The Complainant is Six Continents Hotels, Inc. of Georgia, United States of America, represented by The GigaLaw Firm, United States of America.
The Respondent is Triptih doo of Sarajevo, Bosnia and Herzegovina. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Response was filed with the Center on September 5, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 28, 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 a member of the corporate group known as the InterContinental Hotels Group. The InterContinental Hotels Group has a number of well-known hotel brands including the Holiday Inn Hotels and Resorts.
The Holiday Inn chain was founded in 1952. It now includes more than 3,300 hotels worldwide.
The Complainant claims to have more than 1,700 registered trademarks in more than 200 countries around the world that consist of, or contain, HOLIDAY INN. Annexes 7 and 8 provide supporting details for the Complainant’s registered trademarks in the United States of America (USA) and Bosnia and Herzegovina – Sarajevo being the capital of Bosnia and Herzegovina. In the USA, the Complainant has a least six registered trademarks for versions of HOLIDAY INN in stylized form in respect of hotel and related services. In Bosnia and Herzegovina, the Complainant has four registered trademarks for services related to hotels and restaurants.
For many years, the Complainant (or a management company within the InterContinental Hotels Group) had appointed Hotel Tourist Enterprise “Sarajevo” DJL as its franchisee in Bosnia and Herzegovina and that company operated the Holiday Inn Sarajevo pursuant to that franchise. The Holiday Inn Sarajevo achieved considerable international prominence during the Sarajevo Winter Olympics in 1983 and again during the war in Bosnia and Herzegovina between 1992 and 1995.
On April 21, 2011, the company within the InterContinental Hotels Group managing the franchise agreement sent Hotel Tourist Enterprise “Sarajevo” DJL a notice of termination of the franchise for material breaches. The notice specified that, if the breaches were not remedied within 30 days, the franchise agreement terminated on May 21, 2011.
On May 17, 2011, the Respondent registered the disputed domain name. According to the Response, the Respondent is an IT consultant and registered the disputed domain name at the request of and on behalf of Holiday Sarajevo HTD “Sarajevo” d.o.o. Holiday Sarajevo HTD “Sarajevo” d.o.o. is operating the hotel in Sarajevo at the address from which the Holiday Inn Sarajevo was operated under the franchise agreement.
The precise nature of the relationship between Holiday Sarajevo HTD “Sarajevo” d.o.o. and Hotel Tourist Enterprise “Sarajevo” DJL is not made clear in the Response. It is clear from the Response, however, that people involved in the management of the franchised Holiday Inn Sarajevo (“the hotel management”) are now involved in the management of Holiday Sarajevo HTD “Sarajevo” d.o.o.
It may be inferred from the Complaint, and the Response appears to be predicated on the basis, that the franchise agreement did in fact terminate on May 21, 2011 in accordance with the terms of the notice of termination.
Shortly before the Complaint was filed, the disputed domain name resolved to a website “Holiday Inn Hotels – Resorts”, “Holiday Inn Sarajevo”, “Welcome to Holiday Inn Sarajevo” which offered hotel accommodation and related services. The footer to the printout of the webpage included in Annex 4 to the Complaint stated “This hotel is owned and operated by Hotel Tourist Enterprise HT “Sarajevo” d.o.o.under licence from InterContinental Hotels Group”. Following the filing of the Complaint, the website has been modified to some extent to remove the reference to “under licence from InterContinental Hotels Group” and substitute “Holiday Hotel” or “Holiday Sarajevo” for most of the references to Holiday Inn. It does proclaim in large type in the header, however, “Former Holiday Inn Sarajevo”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks in the USA and Bosnia and Herzegovina referred to in section 4 above. The expression “Holiday Inn” is a prominent and memorable feature of each of those trademarks.
On the question of identity or confusing similarity,what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking the comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Apart from the gTLD component, the disputed domain name does not include the word “Inn”. Thus, the disputed domain name consists of “Holiday Sarajevo” (excluding the gTLD). In many circumstances, this expression could be considered a descriptive term.
The Complainant contends that the common element “Holiday” in its trademarks and the disputed domain name is liable to cause confusion. It also contends that the addition of the geographical name “Sarajevo” only promotes that tendency to confuse. In addition, the Complainant seeks to invoke the content of the website to which the disputed domain name resolved to support the risk of confusion. It cites various decisions of previous Panels said to support these one or more of these conclusions.
