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 Respondent is xu wei gang of Suzhou, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 March 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 31, 2015. 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, Six Continent Hotels, Inc, is one of companies collectively known as InterContinental Hotels Group ("IHG"), one of the world's leading hotel companies. Companies within IHG own, manage, lease or franchise, through various subsidiaries, more than 4,700 hotels and 674,000 guest rooms, in almost 100 countries and territories around the world. IHG manages the world's first, largest and fastest-growing hotel loyalty program, IHG Rewards Club, with more than 82 million members globally. The Complainant's Holiday Inn brand was founded in 1952, and is connected with 1,149 hotels, offering 209,112 rooms worldwide.
The Complainant is the owner of numerous trademark registrations for the HOLIDAY INN mark around the world. For example: United States Trademark No. 0592541 of July 13, 1954; United States Trademark No. 1275560 of April 24, 1984; China Trademark No. 261692 of September 10, 1986; and many more. The Complainant is also the owner of the HOLIDAY trademark registration in Chile, registration No. 945851 of December 4, 2011.
Through extensive use around the world, the HOLIDAY INN trademark has generated vast good will and has become well known in connection with hotels.
The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the name "Holiday Inn". For example: and and many more.
The disputed domain name was registered on November 24, 2011.
According to evidence submitted by the Complainant, the disputed domain name resolves to a website offering the Complainant's goods for sale and contains the logo trademark of the Complainant and the name HOLIDAY INN. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name contains the HOLIDAY trademark in its entirety.
The Complainant further contends that the addition of the terms "gj" does not dispel any confusing similarity, giving that "gj" is an apparent abbreviation for the term "Gujing", where the Complainant owns the "Holiday Inn Gujing Shanghai" hotel.
The Complainant further argues that the fact that the disputed domain name does not contain the word "inn" is irrelevant because, the Complainant owns a trademark registration for the mark HOLIDAY and also because previous UDRP panels have found that disputed domain names containing the word "holiday" and not including the word "inn" are confusingly similar to the HOLIDAY trademark.
The Complainant further argues that accordingly the disputed domain name is confusingly similar to the Complainant's HOLIDAY INN trademark and name.
The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant further contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the HOLIDAY trademark in any manner.
The Complainant further argues that upon information and belief, the Respondent has never used, or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As supported by evidence, the Respondent is using the disputed domain name in connection with a website using the Complainant's logo that falsely appears to be the official website for the "Holiday Inn Gujing Shanghai" hotel in China, without permission of consent of the Complainant.
The Complainant further argues that the Respondent is not known by the disputed domain name therefore it has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the Respondent in not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant's HOLIDAY trademark.
The Complainant argues that the disputed domain name is being used to offer hotel reservation services without the Complainant' permission or consent.
The Complainant further argues that the Respondent is to be considered as having been registering and using the disputed domain name in bad faith.
The Complainant further argues that by using the Complainant's HOLIDAY trademark and logo in the website and offering hotel services via a domain name that also contains the HOLIDAY trademark, the Respondent quite obviously has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the HOLIDAY trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website.
The Complainant further argues that there can be no doubt that the Respondent knew of the Complainant when it registered the disputed domain name.
The Complainant further argues that it has established rights in the HOLIDAY trademark in many countries or geographic regions worldwide, including China and the fact that the disputed domain name "so obviously connected with" the Complainant is suggested as "opportunistic bad faith" action of the Respondent.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous trademark registrations for the HOLIDAY INN mark around the world. For example: United States Trademark No. 0592541 of July 13, 1954; United States Trademark No. 1275560 of April 24, 1984; China Trademark No. 261692 of September 10, 1986; and many more. The Complainant is also the owner of the HOLIDAY trademark registration in Chile, registration No. 945851 of December 4, 2011.
The Complainant's rights in the HOLIDAY INN mark have been established in numerous UDRP decisions (see, e.g., Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661; Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755and many more).
The disputed domain name differs from the registered HOLIDAY INN trademark by the absent of the "inn", the additional word "gj" and the additional generic Top-Level Domain ("gTLD") ".com". The Complainant's argument that the mark HOLIDAY is the dominant part of the registered trademark HOLIDAY INN is not easily taken by this panel. The Complainant's registered mark HOLIDAY INN is comprised of two words which are descriptive in the hotels industry. The Complainant has provided sufficient evidence to show that the trademark HOLIDAY INN has attained notoriety and is being used substantially and world-wide under the Complainant's business, including in China and specifically in Shanghai in proximity to the Respondent's provided address. For the purpose of these proceedings only, this Panel is not persuaded that the word "holiday" by itself is a dominant part of the Complainant's registered trademark HOLIDAY INN. Indeed, the Complainant was only able to show a single trademark registration for the mark HOLIDAY in Chile.
