The Complainant is Inter-Continental Hotels Corporation 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 Pamirsoft Technologies of Kabul, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2011. The Complainant filed an amendment to the Complaint on November 10, 2011. On November 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2011, the Registrar 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 together with the amendment to 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 15, 2011. The Complainant submitted a supplemental filing on November 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 9, 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 Complainant is a member of the internationally well-known hotel group, InterContinental Hotels Group. For the purposes of this Decision the Panel will treat the members of the group as one.
One of the Complainant’s hotel brands is “InterContinental” and the Complainant has that brand protected by trade mark registrations in many countries around the world including Afghanistan, the home territory of the Respondent. It is sufficient to cite two registrations, namely:
(i) United States Trade Mark registration no. 0890271 dated May 14, 1969 (registered April 28, 1970) INTERCONTINENTAL (typed drawing) in classes 35 to 42 for hotel related services;
(ii) Afghan Trade Mark registration no. 6634 dated March 15, 2003 INTERCONTINENTAL (stylized) in class 43 for services relating to the provision of food and drink and temporary accommodation.
The Domain Name was registered on March 23, 2005, and is connected to a trading website of a hotel called “Hotel Inter-Continental, Kabul”. A copyright notice at the foot of the homepage reads “© 2011 Intercontinental Kabul Hosted by Pamirsoft Technologies”. The page features a welcome message reading:
“Welcome to Intercontinental. The Hotel Inter-Continental Kabul, your destination in Kabul. Hotel Inter-Continental Kabul was inaugurated officially on September 9, 1969. The hotel is situated on a hill top; with eye-catching views of Kabul city ….”
The Complainant has produced material from Wikipedia and elsewhere relating the history of the Respondent’s hotel. Construction of the hotel commenced in April 1967. The Complainant (or a predecessor) was associated with the development of the site. From 1969 to 1979 the Complainant (through a predecessor) licensed the hotel to use the trade mark INTERCONTINENTAL. The licence was terminated following the Russian invasion of Afghanistan in 1979 and since then the Complainant (and its predecessors) have had no association of any kind with the hotel.
The Respondent’s hotel underwent a major refurbishment in the mid-2000s and, according to Wikipedia, is decorated to an international standard. In June 2011 the hotel was subjected to an attack by suicide bombers. The Complainant issued statements at the time informing interested parties that the Complainant had no association with the hotel. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its INTERCONTINENTAL trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii)(iii) and (iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identity of the Respondent
As indicated in section 4 above, the Respondent is responsible for having created the website to which the Domain Name is connected. From the screenshot exhibited by the Complainant it is apparent that the Domain Name was registered and is being used for the benefit of the Hotel Inter-Continental, Kabul.
In the Complaint the Complainant contends in one paragraph (D7) that the Respondent’s name is distinct from the name of the hotel. In another (E4) the Complainant contends that the Respondent is a competitor of the Complainant trading under the name of the hotel.
The Panel is of the view that the Respondent is unlikely to be the operator of the hotel and much more likely to be a website developer commissioned by the operator of the hotel. However, it seems to the Panel sensible that the practical realities be recognized and that principal and agent be treated as one. That is what the Panel proposes to do. For practical purposes therefore the term “Respondent” when used in this decision includes the operator of the hotel as well as the named Respondent. C. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s well-known hotel trade mark, INTERCONTINENTAL, the name of the Afghan capital, Kabul, and the generic top level “.com” domain suffix. For the purposes of assessing identity and confusing similarity under this element of the Policy it is permissible for the Panel to ignore the suffix.
The Panel believes it very likely that Internet users viewing the Domain Name will believe it to be a domain name associated with a hotel in Kabul of the Complainant.
The Panel finds that the Domain Name is confusingly similar to a trade mark of the Complainant. D. Rights or Legitimate Interests
While the Complainant is required to prove all three elements of paragraph 4(a) of the Policy, proving the requisite negative for this element presents special difficulties for a complainant. The matter is dealt with in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?
Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The above passage includes a reference to paragraph 4.6 of the WIPO Overview 2.0, which reads as follows:
“4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.”