Given the nature of the comparison in question, however, the content of the website is not usually admissible in this context: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
As paragraph 1.2 of the WIPO Overview 2.0 also indicates, this requirement under the Policy is essentially a standing requirement. It is not necessarily directed only to issues of confusion about trade source. Rather, the objective is to prevent extortionate or opportunistic practices which harm the trademark owner or take advantage of the trademark owner’s rights. In that context, the Panel considers that the term “Holiday Sarajevo” in the disputed domain name could readily be understood by notional Internet users as a name which could well be used by the Complainant. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ proven trademarks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(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 a 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
In the present case, the Complainant submits that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its trademarks. Nor is the disputed domain name derived from the Respondent’s name. The Complainant acknowledges that it had authorized Hotel Tourist Enterprise “Sarajevo” DJL to use the Complainant’s trademarks as part of the franchise arrangements. However, that arrangement was terminated.
In these circumstances, the Complainant has made out a prima facie case that the Respondent does not have any rights or interests in the disputed domain name.
As noted above, the Response states that the Respondent is the IT consultant who registered the disputed domain name for and on behalf of Hotel Tourist Enterprise HT “Sarajevo” d.o.o. According to the Response, the hotel management realized that the franchise arrangement was irretrievably coming to an end:
“…we have realized that no agreement can be made with Six Continents Hotels, Inc and that the contract will be canceled leaving us without any on-line booking options that are crucial for our business, we took the self-initiative of our own and purchased our own domain excluding the former official Trademark "Holiday Inn" and using "Holiday Sarajevo" in sole purpose in protecting the licensed name the franchisee that we are no longer in titled with. It was never our intention nor deliberate action to cause any disagreements with the franchise. On contrary, we still value and respect the franchisee and the original trade mark in high regards.
“On the other side we want to keep the continuity of our business and keep the hotel as an icon/symbol of the city because it is a part of our history. It is a proud segment of once Olympics era and the early 90's war times. When we were choosing the word Holiday for our new domain it was because it is universal and represents just what it means (Holiday, vacation, free time in leisure). Even though the word is in dead the first word of the original trade mark, we consider that we do not represent any threat to the franchise business nor do we use the trademark name in order to gain profit by similarity to the trade mark. ….”
As already noted, the Response does not explain why the name of the former franchisee and the company operating the hotel at the former franchisee’s address appear to be different and whether or not they are different legal entities. It is clear, however, that the management of both entities (if they are different entities) are the same or common.
Given the Complainant’s registered trademarks for HOLIDAY INN in respect of hotel and related services in, amongst other places, Bosnia and Herzegovina, therefore, it appears that the hotel management had no rights or legitimate interest in continuing to use the trademarks when they caused the disputed domain name to be registered. What is more, it is also clear that, when the hotel management instructed the Respondent to register the disputed domain name, they fully appreciated their rights to use the Complainant’s trademark were at an end.
Insofar as the hotel management claim that they chose the term “Holiday Sarajevo” for its purely descriptive connotations and they had no intention of gaining any profit by its similarity to the Complainant’s trademark, that claim is completely contradicted by their continuing use of the trademarks on the website for their hotel, as disclosed in the printout from the website included in Annex 4 to the Complaint which was downloaded more than a year after the franchise agreement had been terminated. That printout plainly demonstrates that the hotel management were using the disputed domain name to provide services by reference to the Complainant’s trademarks in competition with, and without permission from, the Complainant. Such use does not constitute bona fide use as contemplated by paragraph 4(c) of the Policy.
Accordingly, the Response has failed to rebut the prima facie case established by the Complainant and the Panel finds that the Complainant has established this requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
As concluded in section B above, the way the disputed domain name was used until the Complaint was filed was plainly intended to attract customers to the hotel by reference to the Complainant’s trademarks. The Response contends this was not in competition with the Complainant as the Complainant does not have a “Holiday Inn” hotel in Bosnia and Herzegovina at this stage. Acceptance of that argument would substantially negate the Complainant’s right to chose who provided services by reference to its trademarks and to control the quality of those services in circumstances where the Complainant has validly subsisting trademarks. Moreover, it ignores the advantage that the hotel management gained from presenting their hotel as, or as still, associated with the well-known “Holiday Inn” chain.
Thus, the Panel has no hesitation in finding that the disputed domain name has been used in bad faith.
Furthermore, the timing of the registration of the disputed domain name in the context of the termination of the franchise agreement for Hotel Tourist Enterprise “Sarajevo” DJL, the way in which the disputed domain name has in fact been used and the clear incompatibiity with that use and the explanation proferred for the registration of the disputed domain name in the Response lead to the clear inference that the disputed domain name was also registered to be used to attract customers to the hotel on the basis that it was (still) an “Holiday Inn” hotel.
Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith under 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.
Warwick A. Rothnie
Sole Panelist
Dated: October 12, 2012
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