WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. NA InterMos
Case No. D2006-1313
1. The Parties
The Complainant is Six Continents Hotels, Inc., Atlanta, United States of America, represented by The Gigalaw Firm, United States of America.
The Respondent is NA InterMosMoscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�10,�2006. On October�13,�2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October�14,�2006, eNom 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 together with the amendment to 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 October�17,�2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was November�6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�7,�2006.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November�13,�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
Complainant is a worldwide known hotel group that acts in several countries offering the largest number of rooms. It is present in nearly 100 countries and more than 150 million guests are hosted annually. Its trademark “HOLIDAY INN” represents Complainant’s flagship brands in the hotel business, therefore, is used in connection with 1,406 hotels around the world.
The Complainant is, without limitation, the proprietor of 1,215 registrations around the world, for trademarks that consist of or contain the mark HOLIDAY INN. In the U.S. Patent and Trademark Office alone the Complainant owns the following registers:
Mark
Reg. No.
Date of First Use
Date of Registration
HOLIDAY INN
592,541
July 1, 1952
July 13, 1954
HOLIDAY INN
592,539
March 1, 1952
July 13, 1954
HOLIDAY INN
864,359
1957
January 28, 1969
HOLIDAY INN
1,061,893
1949
March 22, 1977
HOLIDAY INN
1,243,330
May 19, 1982
June 21, 1983
HOLIDAY INN
1,275,560
December 1, 1982
April 24, 1984
HOLIDAY INN
1,281,008
July 13, 1982
June 5, 1984
HOLIDAY INN
1,330,101
October 31, 1983
April 9, 1985
Further than the above registrations, the Complainant registered more than 990 domain names containing the expression “HOLIDAY INN” or variations of it, as showed in Annex 6 of the complaint.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name , registered by the Respondent, is a deliberate typographical misspelling of Complainant’s “HOLIDAY INN” trademarks.
Complainant also affirms that Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the said party has never authorized Respondent to register or make use of any trademark of its property in any way, demonstrating that Complainant has no connection with Respondent.
Complainant holds that Respondent is not using the domain name in connection with bona fide offering goods and services and has been misusing the domain name in dispute to direct costumers to other hospitality services in competition with the Complainant.
Finally, Complainant argues that Respondent registered and has been using the Disputed Domain Name in bad faith by creating a website similar to Complainant’s in order to disrupt Complainant’s business and to profit from Complainant’s recognition by leading Internet users to suppose that is a website owned by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s “HOLIDAY INN” trademark was created in 1954 and registered in more than 100 countries, decades before the registration of the disputed domain name, on September�4,�2006. What distinguishes Respondent’s registered domain name and Complainant’s trademark “HOLIDAY INN” is the position of letter “i” from the world HOLIDAY, which placed between letters “l” and “d” demonstrates the real meaning of the expression. The term “HOLDIAY” does not exists in English dictionary. Therefore, it only expresses a meaning when written as “HOLIDAY”, which is “day of celebration; day when one does not work; vacation”.
These differences in the position of the letter in expressions “HOLDIAY INN” and “HOLIDAY INN” do not change the overall impression of the mark and lead the costumer to link the disputed domain name to the widely known Complainant’s mark.
In this context, the Panel finds that the domain name meets the Policy requirement and is confusingly similar to Complainant’s registered trademark “HOLIDAY INN”.
B. Rights or Legitimate Interests
The registration of the disputed domain name occurred on September�4,�2006, long after Complainant’s registrations for the trademark “HOLIDAY INN” and domain names containing this term, which shows that Respondent must have been aware of Complainant’s trademarks at the time of registration and use of the said domain name. This fact can be easily proved by examining the website contents, which are also related to the hotel business.
Furthermore, from Respondent’s lack of reply it can be inferred that Respondent does not run any kind of business activities in connection with the disputed domain name. In effect, the web page hosted under the said domain only directs Internet users to websites of other hospitality companies. In this sense, the domain name is not rightfully used by Respondent in connection with a bona fide offering of goods and services.
In addition, Complainant has never authorized Respondent to make use of its trademarks, proving that there is no relationship between the parties.
Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Accordingly, the Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy specifies certain non exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the Domain Name in bad faith.
The Complainant’s trademark is widely known and the Panel deems that Respondent was aware of Complainant’s rights regarding the trademark “HOLIDAY INN” at the time of disputed domain name registration. The awareness of the Respondent can be inferred by the fact that the domain provides links to other websites that offer the same kind of service offered by the Complainant. The Respondent most likely intended to deceive Internet users to believe they are accessing the Complainant’s website.
The practice of switching or omitting words is called “typo-squat”, and is implemented to divert users to respondent’s site for commercial gain, see, among many other cases, PartyGaming Plc v. WHOis Privacy Protection Service, Inc./Henao Berenice, WIPO Case No. D2006-0508:
“There is no doubt that the Domain Name is confusingly similar to the Complainant’s mark. The only difference is the two transposed letters, and that difference would be easily missed by some Internet users. The Panel accepts the Complainant’s submission that this is an example of “typo squatting”, where an obvious intention to capitalize on the near-identity between the Domain Name and the Complainant’s mark underscores the confusing similarity between the two”.
The Panel also notes that Complainant and Respondent were parties in a previous WIPO case concerning other domain names including the Complainant’s trademark. See Six Continents Hotels, Inc. v. Amjad Kausar also known as InterMos, WIPO Case No. D2003-0663:
“The Respondent registered the Domain Names in dispute, which are confusingly similar with the Complainant’s well-known trademarks, many years after the Complainant’s trademarks were registered and widely used and well known in many countries throughout the world. The Respondent has also associated its sites with numerous banner and pop-up advertisements from which it derives substantial revenue while trading on the Complainant’s image and goodwill.”
Respondent intentionally uses the domain name aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by the domain name makes potential costumers to choose other services than the Complainant’s, disrupting Complainant’s business.
For the mentioned reasons, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith. The Panel therefore concludes that the Complainant has established Paragraph 4(a)(iii) 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 the domain name be transferred to the Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: November 27, 2006
Full & Egal Universal Law Academy