Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America represented by The GigaLaw Firm, United States of America.
Respondent is Loki Keli / Loksons Designs of Nairobi, Kenya. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 24, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On March 26, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 19, 2011.
The Center appointed Clive Elliott as the sole panelist in this matter on April 27, 2011. 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 Domain Name was created on July 9, 2007.
Complainant is a Delaware corporation with its principal place of business in Georgia, United States of America. It is one of a number of companies collectively known as InterContinental Hotels Group (IHG), which is the world’s largest hotel group by number of rooms. Companies within IHG own, manage, lease or franchise, through various subsidiaries, approximately 4,437 hotels in more than 100 countries and territories around the world. IHG owns a portfolio of well-recognised and respected hotel 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. 5. Parties’ Contentions A. Complainant
Complainant states that its Holiday Inn brand was founded in 1952 and today is used (along with the Holiday Inn Express and Holiday Inn Club Vacations brands) in connection with more than 3,300 hotels worldwide. Complainant also states that it (or its affiliates) owns more than about 1,700 registrations in at least 200 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOLIDAY INN.
Complainant states that the Domain Name contains the HOLIDAY INN trademark in its entirety plus the geographic identifier “lakenaivasha” and suggests that because the Domain Name wholly incorporates its registered mark it is sufficient to establish identity or confusing similarity for purposes of the Policy. Complainant further states that previous Panels under the Policy have found that the use of one of Complainant’s trademarks in its entirety plus a geographic term in a domain name creates a domain name that is confusingly similar to the relevant trademark.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the HOLIDAY INN trademark in any manner. Complainant submits that upon information and belief Respondent has never used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services and therefore submits that Respondent cannot establish rights or legitimate interests.
Complainant states that Respondent is using the Domain Name without permission or consent from it in connection with a website for “Lake Naivasha Holiday Inn” which is described on Respondent’s website as “a lovely country style hotel just 1 hour away from Nairobi”. Complainant asserts that such use of the Domain Name in connection with competitive services is not a bona fide offering of goods or services under the Policy.
Complainant further asserts that by using the Domain Name in connection with a website that falsely appears to be an official website for Complainant’s Holiday Inn hotel in Lake Naivasha, Respondent has engaged in a parasitic use, which at its essence relies on instigating and exacerbating user confusion and therefore cannot and does not constitute bona fide commercial or fair use sufficient to legitimize any rights and interests Respondent might have in the Domain Name.
Complainant contends that Respondent is using the Domain Name in connection with a commercial website that displays information about Respondent’s own “Lake Naivasha Holiday Inn” hotel and submits that Internet users who view this website are likely to be misled about the source of Respondent’s services. Complainant suggests that Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name and further submits that as Complainant has had proven established use of the HOLIDAY INN trademark for more than five decades, it is exceedingly unlikely that Respondent is commonly known by this trademark. Complainant submits that as a result the Domain Name should be considered as having been registered and used in bad faith by Respondent.
By using the Domain Name in connection with a website that offers hotel services in competition with it, Complainant contends that Respondent intentionally uses the Domain Name aiming to profit from Complainant’s renowned trademark by attracting Internet users, and the confusion created by the Domain Name makes potential customers choose other services than the Complainant’s, thereby disrupting Complainant’s business.
Complainant submits that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor. Respondent is a competitor of Complainant because like Complainant, Respondent is selling hotel services and by selling these services under Complainant’s trademark (without permission), Respondent is disrupting Complainant’s business. It is further contended 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 trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s website. Complainant asserts that there can be no doubt that Respondent knew of Complainant’s HOLIDAY INN trademark because the HOLIDAY INN trademark is a well-known, internationally recognized mark registered worldwide including with the African Intellectual Property Organisation. Complainant submits that this demonstrates that Respondent must have not only been aware of its marks but even known of Complainant’s related domain names.
Complainant contends that given its established rights in its trademarks and the fact that the Domain Name is clearly connected with Complainant because of its use of the relevant trademarks for more than five decades, Respondent’s actions suggest opportunistic bad faith in violation of the Policy. In light of this long history of Complainant’s trademarks and Complainant’s significant international presence and brand recognition, Complainant further contends that it is likely that Respondent knew of Complainant’s mark and has sought to obtain a commercial benefit by attracting Internet users based on that confusion.
Complainant states that it sent two demand letters to Respondent; the first on November 30, 2010 requesting a response by December 7, 2010, and the second on February 1, 2011 requesting a response by February 9, 2011. Respondent has not responded to either of these letters and Complainant submits that such failure to positively respond provides strong support for a determination of bad faith registration and use. B. Respondent
Respondent did not reply to Complainant’s contentions. However, Respondent sent two informal emails on March 29, 2011 and April 4, 2011, stating that it was not “the right people to receive and respond to this issue” and that it “would not be able to respond nor react to any of the documents.” 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name is confusingly similar to Complainant’s HOLIDAY INN trademark. The Domain Name incorporates Complainant’s distinctive and famous HOLIDAY INN trademark in its entirety, adding only the geographic term “Lake Naivasha”. The combined term suggests a clear connection or association with Complainant. By adopting a Domain Name that wholly incorporates Complainant’s HOLIDAY INN trademark, and which conveys the same overall impression as Complainant’s trademark, Respondent has created a term confusingly similar to Complainant’s trademark. Accordingly, Complainant satisfies this element of the Policy. B. Rights or Legitimate Interests
Respondent is using the Domain Name for commercial purposes. Specifically, Complainant contends that Respondent is using the Domain Name in connection with a commercial website that displays information about Respondent’s own so-called “Lake Naivasha Holiday Inn” hotel. It is well established that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless it was seeking to create a mistaken impression of identification or association with Complainant. The Panel is of the clear view that the mere addition of the geographic term “Lake Naivasha” to Complainant’s distinctive HOLIDAY INN trademark does not create a new or different mark in which Respondent has rights or legitimate interests. Accordingly, Complainant satisfies this element of the Policy. C. Registered and Used in Bad Faith
Given the prominence of Complainant’s HOLIDAY INN trademark, the Panel finds that Respondent registered the Domain Name in bad faith, with knowledge (actual or imputed) that including the HOLIDAY INN trademark as part of the Domain Name would likely cause an Internet user visiting Respondent’s web site (or through other means) to incorrectly assume that the Domain Name is somehow sponsored by or affiliated with Complainant. Respondent’s registration and use of the Domain Name, which as previously noted incorporates Complainant’s entire HOLIDAY INN trademark, supports a finding of bad faith. Further, Respondent provides services that are closely related with, if not the same as, the services Complainant offers. As held in Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658 (“…the diversion of the [] Domain Name to his hotel franchise, a competitor of the Complainant, is consistent with the finding that the Domain Name was registered and is being used in bad faith. […] The Respondent’s website is clearly intended to attract members of the public who may be wishing to reserve HOLIDAY INN hotel rooms, and then to offer them other hotel rooms and services. This conduct falls squarely within paragraph 4(b)(vi) of the Policy[.]”).
Respondent’s failure to answer any of these allegations or provide any form of explanation supports the conclusion that the Domain Name was registered and is being used in bad faith and that Complainant is entitled to relief pursuant to the Policy. Accordingly, Complainant satisfies this element of the Policy. 7. Decision
For 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 Complainant.
Clive L. Elliott
Sole Panelist
Dated: May 10, 2011
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