The Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America (“USA”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, USA.
The Respondent is CRWJ Company Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”, “UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2012. On May 31, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On June 1, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on June 1, 2012 in response to a notification by the Center that the Complaint was administratively deficient.
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 June 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2012. The Response was filed with the Center on June 26, 2012. On July 11, 2012, the Complainant filed a supplemental filing in response to the Response. On August 3, 2012, the Panel issued Procedural Order No. 1, accepting the Complainant’s Supplemental Filing of July 11, 2012 and giving the Respondent until August 10, 2012 to file a response to the Complainant’s Supplemental Filing. On August 9, 2012, the Respondent filed a supplemental filing.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 20, 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”), which is one of the world’s largest hotel groups, measured by number of rooms. Companies within IHG own, manage, lease or franchise, through various subsidiaries, more than 4,500 hotels and 661,000 guest rooms in nearly 100 countries and territories around the world. IHG owns a portfolio of hotel brands including Holiday Inn Hotels and Resorts, Holiday Inn Express, InterContinental Hotels & Resorts, Crowne Plaza Hotels & Resorts, Hotel Indigo, Staybridge Suites, Candlewood Suites, Even Hotels and HUALUXE.
The Complainant’s Holiday Inn brand was founded in 1952 and today is used in connection with more than 3,300 hotels worldwide, including numerous hotels located in the United Kingdom, the location of the Respondent.
The Complainant has held trade mark registrations for HOLIDAY INN (the “HOLIDAY INN Mark”) since at least 1954. It owns at least 1,700 trademark registrations worldwide for the HOLIDAY INN Mark including UK Registration No. 1,272,786 (registered on April 17, 1990).
The Domain Name was created on September 17, 2011. The Domain Name redirects to a website (“Respondent’s Website”) that promotes an “Adult Travel Agency” advertising “adult fun holidays & short breaks” with “escorts”. The Respondent operates a business selling adult holidays in Southend in the United Kingdom, which includes the provision of accommodation to its guests. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s HOLIDAY INN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the HOLIDAY INN Mark. It owns at least 1,700 trademark registrations worldwide for the HOLIDAY INN Mark. The HOLIDAY INN Mark is a well-known mark with a strong reputation throughout the world, one that has been recognised in several past UDRP cases including Six Continents Hotels, Inc. v.TRANSLINER CONSULTANTS,WIPO Case No. D2008-0502; Six Continents Hotels, Inc. v. Jan Pavlik, WIPO Case No. D2007-0472; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 and Six Continents Hotels, Inc. v. Asia Ventures,WIPO Case No. D2003-0659. The Domain Name consists of the HOLIDAY INN Mark and the geographic term “Southend”. The Complainant is planning to open a hotel called the Holiday Inn Southend in 2012. This hotel did not exist at the time of registration of the Domain Name but the opening of the hotel had been widely publicised by that date. Many previous Panels under the Policy have found that the use of the HOLIDAY INN Mark in its entirety plus a geographic term in a domain name creates a domain name that is confusingly similar to the HOLIDAY INN Mark. See Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease,WIPO Case No. D2008-1309.
The Respondent has no rights or legitimate interests in the 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 Mark in any manner. To the Complainant’s knowledge, 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 therefore Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) of the Policy.
The Respondent has not used or made preparations to use the Domain Name in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The Respondent’s Website is used to promote a business that offers “adult fun holidays & short breaks” with “escorts”. The use of the Domain Name in connection with an adult website is not a bona fide offering of goods or services under the Policy. In Six Continents Hotels, Inc. v. Loki Keli / Loksons Designs,WIPO Case No. D2011-0541 the panel found that “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 Complainant submits that the Panel would reach the same conclusion in the present case.
For those reasons the Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate noncommercial or fair use of the Domain Name.
The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering and using the Domain Name is to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. By using the Domain Name in connection with a website for an “Adult Travel Agency” advertising “adult fun holidays & short breaks” with “escorts,” Respondent is intentionally using the Domain Name to profit from the Complainant’s renowned trademark by attracting Internet users. The confusion created by the Domain Name could result in potential customers choosing services other than the Complainant’s, disrupting the Complainant’s business.
The Respondent is using the Domain Name in connection with a website for an “Adult Travel Agency” advertising “adult fun holidays & short breaks” with “escorts.” Accordingly, the Respondent is a competitor of the Complainant because, like the Complainant, the Respondent is selling hotel room reservations.
