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.
The Respondent is Ahmed Marzooq of Male, Maldives. 2. The Domain Name and Registrar
The disputed domain name (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 the Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Ian Blackshaw as the sole panelist in this matter on May 14, 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
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, approximately 4,480 hotels and 650,000 guest rooms in nearly 100 countries and territories around the world.
IHG owns a portfolio of well-recognized 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.
The Complainant’s 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. The Panel has been provided with a so-called “Holiday InnBrand Family Fact Sheet” (February 2011).
The Complainant (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 (the “HOLIDAY INN Trademark”). A complete list of these registrations is available from the Complainant, upon request, but has not been provided to the Panel, given the size of this list.
The Panel has, however, been provided with printouts from the United States Patent and Trademark Office’s Trademark Electronic Search System for the following registrations:
Mark: Reg. No., Date of Registration
HOLIDAY INN: 592,541, July 13, 1954
HOLIDAY INN: 592,539, July 13, 1954
HOLIDAY INN: 864,359, January 28, 1969
HOLIDAY INN: 1,243,330, June 21, 1983
HOLIDAY INN: 1,275,560, April 24, 1984
HOLIDAY INN: 1,281,008, June 5, 1984
The Panel has also been provided with a copy of the “Cautionary Notice” published by IHG in the Haveeru newspaper in Maldives in June 2009, claiming ownership of the HOLIDAY INN Trademark.
The Complainant has prevailed in numerous proceedings under the Policy, including the largest UDRP complaint ever filed, which resulted in a decision ordering the transfer of 1,519 domain names to the Complainant, many of which contained the HOLIDAY INN Trademark (Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,WIPO Case No. D2009-1661).
The Respondent registered the Disputed Domain Name on February 28, 2011. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Many previous panels under the Policy have found that the Complainant has strong rights in and to the HOLIDAY INN Trademark. See, e.g., Six Continents Hotels, Inc. v. TRANSLINER CONSULTANTS,WIPO Case No. D2008-0502; Six ContinentsHotels, Inc. v. Jan Pavlik, WIPO Case No. D2007-0472 (the HOLIDAY INN Trademarks are “entitled to a high level of protection due to [their] fame and notoriety”); Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 (“the [HOLIDAY INN] mark, more than famous, has become iconic”); Six Continents Hotels, Inc. v. Asia Ventures,WIPO Case No. D2003-0659 (the HOLIDAY INN Trademarks “are inherently distinctive, have been used extensively for many years throughout the world in connection with its hotels and services, and are some of the most widely recognized lodging brands in the world”); and Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (“the HOLIDAY INN name and trademark are famous, are identifiable with Complainant, and have considerable good will”).
The Disputed Domain Name contains the HOLIDAY INN Trademark in its entirety plus the geographic identifier “Kandooma”. Significantly, the Complainant has a hotel in the same area, known as the “Holiday Inn Resort Kandooma Maldives.” The Panel has been provided with a printout of the website for the Complainant’s hotel. Kandooma Island “lies just 35 km south of the Male International Airport, via a forty minute speedboat ride to the South Male Atoll.”