The Complainant makes out what appears on its face to be a strong case. Its InterContinental hotel brand has been well known internationally for many decades. It was well known in Kabul back in the 1970s when lawfully used in relation to the hotel from 1969 to 1979 prior to the Russian invasion of Afghanistan. The Complainant has an Afghan trade mark registration pre-dating the registration of the Domain Name and the Respondent is using the Domain Name in relation to the services covered by the Complainant’s trade mark registration without the authority of the Complainant. The Panel agrees with the Complainant that the Respondent, which is engaged in the hotel industry, must at all material times have been aware of the existence of the Complainant and its internationally recognized brand. Whether it will have been aware of the Complainant’s Afghan trade mark registration is another matter. There is no indication before the Panel that the Complainant has ever been in communication with the Respondent.
Clearly, the Respondent has a case to answer, but none has been provided. The Respondent has not responded. It ought therefore to be a relatively straightforward case. Nonetheless, the Panel has not found this to be an easy case to decide.
Paragraph 4(c) of the Policy explains how respondents may demonstrate their rights or legitimate interests under the Policy. The passage from paragraph 4(c) that is potentially applicable here reads as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, SHALL demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”
The Panel has highlighted the word “shall” to demonstrate the mandatory aspect of the provision.
The first of the above sub-paragraphs raises some interesting questions as to what constitutes a bona fide offering, but the Panel sidesteps those questions on the basis that if, as the Panel has already found, the Respondent has been aware all along of the existence of the Complainant and its brand, then it will also have been aware all along of the potential for a dispute.
It is the second sub-paragraph, which has given the Panel cause for concern. Plainly, on the evidence which the Complainant has put before the Panel the Respondent and its predecessors have been trading under and by reference to the name “Hotel Inter-Continental [in] Kabul” for nearly 40 years, albeit only licensed by the Complainant to do so for the first 10 years.
The Complainant’s position is in essence simple. The use of the Complainant’s trade mark for the name of the hotel since termination of the licence in 1979 has been deceptive and an infringement of the Complainant’s rights. The Complainant contends that on that basis the Respondent’s business cannot be said to be a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. As to paragraph 4(c)(ii) of the Policy the Complainant contends that the Respondent’s name is “Pamirsoft Techologies”, not a name remotely resembling the Domain Name.
The Panel dismisses this latter argument relating to the name of the Respondent for the reasons set out in B above. The Panel does not know the name of the hotel operator, but that is neither here nor there. The Panel gratefully adopts the reasoning of the panel in William S. Russell v. Mr. John Paul Batrice d/b/a the Clock Doc,WIPO Case No. D2004-0906:
“The Complainant fails to understand the full intent of paragraph 4(c)(ii) when he asserts that the “Respondent is known personally as John Paul Batrice; his legal name is not ‘Clock Doc’”. Indeed, John Paul Batrice’s legal name is not “Clock Doc,” however, his business has “been commonly known by” the CLOCK DOC name since 1993, in accordance with paragraph 4(c)(ii) and apparently is registered at the very least as a DBA (“doing business as”) in Lubbock, Texas. …………. In the Complainant’s own citation to Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453, the panel in that case states “[w]hat paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known . . . prior to registration of the disputed domain name” which is clearly the case here. This Panel is satisfied that the Respondent has presented evidence sufficient to meet the standard of a preponderance of the evidence to prove that it has used the domain name in connection with the bona fide offering of goods or services.”
The Panel in the present case is satisfied that the Respondent’s business, the Hotel Inter-Continental in Kabul, was commonly known by the name reflected in the Domain Name by the time the Respondent registered the Domain Name in 2005. The key issue for the Panel is whether that fact is to be ignored, notwithstanding the mandatory terms of paragraph 4(c) of the Policy, for the reason that the use of the name of the hotel had been unlicensed since 1979, when the Russians invaded Afghanistan.
The Complainant seems to have recognized that the case is not an entirely straightforward one, since it felt it necessary to include no less than 27 different case citations in support of its contentions under the second and third elements of paragraph 4(a) of the Policy.
The Panel has read all the cited decisions and was somewhat dismayed to find that few of them bore any relation to the issues at the heart of this case.
