Complainant is Six Continents Hotels, Inc. of Atlanta, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Paydues Inc of Santa Fe, New Mexico, United States. 2. The Domain Name And Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2012. On April 12, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On April 12, 2012, GoD, LLC 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 Respondent of the Complaint, and the proceedings commenced on April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2012.
The Center appointed Seth M. Reiss as the sole panelist in this matter on May 8, 2012. 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 one of a number of companies collectively known as InterContinental Hotels Group (“IHG”) which claims to be the world’s largest hotel group by number of rooms. IHG owns, manages, leases or franchises, through various subsidiaries, approximately 4,480 hotels and 650,000 guest rooms in nearly 100 countries and territories around the world. Among the well known hotel brands owned by IHG are “Holiday Inn Hotels and Resorts” and “Holiday Inn Express”.
Complainant’s Holiday Inn brand was founded in 1952 and, according to Complainant, is currently used in connection with more than 3,300 hotels worldwide. Complainant’s HOLIDAY INN mark was first registered by Complainant’s predecessor, with the United States Patent and Trademark Office, in 1954. Complainant, together with its affiliates, currently own more than 1,700 registrations in at least 200 countries or geographic regions worldwide for trademarks or service marks that consist of or contain the mark HOLIDAY INN.
Respondent registered the disputed domain name on July 7, 2011. Respondent uses the disputed domain name to resolve to a site that exhibits Complainant’s Holiday Inn logo and that offers visitors the opportunity to download Respondent’s “Free Holiday Inn Franchise Toolkit.” The text at the top of the site reads: “Holiday Inn Franchise was started in 1952 to offer travelers and guests’ [sic] dependability in hotel and lodging services.” The bottom of each of the site’s web pages includes the notice “Copyright © Holiday Inn Franchise”. There are no indications on the web site that it and its content are not owned, authorized, affiliated, endorsed or sponsored by Complainant.
Complainant characterizes respondent as a “serial cybersquatter [who] has lost at least nine previous decisions under the policy, each involving one or more domain names that (as in this complaint) contain the word ‘franchise.’” Complainant provides citations for each of the nine UDRP decisions. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s registered HOLIDAY INN mark in regard to which Complainant holds rights, that Respondent is without rights or legitimate interests in respect of the disputed domain name , and that Respondent registered and is using the disputed domain name in bad faith.
Complainant submits that it never gave Respondent any right to use its HOLIDAY INN mark in conjunction with the disputed domain name or otherwise. Complainant cites to and relies upon conclusions reached by previous UDRP panels involving disputes brought against the same Respondent for domain names containing well-known marks together with the word “franchise”. Complainant characterizes Respondent as a competitor who, like Complainant, offers hotel franchise services. Complainant argues that Respondent is using the disputed domain name primarily for the purpose of disrupting Complainant’s franchise business, and to attract, for commercial gain, Internet users by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement.
By way of remedy, Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Trademark rights may be established in UDRP proceedings by registration and/or use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraphs 1.1 and 1.7. Complainant has provided compelling evidence that Complainant holds valuable proprietary trademark rights in the HOLIDAY INN mark by virtue of both registration and use, and that Complainant has held such rights since at least 1954. Other Panels have similarly concluded that Complainant holds strong rights in and to the HOLIDAY INN mark. E.g., Six Continents Hotels, Inc. v. TRANSLINER CONSULTANTS,WIPO Case No. D2008-0502; Six Continents Hotels, Inc. v. Jan Pavlik,WIPO Case No. D2007-0472 (describing the mark as exhibiting fame and notoriety).
“The addition of merely generic [or] descriptive . . . wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.” WIPO Overview, paragraph 1.9. This would be true, in particular, in the case of a well-known or famous mark. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409. The word “franchise” is generic in the context of the goods and services being offered by Respondent on its “www.” web page. As such, the word “franchise” does not serve to distinguish the disputed domain name from Complainant’s HOLIDAY INN mark.
Panels have long held that the addition of the gTLD suffix is generally irrelevant in an examination of confusing similarity. Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029.
This Panel finds that the disputed domain name is confusingly similar to the HOLIDAY INN mark in regard to which Complainant has rights, and that the first element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
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 an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent 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, paragraph 2.1.
Complainant has affirmatively alleged that it has “never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Holiday Inn Trademark in any manner.” This assertion is sufficient, in the circumstances of this case, to shift the burden onto Respondent to demonstrate rights or legitimate interests in respect of the disputed domain name . While a “respondent’s default does not automatically result in a decision in favor of the complainant,” WIPO Overview, paragraph 4.6, by not availing itself of the opportunity of submitting a response, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323.
Respondent’s use of the disputed domain name to offer its “Free Franchise Toolkit” is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain name, together with the presentation of content on the “www.” web site, appears calculated to confuse, and in this Panel's opinion is likely to confuse, Internet users into believing that Respondent's “www.” web site is somehow associated with or endorsed by Complainant. Similar conclusions were reached by UDRP panels on analogous facts involving this same Respondent offering franchise goods and services in conjunction with other well known marks. Valpak Direct Marketing Systems, Inc. v. Paydues Inc.,WIPO Case No. D2012-0042; LC Trademarks, Inc. v. PayDues Inc.,WIPO Case No. D2011-2125; Luby’s Fuddruckers Restaurants, LLC v. Paydues Inc., NAF Case No. 1421339.
“[A] reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder.” WIPO Overview, paragraph 2.3. Rather than accurately and prominently disclosing the lack of any relationship with Complainant, Respondent implies an association or endorsement by displaying Complainant’s Holiday Inn logo prominently on Respondent’s web site together with the notice “Copyright © Holiday Inn Franchise” at the bottom of each webpage. Nowhere among the web site content is there any attempt to alert the Internet user that Respondent and its Free Franchise Toolkit are in no way associated or endorsed by Complainant. “Such a use of the domain is evidence that Respondent is attempting to pass itself off as Complainant.” Luby’s Fuddruckers Restaurants, LLC v. Paydues Inc., supra.
This Panel finds that the second element of paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith
In view of the long term and wide spread use of Complainant’s HOLIDAY INN mark, Respondent undoubtedly understood its function and value as an indicator of source and origin belonging to Complainant. Respondent’s registration and use of the disputed domain name in conjunction with its offering of a “Free Franchise Toolkit” on a web site branded with the Complainant's HOLIDAY INN mark, demonstrates “opportunistic bad faith.” Research In Motion Limited v. Dustin Picov,WIPO Case No. 2001-0492.
As discussed above, Respondent’s use of the disputed domain name in conjunction with a web site that prominently displays Complainant’s Holiday Inn brand, with no explanation respecting Respondent’s relationship, or lack thereof, with Complainant, appears intended to pass Respondent, and its services, off as Complainant and its services, or to strongly suggest a business association or relationship between Respondent and Complainant, or an endorsement of Respondent and its goods and services by Complainant. These facts implicate paragraph 4(b)(iv) of the Policy, to wit, that Respondent is using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s “wwww.” web site at the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site, and of the franchise products and services offered on Respondent’s web site.
The Panel finds that Respondent has registered and is using the disputed domain name at issue in bad faith and that the third element of paragraph 4(a) of the Policy has been established. 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 disputed domain name be transferred to Complainant.
Seth M. Reiss
Sole Panelist
Dated: May 21, 2012
Full & Egal Universal Law Academy