WIPO Domain Name Decision D2007-0313 for holidayinnniagrafalls.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Domain Park Limited

Case No. D2007-0313

1. The Parties

The Complainant is Six Continents Hotels, Inc., of Atlanta, Georgia, United States of America, represented by The Gigalaw Firm, United States of America.

The Respondent is Domain Park Limited, of Apia, Samoa.

2. The Domain Name and Registrar

The disputed domain name is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�2,�2007. On March�5,�2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March�8,�2007, Moniker Online Services, LLC 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 March�19,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April�8,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April�11,�2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on April�23,�2007. 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.

On April�26,�2007, the Center received an email message from Respondent stating that Respondent does not “contest this claim” and agrees “to transfer the domain to 6c”. The Panel issued Procedural Order No. 1 ordering that Complainant submit a statement indicating whether Complainant would request the suspension of the administrative proceeding to secure from Respondent the transfer of the disputed domain name or whether Complainant would opt for the continuation of the administrative proceeding. On May�3,�2007, Complainant stated that Complainant did not desire a suspension of the administrative proceeding.

4. Factual Background

The mark upon which the Complaint is based is HOLIDAY INN. According to the documentary evidence and contentions submitted, Complainant or its affiliates own a large number of registrations for the HOLIDAY INN mark around the world, including eight U.S. Trademark Registrations which date back to the period of 1954 to 1985. Reference is made to Annex 4 of the Complaint. According to the contentions submitted, Complainant owns a large number of domain names registrations that incorporate the word HOLIDAY INN. Reference is made to Annex 5 of the Complaint.

The Panel notes that previous WIPO UDRP Panels have recognized that the HOLIDAY INN mark enjoys a wide scope of protection. See, e.g., Six Continents Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Six Continents Hotels, Inc. v. CredoNIC.com/Domain Name for Sale, WIPO Case No. D2005-0755; and Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659.

According to the contentions submitted, Complainant is one of a number of companies collectively known as the InterContinental Hotels Group, which own, manage, lease or franchise, through various subsidiaries, more than 3,600 hotels in nearly 100 countries and territories around the world. The HOLIDAY INN brand is used in connection with 1,393 hotels worldwide. Reference is made to Annex 3 of the Complaint. Complainant licenses a Holiday Inn Hotel in Niagara Falls, Ontario, Canada. Reference is made to Annex 6 of the Complaint.

According to the documentary evidence, Respondent registered the domain name with Moniker Online Services, LLC. on November�11,�2006. On January�16,�2007, Complainant sent a cease and desist letter to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 8 of the Complaint. Complainant states that no response to that letter was received from Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name contains the HOLIDAY INN mark in its entirety plus a misspelling of the name of a city (i.e., “niagra” instead of “niagara”). Relying on previous WIPO UDRP decisions, Complainant argues that the use of the HOLIDAY INN mark plus a geographic term in a domain name creates a domain name that is confusingly similar to its HOLIDAY INN mark.

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name because (i) Complainant never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the HOLIDAY INN mark, (ii) Respondent has not used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services, (iii) it is unlikely that Respondent is commonly known by the HOLIDAY INN mark, and (iv) Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

Finally, Complainant argues that Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor since Respondent is using the domain name in connection with a website that offers services competitive with those offered by Complainant, and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the HOLIDAY INN mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

While Respondent did not timely reply to the Complainant’s contentions, Respondent, upon receipt of the Center’s Notification of Appointment of Panel, sent an email to the Center stating that Respondent does not “contest this claim” and agrees “to transfer the domain to 6c”.

Previous WIPO UDRP panels have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. As indicated in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, “[t]here have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No.�D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No.�D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph�4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No.�D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No.�D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph�4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No.�D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Soci�t� Fran�aise du Radiot�l�phone-SFR v. Karen, WIPO Case No.�D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No.�D2003-0745)”.

The Panel notes that the Complainant has not accepted the Respondent’s offer of a settlement. The Complainant’s decision to decline the offer was made in light of the fact that (i) Respondent has neither responded to Complainant’s cease and desist letter dated January�16,�2007, nor to the Complaint, (ii) the only communication that the Respondent has sent to the Complainant is the email message of April�26,�2007, and (iii) Complainant has prevailed in numerous UDRP disputes involving the HOLIDAY INN mark. It is understandable that Complainant does not wish to delay this proceeding in view of Respondent’s past course of action.

