The Complainant is Inter-Continental Hotels Corporation of Atlanta, Georgia, United States of America (“US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, US.
The Respondent is Fundacion Private Whois Domain Administrator of Panama, Panama and PPA Media Services of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 31, 2012.
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 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2012.
The Center appointed Cherise Valles as the sole panelist in this matter on June 29, 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 several companies (including Six Continents Hotels, Inc. “SCH”), collectively known as InterContinental Hotels Group (“IHG”). Companies within IHG manage, lease or franchise, through various subsidiaries, 4,480 hotels and 650,000 guest rooms in nearly 100 countries and territories. IHG owns a portfolio of well-known brands such as 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 is the owner of the trademark ICHOTELSGROUP, as described more fully in Section 6.A.
SCH is the registrant of the domain name , which it registered on and has been using since January 2, 2003, as the primary domain name for the website associated with all IHG’s hotel brands worldwide (including the InterContinental brand owned by the Complainant).
Fundacion Private Whois Domain Administrator was listed as the registrant of the disputed domain name in the original Complaint dated May 24, 2012. The Complainant subsequently was advised that “PPA Media Services” is the registrant and amended the Complaint on May 31, 2012 to name “PPA Media Services” as a Respondent in addition to the original Respondent, “Fundacion Private Whois Domain Administrator.”
The disputed domain name was registered on May 21, 2004 with I Corp. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on May 24, 2012, the Complainant asserts that:
-The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the ICHOTELSGROUP trademark in light of the fact that it wholly incorporates the Complainant’s registered trademark. The disputed domain name differs only from the licensed trademark of the Complainant in the addition of the letter “s” at the end of the disputed domain name.
-The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
-The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence in Annex 7 to the Complaint demonstrating that it is the owner of multiple trademark registrations worldwide for the mark ICHOTELSGROUP, including the following:
a. Reg. No. 033210013 for ICHOTELSGROUP in France, registered on February 14, 2003, for use in connection with, inter alia, “provision of hotel and motel services”.
b. Reg. No. 1175446 for ICHOTELSGROUP in India, registered on June 6, 2005, for use in connection with, inter alia, “hotel brochures”.
c. Reg. No. 70494 for ICHOTELSGROUP in Saudi Arabia, registered on November 17, 2003, for use in connection with, inter alia, “provision of hotel and motel services d. Reg. No. 2526190 for ICHOTELSGROUP in Spain, registered on December 4, 2003, for use in connection with, inter alia, “provision of hotel and motel services”.
The disputed domain name contains the ICHOTELSGROUP trademark in its entirety with one variation – the addition of the letter “s” to the end of the disputed domain name. Such a minor variation is irrelevant for purposes of establishing confusing similarity under the Policy. A previous WIPO URDP panel held, in a similar fact situation:
Both a visual and aural comparison between the trademark and the domain name supports the assertion that the domain name is confusingly similar to the trademark. The mere addition of the letter “s” to the trademark may also be interpreted to be a misspelled genitive suffix of [Complainant’s trademark].
The addition of the letter “s” does not change the overall impression of the designation as being a domain name connected to the trademark…Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303.
Previous panels have also held minor one letter changes do not prevent confusion: Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; The Bread Beckers, Inc. v. Registrant [792140]: Mary Albertson / Registrant [6999]: Domain Administration,WIPO Case No. D2009-1719.
In addition, “the 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.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive 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 noncommercial 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 did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Complainant submits that the Respondent has neither used, nor made any 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.
Instead, as described above and as shown in Annex 6 to the Complaint, the Respondent is using the disputed domain name in connection with a monetized parking page that contains links for services that compete with the Complainant, including those labeled “Paris hotel,” “Las Vegas hotel,” “Best Hotel in New York,” “Manchester Airport Hotel” and “Discount Hotel Reservation.” As numerous decisions under the Policy have made clear, use of a “disputed domain name [to] resolve… to a page that display[s] pay-per-click links to Complainant’s competitors… is not a bona fide use.” 24 Hour Fitness USA, Inc. v. Stanley Pace, NAF Claim No. 1315664. See also Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan,WIPO Case No. D2004-0366 (“a skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors” is not a bona fide offering of goods or services); and Caterpillar Inc. v. Mohd Ash-Shirazi Mohd Noor,WIPO Case No. D2012-0343 (“it is well established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services which are competing with those of the trademark owner, does not establish rights or legitimate interests”).
The Complainant submits that the Respondent has not been commonly known by the disputed domain name. According to the WhoIs record (Annex 1 to the Complaint), the registrant of the disputed domain name is “Fundacion Private Whois Domain Administrator” – not “ichotelsgroups”. Therefore, Respondent cannot establish rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. This fact, combined with the lack of evidence in the record to suggest otherwise, provide the basis for the Panel to rule that the Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy 4(c)(ii). See: Alpha One Foundation, Inc. v. Alexander Morozov, NAF Claim No. 766380.
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the ICHOTELSGROUP 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.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 website 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 website or location.
The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademark and that the Respondent has no relationship to the ICHOTELSGROUP trademark. The Panel shares the view that the registration of a domain name that is confusingly similar or identical to a well-known trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting LLC,WIPO Case No. D2005-1319.
In a decision under the Policy involving a dispute brought against the same Respondent as in this Complaint, a previous panel found bad faith under paragraph 4(b)(iii) of the Policy. The Complainant submits that it is prevented from registering the disputed domain name itself. It further submits that the Respondent follows a “pattern of conduct” as demonstrated by the findings on bad faith in this previous dispute. Chevron Intellectual Property LLC v. Fundacion Private Whois / Domain Administrator, NAF Claim No. 1438289.
The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. As noted above and as shown in Annex 6 to the Complaint, the Respondent is using the disputed domain name in connection with a monetized parking page that contains links for services that compete with the Complainant, including those labeled “Paris hotel,” “Las Vegas hotel,” “Best Hotel in New York,” “Manchester Airport Hotel” and “Discount Hotel Reservation.” Accordingly, the Respondent is a competitor of the Complainant because, like the Complainant, the Respondent is offering the sale of hotel services. And, by offering 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 (“[t]he 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”).
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: July 12, 2012
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