In Six Continents Hotels, Inc. v. CRWJ Company Ltd, Nominet DRS Case No. D00010976, a case involving the same parties and the domain name the panel in its judgement stated:
“Even though there is no evidence of actual confusion, it is likely that persons looking for a Holiday Inn in Southend will be misled into believing that the business operated at the web site www. is connected to, and authorised by, the owner of the brand ‘Holiday Inn’. There will be “initial interest confusion” as a result of any Google or like search using the words ‘Holiday Inn” where the word “Southend” is used. Any visitor to the web site at that address would be further misled into believing that the holiday services advertised were being offered by a business, i.e. CRWJ Company Ltd, which was connected to the Holiday Inn business and brand”. B. Respondent
The Respondent registered the Domain Name on September 17, 2011 for the sole purpose of business and commercial use and in good faith. The Respondent operates a business that sells adult holidays, with escorts, located in Southend, UK. As part of that business the Respondent provides accommodation for its guests.
The Respondent was the unsuccessful respondent in Six Continents Hotels, Inc. v. CRWJ Company Ltd, Nominet DRS Case No. D00010976 however the reason it was unsuccessful was because it did not properly receive the communication about the case from Nominet and did not participate in the case. The Respondent also acknowledges making an offer to sell the Domain Name to the Complainant but considers that this is simply good business practice in attempting to resolve a dispute without the need for legal action.
At the time the Domain Name was registered, the Complainant did not have a hotel located in Southend. Furthermore, aside from an advertisement in the local paper that the Respondent, being London-based, could not have been aware of, there were no documents indicating that the Complainant planned to open a hotel in Southend. As such the Respondent cannot be accused of disrupting the Complainant’s business or acting in bad faith at the time it registered or commenced using the Domain Name as the Complainant did not have any such business in Southend.
The Domain Name was chosen because:
(a) The Respondent’s business is located in Southend;
(b) The Respondent sells holiday packages in Southend, including accommodation; and
(c) The word “Inn” was chosen because it describes a business that provides food, drink and accommodation to the general public, as the Respondent does in its business.
After the decision to register the Domain Name was made, the Respondent did a business name search in the region to determine if any other entity was operating under the “Southend Holiday Inn” name. After determining that no such entity existed the decision was made to register the Domain Name.
Since the date of registration of the Domain Name, the Respondent has used the Domain Name for a legitimate purpose; namely to promote its business located in Southend. The Domain Name was registered in good faith for the legitimate business use of CRWJ Company Ltd which it currently provides and no bad faith exists. 6. Discussion and Findings
Prior to dealing with the substantive aspects of the case, it is necessary to resolve a number of procedural issues that have arisen. A. Procedural Issues Delay in filing a Response
The deadline to file a Response in the present proceeding was June 25, 2012. The Response in this matter was filed by e-mail on June 26, 2012 at what appears to be 12:45 am. It is unclear what time-zone 12:45 am refers to but it may be the case that the Response was sent at 11:45 pm on June 25, 2012 in the UK, the location of the Respondent, that being 12:45 am on June 26, 2012 at the location of the Center.
In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. However, the Panel refers to AT&T Corp. v. Randy Thompson,WIPO Case No. D2001-0830 in which, although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.”
The Panel holds the view that it is sufficient that Respondent has met the deadline in its time zone. However, even if it is assumed that the Response was filed one day late, the Panel considers that the lateness of Respondent’s response is de minimis and has not prejudiced the Complainant nor has it delayed the Decision in this Administrative Proceeding. The Panel therefore has admitted and considered the evidence and submissions in the Response. Supplementary Filing
On July 11, 2012 the Complainant made an unsolicited supplementary filing with the Center. Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) has set out the following consensus position for how Panels deal with such unsolicited supplementary filings:
“Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
The Panel chooses to accept the supplemental filing made by the Complainant. The filing is short (approximately 2 paragraphs of evidence and argument and several annexes) and directly relevant to an issue in the proceedings. Furthermore it responds to certain contentions that were made in the Response and thus does not contain contentions that could have been made in the Complaint. On this basis the Panel accepts the supplemental filing. The Panel has also provided the Respondent with an opportunity to file a supplementary filing in response to the Complainant’s supplemental filing and has considered the Respondent’s supplemental filing of August 9, 2012. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainants is the owner of the HOLIDAY INN Mark, having registrations for HOLIDAY INN as a trade mark throughout the world. The HOLIDAY INN Mark is a well-known mark, as confirmed in previous UDRP decisions, including Six Continents Hotels, Inc. v.TRANSLINER CONSULTANTS,WIPO Case No. D2008-0502; Six Continents Hotels, Inc. v. Jan Pavlik, WIPO Case No. D2007-0472; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 and Six Continents Hotels, Inc. v. Asia Ventures,WIPO Case No. D2003-0659.