“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. A,WIPO Case No. D2001-0903). Further, many previous panels under the Policy have found that use of the HOLIDAY INN Trademark in its entirety, plus a geographic term, in a domain name creates a domain name that is confusingly similar to the relevant trademark. See, e.g., Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease,WIPO Case No. D2008-1309 (transfer of ) (“[t]his Panel further accepts the Complainant’s submission that the combination of its trademark with the name of the Phi Phi Islands, where one of the Complainant’s hotels is located, would serve to add to such confusion rather than distinguish the mark and the domain name”); Six Continents Hotels, Inc., v. EnterSports Inc.,WIPO Case No. D2008-1951 (“the combination of its trademark with the name of South Carolina, where Complainant owns or operates approximately 49 ‘Holiday Inn’ and ‘Holiday Inn Express’ hotels, would serve to add to such confusion rather than distinguish the mark and the domain name”); Six Continents Hotels, Inc. v.Trasporto di Network and Pro Intel,WIPO Case No. D2004-0246 (geographic identifiers in a domain name “increase the likelihood of confusion between the domain names and the marks”); Six Continents Hotels Inc. v. Mindwerk, Kevin M. Manhan,WIPO Case No. D2006-1074 (“previous WIPO panels have held that the use of a complainant’s trademark plus a geographic term in a domain name renders the domain name confusingly similar to a complainant’s trademark where the complainant has hotels in the referenced area”); Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 (in ordering transfer of domain name , the panel said: “Respondent has simply appended the geographic term ‘Manassas’ to Complainant’s HOLIDAYINN mark. This increases the likelihood of consumer confusion.”); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE,WIPO Case No. D2004-0987(in ordering transfer of domain name , the panel said: “there is sufficient precedent for finding that the addition of a geographic term or name to a distinctive mark suggests that the domain name is the domain name of Complainant in that particular location”); Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986 (in ordering transfer of domain name , the panel said: “Several Panels have underlined that the use of a Complainant’s trademark in connection with a geographic term does not prevent confusing similarities.”); Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388 (in ordering transfer of domain name , the panel said: “The addition of ‘dubai’ does not serve to distinguish these domain names from the Complainants’ well known marks, but indeed compounds the likelihood of confusion between these domain names and the Complainants’ trade marks given that the Complainants’ have […] HOLIDAY INN hotels in Dubai.”); and SixContinents Hotels, Inc. v. Sdf fdgg,WIPO Case No. D2004-0384 (in ordering transfer of domain name , the panel said: “The use of the suffix ‘burl’ in the disputed Domain Name, rather than differentiate Respondent’s business, actually affirms the extent to which that domain name is confusingly similar to the Complainant’s Mark.”).
Accordingly, the Disputed Domain Name is confusingly similar to the HOLIDAY INN Trademark.
ii. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Complainant 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. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”); see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (transferring domain name where “[n]o evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner”).
Previous panels under the Policy have found that a lack of legitimate rights or interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144. See also Western Union Holdings, Inc. v. Domain Drop S.A., NAF Claim No. FA0971146 (“Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s WESTERN UNION mark. Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the domain name. Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).”)
The Respondent has never used, or made preparations to use the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. Specifically, the Respondent is using the Disputed Domain Name (without permission or consent from the Complainant) in connection with a website for a hotel described on the Respondent’s website as “conveniently situated on the South Malé Atoll”. Such use of the Disputed Domain Name in connection with competitive services is not a bona fide offering of goods or services under the Policy and, therefore, the Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy. See, e.g., Hilton Worldwide, Hilton HotelsCorporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp.,WIPO Case No. D2010-1063 (finding no rights or legitimate interests with respect to domain names being used in connection with websites for competitive hotels because “[t]he inescapable conclusion from Respondent’s webpages exhibited to the Complaint is that Respondent operates the websites at the active domain names for the purpose of attracting commissions or other revenue”); Beemak Plastics, Inc. v. WestRep Group,WIPO Case No. D2001-1023 (finding no rights or legitimate interests where the “domain name at issue had resolved to Complainant’s competitor’s web site at which products were offered for sale that directly competed with Complainant’s trademarked products”); and Six Continents Hotels, Inc. fka BassHotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions,WIPO Case No. D2003-0292 (“Respondent’s chosen use of the domain names to promote services arguably competitive to, and certainly related to Complainant’s services, dispels any doubt as to the lack of fair use and the commercial nature of Respondent’s unauthorized use”).
Further, by using the Disputed Domain Name in connection with a website that falsely appears to be an official website for the Complainant’s Holiday Inn hotel on Kandooma Island, the 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 the Respondent might have in the disputed domain name.” Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Claim No. FA0117876.
Indeed, in a previous dispute filed by the Complainant also relating to a domain name containing the HOLIDAY INN Trademark, a panel wrote: “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 [a] geographic term […] to Complainant’s distinctive HOLIDAY INN trademark does not create a new or different mark in which Respondent has rights or legitimate interests.” Six Continents Hotels, Inc. v. Loki Keli / Loksons Designs,WIPO Case No. D2011-0541 (transfer of .