Whatever else the Respondent may be it is not a typosquatter; nor is it using the Domain Name for a portal site; nor, in the view of the Panel, is it a typical cybersquatter. Accordingly, those authorities cited by the Complainant dealing with typosquatters, typical cybersquatters and operators of portal sites are at best of only limited assistance. They are the following:
Pancil LLC v. Domain Deluxe,WIPO Case No. D2003-1035 (typosquatter – commercial portal site);
Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (serial typosquatter - commercial website promoting competitor services);
Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144 (typosquatter – parking page – unilateral consent to transfer);
Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp.,WIPO Case No. D2010-1063 (cybersquatter/typosquatter – portal site with links to competitor services);
Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (typosquatter – commercial portal site);
Pancil, LLC v. Jucco Holdings,WIPO Case No. D2006-0676 (typosquatter – commercial portal site);
Six Continents Hotels, Inc. v. NA InterMos,WIPO Case No. D2006-1313 (typosquatter – portal site with links to hospitality companies);
Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246 (typosquatter – hotel reservation portal site);
Six Continents Hotels, Inc. v. Albert Jackson,WIPO Case No. D2003-0922 (typosquatter – generic portal site with links to competitor hotels);
Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272 (typosquatter with website seeking bookings for complainant’s hotels);
Western Union Holdings, Inc. v. Domain Drop S.A., NAF Claim No. 0971146 (typosquatter/cybersquatter with portal site and links to financial services competitors of the complainant);
Marriott International, Inc. v Momm Amed Ia, NAF Claim No. 0095573 (typosquatter portal site linking to competitor services);
The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 0124516 (typosquatter using site to earn commission on referrals to complainant’s website);
Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850 (gambling portal site);
Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (pay-per-click portal site re-directing to complainant’s site for profit);
Six Continents Hotels, Inc. v. Finlaw Agency and ResS, Inc.,WIPO Case No. D2002-1159 (portal site for hotel reservations);
Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 (portal site with links to accommodation, vacation and adult services);
Six Continents Hotels, Inc., v. EnterSports Inc.,WIPO Case No. D2008-1951 (pharmaceutical portal site including links to competitor products);
Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (domain name connected to site offering car registrations and airline tickets);
Alpha One Foundation, Inc. v Alexander Morozov, NAF Claim No. 0766380 (lapsed domain name snapped up and used to connect to sexually explicit material);
Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492 (cybersquatting student using fake address – offering domain name for sale for $1.5 million);
Beemak Plastics, Inc. v. WestRep Group,WIPO Case No. D2001-1023 (ex-sales representative registers domain name to disrupt complainant’s business by linking it to site offering competing products);
Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions,WIPO Case No. D2003-0292 (website advertising respondent’s Cortlandt Colonial restaurant and reception services).
The facts of the above cases are all very different from the facts of this case. They are support for the general proposition that if a registrant selects a domain name featuring the complainant’s trade mark and without the complainant’s permission for the purpose of exploiting the trade mark for commercial gain or for disrupting the complainant’s business, the respondent will not be found to have any relevant rights or legitimate interests and the registration is likely to be found to be an abusive registration under the Policy. That is a proposition that the Panel would ordinarily have accepted without the need for any citation of authority.
If a sense of irritation has crept into the Panel’s language here, the reason can best be illustrated by the Complainant’s citation of Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246, a case involving a blatant typosquatter, which read as follows:
“Finally, given Complainant’s established use of the INTERCONTINENTAL Trademark for more than six decades, it is exceedingly unlikely that the Respondent is commonly known by this trademark. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).”
This citation ignores the fact that apparently the Complainant has been making no use of its trade mark in Afghanistan for the last three decades and the building housing the Respondent’s hotel in Kabul has been named “the Inter-Continental” for nearly four decades. It would have been astonishing if the Respondent’s business had not become commonly known by reference to the name reflected in the Domain Name.
The Complainant cites Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Claim No. 117876, a case in which the respondent, with knowledge of the existence of the complainant (better known as CNN), registered 607 CNN-prefixed domain names and formed a Lebanese company replicating the Complainant’s name, Cable News Network. It appears that the respondent may have set up a media-related business, but the panel found the circumstances to be highly suspicious and concluded that the registrations had been made with the deliberate intention of exploiting the complainant’s well-known trade mark. The complaint was lodged within a year of the respondent having formed his Lebanese company, so it was a very different case from this one.
The citation closest to the case in hand is Six Continents Hotels, Inc. v. Loki Keli / Loksons Designs,WIPO Case No. D2011-0541, a case in which the respondent was using the domain name, , for the benefit of what it claimed to be its Lake Naivasha Holiday Inn, but without the complainant’s authority to use the HOLIDAY INN trade mark. The disputed domain name was registered in July 2007 and the complaint was filed in March 2011. The decision gives no information as to when the respondent’s business commenced, nor does it give any indication as to its extent. Differences between that case and the current case are that (i) in that case the complainant sent cease and desist letters, but not in this one, (ii) in that case there was no obvious reason for the selection of the complainant’s trade mark for the respondent’s hotel, whereas in the current case the building has been known by the name reflected in the Domain Name for over 40 years and (iii) in this case there is no doubt that a real hotel business of some substance is being carried on and has been known by the Complainant to have been carried on for many years.
