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 of America.
The Respondents are Mujthaba Saeed of Addu City, Maldives, and Adam Farrar/HostGator of Houston, Texas, United States of America (collectively, the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with L Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2013 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 November 14, 2013.
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 November 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2013.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 20, 2013. 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 has submitted evidence that it is the owner of the following trademark registrations in the United States:
HOLIDAY INN with registration No. 592,541 and registration date July 13, 1954.
HOLIDAY INN with registration No. 592,539 and registration date July 13, 1954.
HOLIDAY INN with registration No. 864,359 and registration date January 28, 1969.
HOLIDAY INN with registration No. 1,243,330 and registration date June 21, 1983.
HOLIDAY INN with registration No. 1,275,560 and registration date April 24, 1984.
HOLIDAY INN with registration No. 1,281,008 and registration date June 5, 1984.
In addition to the trademark registrations above, the Complainant has submitted evidence of a “Cautionary Notice” published by the Complainant in the Haveeru newspaper in Maldives in June 2009, claiming ownership of the HOLIDAY INN trademark.
The disputed domain name was registered by the Respondent on December 20, 2012, and the disputed domain name was registered by the Respondent on December 22, 2012. 5. Parties’ Contentions A. Complainant
The Complainant is one of a number of companies collectively known as InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups by number of rooms. The Complainant manages more than 4,600 hotels and 678,000 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, Hualuxe and Even Hotels. The HOLIDAY INN trademark was founded in 1952 and is used today in connection with 1181 hotels worldwide. The Complainant owns more than 1700 trademark registrations that consist of or contain the mark HOLIDAY INN in at least 200 countries or geographic regions worldwide.
Each of the disputed domain names contains the Complainant’s trademark in its entirety plus the geographic identifier “kandooma”. The addition to the disputed domain names 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. The addition of this geographic descriptor only adds to the confusion, as the Complainant has a hotel in this particular location, known as the “Holiday Inn Resort Kandooma Maldives”.
The disputed domain name also contains the generic word “resort”. The addition of such a generic word to the trademark is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the Complainant. The Complainant is of the opinion that each of the disputed domain names is confusingly similar to the Complainant’s trademark HOLIDAY INN.
The Respondent has no rights or legitimate interests in the disputed domain names. 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.
The Respondent has never used, or made preparations to use, the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent is using the disputed domain names in connection with commercial websites that display information about the Respondent’s own hotel located in Kandooma Maldives. Internet users who view these websites are likely to be misled about the source of the Respondent’s services. By using the disputed domain names in connection with websites that falsely appear to be official websites 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 legitimate interests the Respondent might have in the disputed domain names.
To the best of the Complainant’s knowledge, the Respondent has never been commonly known by either of the disputed domain names and has never acquired any trademark or service mark rights in the disputed domain names, and therefore, and the Respondent has no rights or legitimate interests in the disputed domain names under paragraph 4(c)(ii) of the Policy. Given the Complainant’s established use of the HOLIDAY INN trademark for six decades, it is unlikely that the Respondent would be commonly known by this trademark.
The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. The Respondent is using the disputed domain names 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. By selling these services under the Complainant’s trademark without permission, the Respondent is disrupting the Complainant’s business.
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 websites, in violation of paragraph 4(b)(iv) of the Policy.
There can be no doubt that the Respondent knew of the Complainant’s HOLIDAY INN trademark, further leading to evidence of bad faith. As set forth above, the HOLIDAY INN trademark is a well-known, internationally recognized mark registered worldwide and has been published in a Maldivian newspaper.
Accordingly, the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark HOLIDAY INN.
The disputed domain name incorporates the registered trademark HOLIDAY INN in its entirety with the addition of the geographic descriptor “kanddoma” and the generic term “resorts”. As held in previous UDRP decisions, the addition of a generic and descriptive term, such as “resorts”, may in some cases increase the risk of confusion. See ACCOR v. VVNW Inc.,WIPO Case No. D2005-0026 in which the panel held that the addition of the term “hotel” was not sufficient to avoid confusion between the domain name and the trademark. The panel emphasized that the confusion was actually heightened by adding the word “hotel” because such a term is descriptive of the goods or services marketed by the complainant in relation to the trademark.
The disputed domain name incorporates the registered trademark HOLIDAY INN in its entirety with the addition of the geographic descriptor “kandooma”.
The ability for such generic terms and geographic descriptors to distinguish the disputed domain names from the trademark of the Complainant is limited. See for example Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102, regarding the domain name , in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA. Also see Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244 in which it was held that an addition of a place name to a trademark such as “Atlanta” to “Crowne Plaza” is a common method for indicating the location of a business enterprise identified by the trademark or service mark and that it is even more so in the case of hotels.
Having the above in mind, it is the opinion of the Panel that the disputed domain names and are confusingly similar to the Complainant’s trademark HOLIDAY INN and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the domain names, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has argued that the Respondent is a competitor with no connection or affiliation with the Complainant. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks in connection with the disputed domain names, which are confusingly similar to the Complainant’s trademark.
From the submitted evidence in this case, it is clear that the Respondent is using the disputed domain names in connection with competitive services under websites that falsely appear to be official websites for the Complainant’s hotel on Kandooma Island. Such use of the disputed domain names is not a bona fide offering of goods or services under the Policy.
Furthermore, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain names or that the Respondent is or has been commonly known by any of the disputed domain names.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names; or
(ii) circumstances indicating that the domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
From the evidence submitted by the Complainant, it is clear that the Complainant’s registered trademark HOLIDAY INN predates the registration dates of the disputed domain names and . The fact that the disputed domain names contain generic terms and geographic descriptors that closely correspond to the Complainant’s HOLIDAY INN hotel in Kandooma indicates that the Respondent had the Complainant’s business in mind and was aware of the Complainant’s trademark when registering the disputed domain names. In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark at the time when the disputed domain names were registered.
Furthermore, the Respondent is using the disputed domain names, which are confusingly similar to the Complainant’s trademark, in connection with websites that offer hotel services in direct competition with the Complainant. Thus, the Respondent’s use of the disputed domain names may disrupt the Complainant’s business if potential customers are confused and choose other hotel services than the Complainant’s.
The circumstances in the case before the Panel also indicate that the Respondent has been aware of the Complainant’s HOLIDAY INN trademark and that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names have been registered and used 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 names and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: January 2, 2014
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