The Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Daniel Kirchhof, Unister GmbH of Leipzig, Germany. 2. The Domain Names and Registrar
The disputed domain names, which are set out in Annex A to this Decision, are registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 17, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On November 17, 2010, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on December 15, 2010. 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
This is the second complaint under the Policy that the Complainant has filed against the Respondent. In the first proceeding, Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,WIPO Case No. D2009-1661, begun in December 2009, a panel ordered a transfer of 1,519 domain names from the Respondent to the Complainant. For convenience, that case will be referred to herein as “Kirchhof I”.
The Complainant is one of a number of companies collectively known as InterContinental Hotels Group (“IHG”), the world’s largest hotel group by number of rooms. Companies within IHG own, manage, lease or franchise, through various subsidiaries, more than 4,500 hotels and 650,000 guest rooms in more than 100 countries and territories around the world. IHG owns a portfolio of well-recognized brands including Holiday Inn Hotels and Resorts, Holiday Inn Express, Intercontinental Hotels & Resorts, Crowne Plaza Hotels & Resorts, Hotel Indigo, Staybridge Suites and Candlewood Suites, and also manages the world’s largest hotel loyalty program, Priority Club Rewards.
The Complainant, or its affiliates, owns approximately 1,700 registrations in at least 200 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOLIDAY INN. In the United States of America these registrations date from 1954. The Complainant, or its affiliates, also owns trademark registrations for HOLIDAY INN EXPRESS and HOLIDAY INN SELECT. In the United States of America these registrations date from 1998 and 1997, respectively.
The Hotel Indigo brand was founded in 2004 and today is used in connection with 36 hotels worldwide, which collectively offer 4,264 hotel rooms. The Complainant, or its affiliates, own at least 133 registrations in at least 60 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOTEL INDIGO. In the United States of America these registrations date from 2005.
On August 31, 2010, the Complainant’s legal representative transmitted by email to the Respondent, and the Respondent’s representative as identified in Kirchhof I, a demand letter regarding the disputed domain names. The Respondent did not respond.
The Respondent registered the disputed domain names between May 28, 2009 and July 21, 2009, with the vast majority being registered over a period of three days from July 17 to 21, 2009. The Complainant provided screenshots of the home page of the websites to which the disputed domain names resolve, with each one showing a picture of the particular hotel and a section to check rates and availability, plus tabs for finding out more information under the headings “Hotel offers”, “Hotel pictures” and “Surroundings pictures”. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the disputed domain names contains one of the Complainant’s trademarks in its entirety, i.e. the HOLIDAY INN or HOTEL INDIGO trademark, plus one or more hyphens plus one or more geographic identifiers or other terms. The addition of a geographic identifier and/or punctuation marks is not sufficient to avoid a finding of confusing similarity. There are 15 disputed domain names that do not meet one of the criteria for being confusingly similar (as stated in Kirchhof I) but these are still confusingly similar to one of the Complainant’s trademarks because they either contain the distinctive portion of the HOTEL INDIGO trademark (i.e. “indigo”) or two of three words from one of the Complainant’s HOLIDAY INN trademarks (i.e. “holiday”, and “express”, “inn” and “express”, or “inn” and “select”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because the Complainant has never assigned, granted, sold, transferred or in any way authorized the Respondent to register or use the HOLIDAY INN trademark or the HOTEL INDIGO trademark in any manner. In Kirchhof I the panel accepted there was no evidence of any commercial relationship between them that would entitle the Respondent to the mark.
