website;
- The Domain Names are confusingly similar to Complainant's mark, Respondent has no right or legitimate interests in the Domain Names, and Respondent has registered and used the Domain Names in bad faith.
Complainant requests that the Domain Names be transferred to Complainant. B. Respondent
Respondent has not submitted a response to Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
To satisfy this element, Complainant must establish it has rights to a trade or service mark, and that the disputed domain names are identical or confusingly similar to such marks. See Policy, paragraph 4(a)(i). As established by prior UDRP decisions, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark.” America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004 (February 22, 2001).
Complainant has shown that, since as early as 1954, it has owned valid trademark registrations for trademarks consisting of or incorporating the name “Holiday Inn.”
The Domain Names at issue incorporate Complainant's Mark in its entirety. “[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. . . .” Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (November 6, 2001).
Respondent, in defaulting, does not dispute that the Domain Names are identical or confusingly similar to the Mark.
The Panel thus finds that Complainant has rights to the mark HOLIDAY INN, and that the HOLIDAY INN name and trademark are famous, are identifiable with Complainant, and have considerable good will. The Panel further finds that the Domain Names are confusingly similar to Complainant's Mark. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names in that:
(i) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. In support of this contention Complainant maintains that Respondent's incorporation of Complainant's internationally-renowned Mark into the Domain Names is not authorized, and that any offering of Respondent's in connection with its knowingly unauthorized use of a registered trademark cannot be a bona fide offering of goods and services.
(ii) Respondent is not commonly known by the Domain Names. Print outs of web pages maintained by Respondent in connection with the Domain Names, submitted as exhibits by Complainant, are devoid of any indication that Respondent is commonly known by the Domain Names.
(iii) Respondent's use of the Domain Names is not a legitimate or fair use but is rather a misleading use undertaken with the intent of commercial gain. Print outs of web pages maintained by Respondent in connection with the Domain Names, submitted as exhibits by Complainant, indicate that Respondent's website provides links to services that are in competition with those of Complainant. Complainant alleges that the Domain Names, which are confusingly similar to Complainant's famous Mark, are thus being used by Respondent to divert consumers to a web page that displays links to service providers in direct competition with Complainant. Complainant argues that this establishes that Respondent's use of the Domain Names is not a legitimate or fair use.
The Panel finds that Complainant has made a sufficient prima facie showing that Respondent has no rights or legitimate interests in the Domain Names.1 Respondent, in defaulting, has not responded to Complainant's contentions in this regard. Complainant's contentions are therefore deemed undisputed, and Complainant's burden of proof under paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant has shown that Respondent has wholly incorporated the Complainant's well-renowned Mark into the Domain Names2, and that the Domain Names resolve to Respondent's website through which services in competition to those of Complainant are offered to consumers.
The Panel finds that Complainant has thus made a sufficient showing that Respondent's registration and use of the Domain Names has been an intentional attempt to attract internet users to Respondent's website by creating a likelihood of confusion with Complainant's Mark as to source, sponsorship, or affiliation with Respondent's website. Pursuant to paragraph 4(b)(iv) of the Policy, such use is proper evidence of bad faith registration and use of the Domain Names. Respondent has not responded to Complainant's contentions in this regard. Complainant's contentions are therefore deemed undisputed, and Complainant's burden of proof under paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names , , and be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: February 9, 2006
1 Although the ultimate burden of proof under 4(a)(ii) of the Policy is on the complainant, where a complainant has made a prima facie showing in this regard the burden shifts to the respondent to rebut such showing. See Dr. Ing. h.c.F. Porsche AG v. Hakan Melek,WIPO Case No. D2004-0982 (January 26, 2005); John Swire & Sons Limited v. David Huang,WIPO Case No. D2000-1106 (December 5, 2000); CIMcities, LLC v. John Zuccarini D/B/A/ Cupcake Patrol,WIPO Case No. D2001-0491 (May 31, 2001)).
2 Although there was a contractual relationship between Complainant and Respondent at the time the Domain Names were registered, Complainant has submitted evidence showing that the agreement between the parties expressly prohibited Respondent from registering a domain name containing any of Complainant's trademarks, and that such prohibition expressly made reference to Complainant's HOLIDAY INN and HOLIDAY INN EXPRESS marks. Complainant has further submitted evidence that this contractual relationship was terminated by Complainant in September of 2005, and contends that such termination was exercised as a result of Respondent's violation of the agreement through Respondent's incorporation of the Mark into the Domain Names currently at issue. Respondent, in defaulting, has failed to dispute any of Complainant's contentions in this regard. The Panel finds that, on the facts presented, the contractual relationship that existed at the time the Domain Names were registered, and Respondent's apparent breach of that agreement through its registration of the Domain Names, is further evidence that Respondent has registered and used the Domain Names in bad faith.
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