The Complainant cites Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (authorized dealer selling genuine parts). This is another very different case, but the Panel agrees that the Respondent fails the test set out in that case in that the Respondent’s use of the Complainant’s trade mark is unauthorized, the Respondent’s business is wholly unconnected with the Complainant and the Respondent’s website does not make that clear.
Finally, the Complainant cites SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308, in support of the proposition that once a licence agreement has been terminated, the former licensee retains no rights or legitimate interests in respect of the trade mark in question. This is clearly correct and if the Respondent has any rights or legitimate interests in respect of the Domain Name, they do not stem from the licence.
As already indicated, however, the Panel’s nagging concern relates to paragraph 4(c)(ii) of the Policy: “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”
The Panel is satisfied that for many years the Respondent’s business has been commonly known in Afghanistan by the name “Inter-Continental Kabul”. There is nothing before the Panel to indicate the contrary. The issue is whether, because this all stems from a failure to abide by the licence agreement in 1979 when that agreement came to an end, all the subsequent use has been offensive and the Respondent is unable to take the benefit of any of it under paragraph 4(c)(ii) of the Policy.
The Complainant might have anticipated that the factual background screamed out for some explanation for the absence of any correspondence with the “infringers” over the last 32 years since 1979 and the absence of any attempt by the Complainant to enforce its Afghan trade mark, which it obtained in 2003, over 8 years ago. The Panel is aware that it has been a country in turbulence for much of the period, but the Panel would have expected to see something by way of explanation.
Another puzzling aspect insofar as the Panel is concerned is what were the Afghan rights the Complainant had in the 24 years between 1979 (termination of the licence) and 2003 (date of the Complainant’s Afghan trade mark registration). Could the answer relate to why the Complainant has not sought to enforce such rights against the Respondent and/or its predecessors? The Panel just does not know.
Most puzzling of all is the apparent failure of the Complainant to have entered into any correspondence with the Respondent over the Respondent’s unauthorized use of its trade mark as the name of the hotel and, more recently, the use of the trade mark for the Domain Name.
On the other side of the coin, of course, lies the Respondent’s failure to respond to the Complaint. This, too, is very puzzling if the Respondent has an answer to the Complainant’s contentions.
There are so many unanswered questions, several of which the Complainant might reasonably have been expected to address in the Complaint, that the Panel does not feel able to make a positive finding that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
In light of the above finding it is unnecessary for the Panel to address the Complainant’s contentions under this element of the Policy.
The Panel does, however, have one observation to make. In the Panel’s view the primary objective of the Respondent in registering the Domain Name can only have been to reflect in a domain name the name of its business, the hotel. Disruption of the business of the Complainant, as asserted by the Complainant, can at best only be said to have been an incidental consequence of the registration and use of the Domain Name. It is the name of the hotel, which is at the heart of the matter.
The Domain Name is a relative sideshow. So long as the hotel maintains its current name, the threat to the Complainant’s brand remains. What the level of that threat might be overall, the Panel is unable to assess. However, insofar as the Complainant’s reputation and goodwill in Afghanistan is concerned the Respondent’s activities are likely to be of only limited effect in that that there is no evidence before the Panel to show that the Complainant provides any hotel services in that country.
In summary, the factors which have led the Panel on the present record to dismiss this Complaint under the Policy are:
(i) the shortage of information on the history of the Respondent’s hotel;
(ii) the absence of any attempt to enforce the Complainant’s rights to restrain use of the “offending” name;
(iii) the absence of any explanation for the failure of the Complainant to enforce its rights;
(iv) the absence of any correspondence with the Respondent and/or its predecessors;
(v) the apparent fact that the Complainant has not conducted any hotel business in Afghanistan since 1979;
(vi) the suspicion that the Panel has not been given the full story.
The Panel concludes that the appropriate forum for resolving this dispute is likely to be found in a court of competent jurisdiction, competent to deal with the use of the name of the hotel, with appropriate powers to cross-examine and adduce evidence, rather than under a mechanism such as the Policy intended to address a fairly narrow category of abusive registration and use of domain names. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: December 13, 2011
Full & Egal Universal Law Academy