The Complainant contends that the Respondent has never used, or made preparations to use, the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods and services. The Respondent is using the disputed domain names in connection with websites that display information about a single hotel along with a “hotel search” form that purports to offer hotel reservations. Internet users who use this search form are provided with inaccurate information about the availability of hotel rooms and/or are likely to be confused about the source of the reservation service. This is also evidence that the Respondent has made an illegitimate, commercial and unfair use of the disputed domain names, with intent for commercial gain by misleading consumers. Internet users are misled into believing the Respondent’s websites using the disputed domain names are somehow associated with the Complainant. Further, to the Complainant’s knowledge, the Respondent has never been commonly known by any of the disputed domain names and has never acquired any trademark or service mark rights in any of the disputed domain names, and therefore, has no rights or legitimate interests in any of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Complainant is prevented from registering any of the disputed domain names, and the long list of disputed domain names as well as at least five other decisions against the Respondent under the Policy indicate a “pattern” of conduct by the Respondent; (ii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor, because the Respondent is selling hotel services under the Complainant’s trademark without permission; (iii) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the HOLIDAY INN and HOTEL INDIGO trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of a product or service on the Respondent’s websites; (iv) there can be no doubt the Respondent knew of the Complainant’s HOLIDAY INN and HOTEL INDIGO trademarks as they are well-known, internationally recognized marks registered worldwide; (v) all of the Complainant’s trademarks pre-date the Respondent’s registration of the disputed domain names, in many cases by more than 50 years; (vi) given the Complainant’s established rights in the HOLIDAY INN and HOTEL INDIGO trademarks worldwide and that the disputed domain names are “so obviously connected with” the Complainant, the Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy; (vii) the Respondent did not respond to the Complainant’s demand letter; and (viii) the Panel in Kirchhof I found the Respondent acted in bad faith in nearly identical circumstances. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant contends that “each of the disputed domain names contains one of the Complainant’s trademarks in its entirety … plus one or more hyphens plus one or more geographic identifiers or other terms”. In fact, only five of the disputed domain names contain either of the Complainant’s trademarks in their entirety: , , , and . The other 155 disputed domain names contain, in addition to hyphens and one or more geographic identifiers or other terms, one or more words from the Complainant’s trademarks but not the entirety of the Complainant’s trademarks.
For convenience, this Panel has divided the disputed domain names into 12 categories, as follows:
A. The domain name begins with “holiday-express”, followed by a hyphen, followed by a geographic identifier and/or other term. There are 92 of these domain names, including: , and .
B. The domain name begins with (the misspelled) “hoilday-express”, followed by a hyphen, followed by a geographic identifier and/or other term. There is one of these domain names: .
C. The domain name begins with a geographic identifier and/or other term, followed by a hyphen, followed by “holiday-express”. There is one of these domain names: .
D. The domain name begins with “holiday-exp”, followed by a hyphen, followed by a geographic identifier and/or other term. There are 24 of these domain names, including: , and .
E. The domain name begins with “holiday-ex”, followed by a hyphen, followed by a geographic identifier and/or other term. There are two of these domain names: and .
F. The domain name begins with “holiday-select”, followed by a hyphen, followed by a geographic identifier and/or other term. There are four of these domain names: , , and .
G. The domain name begins with “holiday-suites”, followed by a hyphen, followed by a geographic identifier and/or other term. There are 16 of these domain names, including: , and .
H. The domain name begins with “hotel-indigo”, followed by a hyphen, followed by a geographic identifier and/or other term. There are four of these domain names: , , and .
I. The domain name begins with “indigo”, followed by a hyphen, followed by a geographic identifier and/or other term. There are five of these domain names: , , , and .
J. The domain name begins with “inn-express”, followed by a hyphen, followed by a geographic identifier and/or other term. There are nine of these domain names, including: , and .
K. The domain name begins with “inn-select”, followed by a hyphen, followed by a geographic identifier and/or other term. There is one of these domain names: .
L. The domain name begins with a geographic identifier and/or other term, followed by a hyphen, followed by “holiday-inn”, followed by a geographic identifier and/or other term. There is one of these domain names: .