As pointed out in The Cartoon Network LP, LLLP v. Mike Morgan, supra, previous UDRP decisions have indicated that, in the cases where there is some reason to doubt that the Respondent’s intent was authentic, the best course of action is to proceed to review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

The Panel finds that the situation in the present case is not sufficient to order the transfer of the domain name to Complainant without making substantive findings. In fact, the Center has received an email message from a person and an email address which are not listed as one of the contacts for registrant in the Whois database of Moniker Online Services, LLC. Had the parties pursued with the offer of a settlement, the Panel would have a better basis to consider that the Respondent’s consent was authentic. The Panel also notes that the consent to transfer was made after Respondent’s failure to submit a Response. Therefore, the circumstances of the present case give rise to a reasonable doubt as to the genuineness of the Respondent’s intent and it is the duty of the Panel to ascertain that the dispute is resolved with due expedition and without unnecessary risks to the parties.

The consensus view is that a respondent’s default does not automatically result in a decision in favor of a complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac., WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

A. Identical or Confusingly Similar

This Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.�D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No.�D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No.�D2000-0047; Bayerische Motoren Werke AG v. , Case No. D2002-0615. That is particularly true when the registered mark is entitled to a high level of protection due to its fame and notoriety, as is the case of the HOLIDAY INN mark.

The Panel also concurs with the finding of previous WIPO UDRP panels that the use of the HOLIDAY INN mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the HOLIDAY INN mark. In fact, the HOLIDAY INN brand is used in connection with hotels worldwide and hotels are necessarily related to a specific geographic location. Rather than distinguishing the disputed domain name from Complainant’s mark, the addition of “niagrafalls” increases the likelihood of confusion in the mind of the consumer and Internet user. See e.g., Six Continents Hotels, Inc. v. CredoN/ Domain Name for Sal, supra; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388.

The Panel has also noted that Respondent has registered the disputed domain name with a misspelling of the name of the Niagara city (“niagra” instead of the properly spelled “niagara”). Past WIPO UDRP cases offer many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue, a practice which is called “typosquatting”. See, e.g., ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627. Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713, Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

While the present case involves the misspelling of a geographic location, not of a trademark, the rationale is the same. This is also an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the word “niagara”, an Internet user searching for a Holiday Inn hotel in Niagara Falls could easily type “niagra” and be directed to Respondent’s website.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Complainant further contends that Respondent has no legitimate interests or rights in the disputed domain name.

The consensus view in the WIPO UDRP Panel decisions has been that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests in the domain name, respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel is convinced that the Complainant has done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name, the principal element of the disputed domain name is the Complainant’s famous brand name and mark, and it is evident that Complainant has not authorized the Respondent to use its mark and name in the domain name.

Complainant further contends that Respondent is not using the domain name in connection with a bona fide offering of goods and services and is not making a legitimate non-commercial or fair use of the disputed domain name. In fact, Respondent is using the disputed domain name to offer hospitality services in competition with those offered by the Complainant (reference is made to Annex 7 of the Complaint) and Respondent is clearly diverting consumers with intent for commercial gain.

In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The fact that the Respondent has chosen as a domain name a previously registered and widely known trademark plus a geographic location which is linked to the services distinguished by said mark is per se a clear indication that registration of the disputed domain name was made in bad faith. Respondent could not have ignored the existence or the reputation of the HOLIDAY INN mark

In addition, the Panel is convinced by all the evidence produced in this case and by Respondent’s default that Respondent intended to free ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain.

The Panel takes further the view that in this case, the content of the website (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith registration and use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the website offering for sale goods or services that are in direct competition with those of the original trademark owner, there is a clear evidence of divertion of Internet traffic. Therefore, the Panel finds that the disputed domain name has been used in bad faith.

In short, based on the evidence and the manner in which Respondent has used and is using the disputed domain name demonstrates that was registered, was used and still is being used in bad faith.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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.

Manoel J. Pereira dos Santos
Sole Panelist

Dated: May 7, 2007

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