This Panel does consider that the disputed domain name integrates the Complainant's HOLIDAY trademark as the dominant element. In the context of this particular case, this is of significance. While it has been sufficiently explained in detail in the Complaint, the Panel's review of the use of the Complainant's trademark HOLIDAY INN in China shows that the term is simply translated to the mark HOLIDAY HOTEL - 假日酒店。As such, and given the special circumstances of this case, the Panel finds that in China, the term "holiday" is the dominant part of the trademark HOLIDAY INN.
Therefore, the absence of the "inn" in the disputed domain name is with less importance when the website at the disputed domain name has been specifically used in connection with hotel reservations and hotel services in China. This is also clearly evident from the Respondent's behavior of copying the Complainant's website colors, appearance and some of the text and leaving out the term "Holiday Hotel" in Chinese in a prominent position over the Complainant's English language trademark HOLIDAY INN. This is also evident by the Respondent's use of the Complainant's old hotel name in the Chinese language – "上海古井假日酒店" – "Shanghai Gujing Holiday Hotel". Against this backdrop, it is evident from the facts of this case that under the unique circumstances presented to this Panel the word "holiday" absent from the word "inn" in conjunction with the words "gj" referring to the Complainant's specific hotel name "Shanghai Gujing Holiday Hotel" is confusingly similar with the Complainant's trademark in China. In this instant case, the additional words "gj" serves to identify the word element "holiday" with the Complainant's registered trademark HOLIDAY INN as used in the Chinese language. It is the use of this word "gj" while eliminating the word "inn" which may at first seem neutral to the unfamiliar Internet user, but would be obvious to those are familiar with the Complainant's trademarks in China to be confused. This kind of trademark "manipulation" is sure to lead to the confusion specified by paragraph (4)(a)(i) of the Policy.
Also, the addition of a gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, 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. Thus, the gTLD ".com" is without legal significance in this case since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, under the unique circumstances of this case, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the HOLIDAY INN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which clearly shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark HOLIDAY INN and specifically Shanghai Gujing Holiday Hotel in Shanghai, China, long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the HOLIDAY INN trademark at least since the year 1956. This trademark has been used extensively world-wide. The mark HOLIDAY INN in Chinese – 假日酒店– has been used extensively in China. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name and has been used widely in the local language variant (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
As we established, the disputed domain name is confusingly similar to the Complainant's trademark (registered and used). Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The evidence shows that the Respondent has been using the disputed domain name to offer services associated with the Complainant while using the Complainant's trademark and logo both in English and in Chinese. In effect, unwary Internet users are likely to mistake the website under the disputed domain name as that of the Complainant. The Respondent has used the same theme, colors, and elements that are used by the Complainant in its own websites.
In the instant case, Complainant has provided sufficient evidence to show that its HOLIDAY INN trademark has a strong reputation and is widely known both worldwide and in China. The record also shows that the Respondent provided no evidence and did not respond to the Complaint. These facts lead to a clear conclusion that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the Complainant's trademark registration amounts to bad faith".
The disputed domain name is confusingly similar to the Complainant's famous trademark. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited, supra). To this end, prior UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
It is under such website and bad faith use that the intent of the Policy reveals itself in full. It is therefore the incorporation of an element from a widely-known trademark, such as the Complainant's HOLIDAY INN trademark, with an element that is indicative of the specific hotel property name, as a domain name that is and should be considered as a clear indication of bad faith use.
Another indication for the Respondent's bad faith use is raised from the incorporation of an element of the Complainant well-known trademark together with the Complainant's property name element into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. 2009-0273). The circumstances of this case, and especially the use of an element of the Complainant's well-known trademark together with the Complainant's hotel property element name and the intentional dropping of another element from the Complainant's famous trademark but its use in the website linked to the disputed domain name that also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name. The panel also refers to the in depth explanation about the registration and use of the disputed domain name which may seem neutral to the reader in the English language, but would be clearly associated with the Complainant's use of its trademark in China that brings about a conclusion of bad faith registration and use under the Policy.
In light of the Complainant's registered trademarks and the Respondent's use of a confusingly similar disputed domain name, offering the Complainant's services, copying the look and feel of the Complainant's website under the Complainant's trademark, and the other circumstances noted above, the Panel finds that the Respondent 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.
Jonathan Agmon
Sole Panelist
Date: April 14, 2015
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