The Domain Name contains the HOLIDAY INN Mark in its entirety. The Domain Name then adds as a prefix the geographical term “southend”, a coastal town in the UK (sometimes known as Southend-on-Sea). The addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v. Personal / decohouse, decohouse,WIPO Case No. D2011-0972. This is especially so because the Complainant currently operates a hotel in Southend and Internet users would expect the Domain Name to refer to the Complainant’s hotel in Southend. A person viewing the Domain Name could easily be confused into thinking that it was registered by or otherwise connected with the Complainant.
The Domain Name consists of the HOLIDAY INN Mark and a prefix that fails to distinguish the HOLIDAY INN Mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s HOLIDAY INN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HOLIDAY INN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name nor does it appear that the Respondent is making legitimate noncommercial or fair use of the Domain Name.
The key question is whether the Respondent has been using the Domain Name in connection with a bona fide offering of goods and services. The Respondent is operating a business from the Domain Name that provides adult-themed holidays to Southend, UK. The mere fact that the Respondent is operating an adult-themed business from a website does lead to a finding that it is not making a bona fide offering of goods and services. Alternatively, even though the Respondent’s business may be legitimate this does not automatically result in a finding that the Respondent has rights and legitimate interests; rather the question is whether the use of the Domain Name is bona fide. It is permissible to sell adult holiday services over the Internet; it is not permissible to register and use a domain name in bad faith do so.
The Panel finds that the Respondent’s use of the Domain Name is not a bona fide use under the Policy. The Complainant has a significant reputation in the HOLIDAY INN Mark, both world-wide and in the UK. By reason of the Complainant’s reputation, as well as the fact that the Respondent is involved in the hospitality industry, the Respondent must have been aware of Complainant’s reputation in the HOLIDAY INN Mark at the time of registration.
The Respondent submits that the Domain Name was registered because the terms “southend”, “holiday” and “inn” are descriptive of the services offered by the Respondent in Southend. The Panel is not persuaded by the Respondent’s stated reasons for registering the Domain Name. The Respondent has provided no evidence that, outside the Respondent’s Website, it trades under the name “Southend Holiday Inn”. Furthermore, it is unlikely that a business that provides adult holiday services would choose the term “Holiday Inn” to describe the business or the services offered. Given that Southend is not a large town, if the Respondent was looking for a domain name that started with the word “southend” and describes the goods and services that the Respondent offers, there are a large number of potential domain names available that much more closely describe the goods and services that the Respondent offers better than “Holiday” and “Inn” which the Respondent was aware was a well-known trade mark.
The Panel considers there is no obvious reason why an entity offering adult services in Southend would have registered the Domain Name unless it was seeking to generate additional traffic by creating a mistaken impression of identification or association with the Complainant. The current use of the Domain Name cannot amount to bona fide use under the Policy. Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Case No. FA0208000117876.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel is not persuaded that the Respondent has demonstrated rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(b), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(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 the Respondent’s web site or location.
The Panel finds that the Respondent, at the time of registration of the Domain Name, knew of the existence of the HOLIDAY INN Mark. This can be inferred from the reputation of the well-known HOLIDAY INN Mark and the fact that the Respondent works in the hotel and accommodation industry. The mere fact that the Complainant, at the time of the registration of the Domain Name, did not have a hotel in Southend, does not prevent a finding of bad faith in circumstances where the Respondent knew of the HOLIDAY INN Mark and its reputation. The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Domain Name resolved to the Respondent’s Website, which promotes the adult holidays offered by the Respondent. The Respondent’s conduct in having the Domain Name redirect to a website promoting the Respondent’s business, which, at least tangentially, is in competition to the Complainant, amounts to the Respondent having intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Such conduct amounts to use 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: August 13, 2012
Full & Egal Universal Law Academy