The Respondent has never used, or made preparations to use the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Disputed Domain Name in connection with a commercial website that displays information on the Respondent’s own hotel located in Kandooma Maldives. Internet users, who view this website, are likely to be misled about the source of the Respondent’s services. Such use is clearly not bona fide, noncommercial or not, misleading under the Policy and, therefore, does not confer upon the Respondent any rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(i) or 4(c)(iii) of the Policy. See, e.g., Six Continents Hotels, Inc., v. EnterSports Inc., WIPO Case No. D2008-1951 (“Respondent’s predatory use of the domain name as the address of a website that, at one time, advertised hotel services competing with the Complainant’s business does not constitute a bona fide use of the domain name”); Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (“Respondent is attracting traffic by creating confusion among Complainant’s customers, by using a domain name that is confusingly similar to Complainant’s trademarks, and re-directing such traffic to Complainant’s site for a profit. Such use cannot be deemed a bona fide offering of goods or services.”); and The Sports Authority Michigan, Inc. v. InternetHosting, NAF Claim No. 0124516 (“It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use under Policy 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark uses the domain name to earn a profit without approval of the holder of the mark.”).
To the Complaint’s knowledge, the Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name and, therefore, the Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy. According to the WhoIs records, the registrant of the Disputed Domain Name is “Ahmed Marzooq” – not “Holiday Inn” or “Holiday Inn Kandooma.”
“This fact, combined with the lack of evidence in the record to suggest otherwise, allows the [p]anel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy 4(c)(ii).” Alpha One Foundation, Inc. v. Alexander Morozov, NAF Claim No. 0766380.
Finally, given the Complainant’s established use of the HOLIDAY INN Trademark for nearly six decades, it is exceedingly unlikely that the Respondent is commonly known by this trademark. See Six Continents Hotels, Inc. v. Trasporto di Network and Pro Intel,WIPO Case No. D2004-0246 (“given the Complainant’s established use of its […] arks, it is unlikely that the Respondents are commonly known by any of these marks”).
Accordingly, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
iii. The Disputed Domain Name was registered and is being used in bad faith
“The only explanation of what has happened is that the Respondent’s motive in registering and using the site[] seems to be […] simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.” Pancil, LLC v. Jucco Holdings,WIPO Case No. D2006-0676. See also, e.g., Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”).
By using the Disputed Domain Name in connection with a website that offers hotel services in competition with the Complainant, the Respondent “intentionally uses the domain name […] aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant’s, disrupting Complainant’s business.” Six Continents Hotels, Inc. v. NA InterMos,WIPO Case No. D2006-1313. This constitutes bad faith in violation of the Policy. Id. See also Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658 (“The Respondent’s website is clearly intended to attract members of the public who maybe 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)[sic] of the Policy and accordingly the Panel concludes that the Respondent registered and has been using the Domain Name in bad faith.”) (transfer of ).
The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, under paragraph 4(b)(iii) of the Policy. The Respondent is using the Disputed Domain Name in connection with a website for a hotel in Kandooma Maldives. Accordingly, the Respondent is a competitor of the Complainant because, like the Complainant, the Respondent is selling hotel services. And, by selling these services under the Complainant’s trademark (without permission), the Respondent is clearly disrupting the Complainant’s business. See, e.g., Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996 (“The deliberate adoption of Complainant’s well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other service sites, including accommodation and vacation sites […] demonstrates bad faith use”).
In addition, 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 Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website, under paragraph 4(b)(iv) of the Policy. See, e.g., Six Continents Hotels, Inc.v. Finlaw Agency and ResS, Inc., WIPO Case No. D2002-1159.
There can be no doubt that the Respondent knew of the Complainant’s HOLIDAY INN Trademark, leading to evidence of bad faith. The HOLIDAY INN Trademark is a well-known, internationally recognized mark registered worldwide and has been published in a Maldivian newspaper, evidence of which has been submitted to the Center. This demonstrates that the Respondent must have not only been aware of the Complainant’s marks, but even knew of the Complainant’s related domain names, which constitutes strong evidence of bad faith. See Six Continents Hotels, Inc. v. Albert Jackson,WIPO Case No. D2003-0922; and Marriott International, Inc. v Momm Amed Ia, NAF Claim No. FA0095573.