The disputed domain name in Category L contains the Complainant’s trademark HOLIDAY INN in its entirety, together with the geographic identifiers “olaya” at the beginning and “riyadh” at the end. The addition of these geographic identifiers does not lessen the inevitable confusion of the domain name with the Complainant’s trademark. Accordingly, this Panel finds that this disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Similarly, the four disputed domain names in Category H contain the Complainant’s trademark HOTEL INDIGO in its entirety, together with geographic identifiers or descriptive terms. These additional words do not lessen the inevitable confusion of the domain names with the Complainant’s trademark. Accordingly, this Panel finds that these four disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
It is less straightforward whether the disputed domain names in the remaining categories are confusingly similar to the Complainant’s trademarks. These domain names contain only part of the Complainant’s trademarks, and many of those parts are descriptive words in common usage, such as “holiday”, “express”, “inn”, “suites” and “select”. In determining whether or not these disputed domain names are confusingly similar to the Complainant’s trademarks, this Panel, like the panelist in Kirchhof I, has taken into account the following factors:
- that previous decisions under the Policy have concluded that the HOLIDAY INN and HOLIDAY INN EXPRESS trademarks are “famous”, “extremely well known” or even “iconic” (see, for example, Six Continents Hotels, Inc. v. Ameriasa,WIPO Case No. D2002-1132; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755);
- the HOLIDAY INN, HOLIDAY INN EXPRESS and HOLIDAY INN SELECT trademarks have been registered for many years before the Respondent’s registration of the disputed domain names;
- the HOLIDAY INN, HOLIDAY INN EXPRESS and HOLIDAY INN SELECT trademarks are used in relation to more than three thousand hotels around the world;
- the first word of the Complainant’s HOLIDAY INN, HOLIDAY INN EXPRESS and HOLIDAY INN SELECT trademarks, “holiday”, is at the beginning of many of the disputed domain names, thus drawing attention to that component of those names;
- most of the disputed domain names contain a reference to a location that is a location of one of the Complainant’s hotels; and
- the disputed domain names registered by the Respondent are high in number and similar in character.
The disputed domain names in Category A commence with the words “holiday-express”. This Panel notes that in Kirchhof I the panelist found that the domain names in dispute in that case consisting of “holiday-express” and a geographic identifier or generic term were confusingly similar to the Complainant’s HOLIDAY INN and HOLIDAY INN EXPRESS trademarks. Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to concur with the view expressed in Kirchhof I. Accordingly, this Panel finds that the 92 disputed domain names in Category A are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name in Category B commences with the word “hoilday”. This word is a misspelling of the word “holiday”, and is confusingly similar to it. Based on the reasoning and finding above in respect of the disputed domain names in Category A, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name in Category C commences with the words “albert-lea”. In the context of this case it seems clear that the words “albert lea” refer to the city of that name in Minnesota, United States of America. Based on the reasoning and finding above in respect of the disputed domain names in Category A, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category D commence with the words “holiday-exp”. This Panel notes that in Kirchhof I the panelist found that the domain names in dispute in that case consisting of “holiday-exp” and a geographic identifier or generic term were confusingly similar to the Complainant’s HOLIDAY INN EXPRESS trademark. This was because “exp” is a common and well-known abbreviation for “express”. Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to concur with the view expressed in Kirchhof I. Accordingly, this Panel finds that the 24 disputed domain names in Category D are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category E commence with the words “holiday-ex”. This Panel notes that in Kirchhof I the panelist found that the domain names in dispute in that case consisting of “holiday-ex” and a geographic identifier or generic term were confusingly similar to the Complainant’s HOLIDAY INN EXPRESS trademark. Although the panelist does not expressly state it, it may be presumed that the reason for this finding is because “ex” will be recognized as an abbreviation of “express” in the context of these domain names. Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to concur with the finding contained in Kirchhof I. Accordingly, this Panel finds that the two disputed domain names in Category E are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category F commence with the words “holiday-select”. These words are the first part and the last part of the Complainant’s trademark HOLIDAY INN SELECT. In the context of the services for which this trademark is registered – namely, hotel services – the words “holiday” and “select” are the more distinctive components of the Complainant’s trademark. Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to find that the incorporation in the disputed domain names of the words “holiday” and “select” together with geographic identifiers makes these domain names confusingly similar to the Complainant’s trademark HOLIDAY INN SELECT (a finding that is consistent with the finding of the panelist in Kirchhof I in respect of similar domain names). Accordingly, this Panel finds that the two disputed domain names in Category F are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category G commence with the words “holiday-suites”. This Panel notes that in Kirchhof I the panelist found that the domain names in dispute in that case consisting of “holiday-suites” and a geographic identifier or generic term were confusingly similar to the Complainant’s HOLIDAY INN and HOLIDAY INN EXPRESS trademarks. This was because “the domain name could be viewed as replacing one word in the Complainant’s trademark (i.e. ‘Inn’), with a word which has a similar meaning and has a clear connection to hotels and accommodation (i.e. ‘Suites’)”. Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to concur with the view expressed in Kirchhof I. Accordingly, this Panel finds that the 16 disputed domain names in Category G are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category I commence with the word “indigo”. This Panel notes that in Kirchhof I the panelist stated: “Although ‘indigo’ has an ordinary dictionary meaning, this word is not widely used in commerce, and the [p]anel finds that it is a distinctive part of the [c]omplainant’s HOTEL INDIGO trade marks. Accordingly, the disputed domain names commencing with ‘indigo’ and coupled with a geographic or generic term, are confusingly similar to the [c]omplainant’s trade marks.” Given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to concur with the view expressed in Kirchhof I. Accordingly, this Panel finds that the five disputed domain names in Category I are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain names in Category J commence with the words “inn-express”. These words are the last parts of the Complainant’s trademark HOLIDAY INN EXPRESS. The case for confusing similarity in respect of these disputed domain names is less strong than it is in respect of the disputed domain names containing the words “holiday”. Nevertheless, given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to find that the incorporation in the disputed domain names of the words “inn” and “express” together with geographic identifiers makes these domain names confusingly similar to the Complainant’s trademark HOLIDAY INN EXPRESS. Accordingly, this Panel finds that the nine disputed domain names in Category J are confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name in Category K commences with the words “inn-select”. These words are the last parts of the Complainant’s trademark HOLIDAY INN SELECT. The case for confusing similarity in respect of this disputed domain name is less strong than it is in respect of the disputed domain names containing the words “holiday”. Nevertheless, given the particular facts of this case and the absence of any argument from the Respondent to the contrary, this Panel is willing to find that the incorporation in the disputed domain name of the words “inn” and “express” together with the generic geographic identifier “downtown” makes this domain name confusingly similar to the Complainant’s trademark HOLIDAY INN SELECT. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. This Panel agrees with the finding of the panelist in Kirchhof I that the Respondent’s actual uses of the disputed domain names, to resolve to websites purporting to provide accommodation bookings in the Complainant’s hotels, are not bona fide offerings of goods or services. The Respondent has not provided any evidence of ever being commonly known by any of the disputed domain names, or of having acquired any trademark or service mark rights in any of the disputed domain names. Accordingly, this Panel finds the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The particular facts of this case, together with the facts and findings in Kirchhof I, lead this Panel to conclude that the Respondent knew of the Complainant’s trademarks at the time of registration of the disputed domain names. The Respondent has previously registered over 1,500 domain names relating to the Complainant’s trademarks and has had the vast majority of those domain names transferred to the Complainant (see Kirchhof I). This Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the Complainant from reflecting its trademarks in corresponding domain names. Furthermore, the screenshots of the home page of the websites to which the disputed domain names resolved at the time the Complaint was filed indicate that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website or the service on the website. Pursuant to the Policy, paragraphs 4(b)(ii) and (iv), these actions by the Respondent are evidence of registration and use of the disputed domain names in bad faith. Accordingly, this Panel finds that the disputed domain names have been registered and are being used in bad faith by the Respondent. 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 disputed domain names set out in Annex A be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: December 30, 2010 Annex A
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