Moreover, given the Complainant’s established rights in its trademarks and the fact that the Disputed Domain Name is “so obviously connected with” the Complainant given its use of the relevant trademarks for almost six decades, the Respondent’s actions suggest “opportunistic bad faith” under the Policy. Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492. In light of this long history of the Complainant’s trademarks and the Complainant’s significant international presence and brand recognition, “[i]t is likely that the Respondent knew of the Complainant’s mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion.” Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850 (finding bad faith and ordering the transfer of the domain name ). See also Pancil LLC v. Domain Deluxe,WIPO Case No. D2003-1035 (“it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business”).
Finally, the Complainant filed two “take-down” notices, pursuant to the United States Digital Millennium Copyright Act (“DMCA”), with web hosting companies previously responsible for hosting the website associated with the Disputed Domain Name. In response to both notices, the web hosting companies took down the website. Copies of the notices and responses have been provided to the Panel. Such blatant copyright infringement and DMCA action is further evidence of bad faith. See, e.g., Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024; and BzzAgent, Inc. v. Bzzing, Inc.,Diego Berdakin,WIPO Case No. D2009-0295.
Accordingly, the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion and Findings
To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(ii) The Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous WIPO UDRP cases that, where the domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the Disputed Domain Name incorporates in its entirety the Complainant’s well-known and well-established registered trademark HOLIDAY INN. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant and its hotel services marketed under its well-known and well-established registered trademark HOLIDAY INN.
The addition to the Disputed Domain Name of the word “kandooma”, being descriptive of a place, namely, Kandooma Island in Maldives (i.e. geographical), does not provide any distinguishing feature for trademark purposes. Indeed, the addition of this geographic descriptor only adds to the confusion, as the Complainant has a hotel in this location, known as the “Holiday Inn Resort Kandooma Maldives”, which it markets under the name of its well-known and well-established registered trademark HOLIDAY INN. See Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word ‘harrods’ and the word ‘travel,’ it is well settled that a domain name suffix, such as the word ‘travel’ in the present case, is merely descriptive and does not add any distinctiveness to the word ‘harrods,’ which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162, where the [p]anel held that ‘[…] any use of the name Harrods in conjunction with a description… would suggest a false sense of origin […] for any associated goods or services.’ See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ‘poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
The addition of a generic top-level domain (gTLD) “.net”, to the Disputed Domain Name does not constitute an element in the Disputed Domain Name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s well-known and well-established registered trademark HOLIDAY INN, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior and lengthy commercial use of the same.
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the Disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademark HOLIDAY INN. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and well-established registered trademark HOLIDAY INN, which the Panel agrees with the Complainant was probably not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable registered trademark HOLIDAY INN and also the valuable goodwill that the Complainant has established in this trademark through prior lengthy commercial use, advertising and promotion of the same, sufficient evidence of which has been provided to the Panel as mentioned above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the Disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the Disputed Domain Name, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and well-established registered trademark HOLIDAY INN.
By registering and using the Disputed Domain Name incorporating in its entirety the well-known and well-established registered trademark HOLIDAY INN, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the Disputed Domain Name is confusing and misleading and, in the view of the Panel, this is a further indication that the Disputed Domain Name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the Disputed Domain Name, which incorporates in its entirety the Complainant’s well-known and well-established registered trademark HOLIDAY INN, by chance, but, as noted above, on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the hotel and leisure industry over a long period of time.
Also, the Panel agrees with the Complainant’s contentions that the Respondent’s use of the Disputed Domain Name by redirecting Internet users interested in the Complainant’s goods to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.Cartwright,WIPO Case No. D2007-0267.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as all the other arguments advanced by the Complainant in its contentions, as set out above, including disruption by the Respondent of the Complainant’s business contrary to paragraph 4(b)(iii) of the Policy, and supported by the previous WIPO UDRP decisions cited above by the Complainant, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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 the Complainant.
Ian Blackshaw
Sole Panelist
Dated: May 16, 2012
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