The Complainant is Six Continents Hotels Inc, 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 sangeetha, design of Chennai, Tamil Nadu, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Good Domain Registry Pvt Ltd (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on November 23, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2015. The Respondent then submitted an email to the Center on December 23, 2015.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 13, 2016. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of Response, can be accepted as background.
The Complainant is one of a number of companies collectively known as Intercontinental Hotel Group which, through its various subsidiaries, own, manage, lease or franchise more than 4,900 hotels and 727,000 guest rooms in nearly 100 countries and territories around the world. It also owns a portfolio of well-recognised and respected hotel brands, including Holiday Inn Hotels and Resorts, Holiday Inn Express, and claims to have the world’s largest hotel loyalty programme. It owns registered trademarks, inter alia, in the United States of America in respect of the trademark HOLIDAY INN, the first of which was registered on July 13, 1954. It also holds three registered trademarks in India in respect of the same HOLIDAY INN trademark.
Although it has not furnished schedules of other trademark registrations, it avers that it or its affiliates own more than 1,700 registered trademarks in at least 200 countries or geographic regions worldwide that consist of or contain the mark HOLIDAY INN. It in fact tenders to make available upon request, should it be called for, the full list which has not been attached by reason of its bulk.
The disputed domain name was registered on December 29, 2014. 5. Parties' Contentions A. Complainant
The Complainant asserts that its HOLIDAY INN brand was founded in 1952 and today is used in connection with 1,148 hotels, offering 208,609 rooms worldwide, including in India.
The Complainant also cited several UDRP decisions in its favour contending that this demonstrates that it has strong rights to the HOLIDAY INN trademark, as well as that trademark being extensively used for many years throughout the world in connection with its hotels and services and being inherently distinctive. It points out that by incorporating the whole of the trademark the Respondent has done no more than add three letters at the commencement, with the result that this does not detract from the similarity of the disputed domain name when compared to the Complainant’s registered trademark and that there is clearly sufficient similarity to give rise to confusion, thus violating the Complainant’s rights.
The Complainant draws attention to the fact that it is a well-established principle that the adoption of the whole trademark and mere addition of additional letters in no way detracts from the interference with its rights, having regard to several cited UDRP decisions.
It further contends that, because the evidence put forward by it establishes the trademark as a well-known, well-established and even famous trademark, the additional characters do nothing to dispel any confusing similarity.
The Complainant contends further that the Respondent has no rights or legitimate interest in the disputed domain name and that at no time has the Complainant ever assigned, granted, licensed, sold or in any way authorised the Respondent to register or use its HOLIDAY INN trademark in any domain name. Furthermore, it asserts that there is no commercial relationship justifying such use, nor has the Respondent any rights or legitimate interests therein. The Complainant asserts that the Respondent has not been shown to use the disputed domain name with any bona fide offering of goods or services but rather has depicted it on a website which gives the false impression that there is somehow an association, affiliation or link between the Complainant and the Respondent.
More particularly, the Complainant emphasises the fact that by offering hotel services on its website using the disputed domain name, this of itself is a failure to create a bona fide offering of goods or services under the Policy and the Respondent is seeking thereby to attract commissions or other revenue.
By such use the Respondent has, so the Complainant asserts, quite obviously attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark and that its registration as well as this use constitutes bad faith. The Complainant asserts that the Respondent must have known of the Complainant’s HOLIDAY INN trademark and accordingly sought to benefit by creating the impression, falsely, that there was a link between the Complainant and the Respondent in order to attract custom or divert it from the Complainant. B. Respondent
The Respondent did not apparently file a Response to the Complainant’s contentions. However, an email was received by the Center from the Respondent, in which it is said that he has “given authorization to deal this domain dispute to my domain designer.” Further down in a chain of communications, seemingly forwarded by the Registrar to the Respondent, in which an “Abuse Team” says that “the domain name ‘holidayinn’ is the registered Trademark”, and that “any name with holidayinn can be claimed by the Registrant of holidayinn.”
Frankly, the Panel has some trouble ascertaining whether this is an admission or rejection of a claim of an abusive registration. It is clear however that knowledge of the Complainant’s mark is expressly acknowledged. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:-
(i) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) of the Policy above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a) (ii) of the Policy. B. Effect of Default
Notwithstanding the fact that the Respondent may be in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favour by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
The Center has furnished proof that the Respondent received Notification of Complaint and Commencement of Administrative Proceeding, as well as the Complaint and its annexures, on December 1, 2015, by email. The Panel is thus satisfied that the Respondent was aware of the proceeding on receipt of the email notification, particularly by reason of the emails received by the Center from the Respondent raising the matters referred to above in Section 5.B.
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Ltd v. Global Net 2000 Inc., supra; RX America LLC v. Matthew Smith,WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros S A v. John Michael, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra,WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc,WIPO Case No. D2012-1213). C. Identical or Confusingly Similar
The Complainant is the owner, among others, of three Indian trademarks HOLIDAY INN, all pre-dating the registration of the disputed domain name.
The Complainant has cited several previous URDP decisions which confirm that the HOLIDAY INN trademark is world famous.
On the basis of the Complainant’s averments and contentions in this matter as to a worldwide reputation, the Panel considers that, on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has sufficiently established that it has rights in the trademark HOLIDAY INN under the Policy.
The Panel further agrees with the Complainant that the addition of the three letters “avr” is not sufficient to exclude the confusing similarity (Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; V R L International Ltd v. Domaincar,WIPO Case No. D2006-0240; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandes Quintero,WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or 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; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this factor shifts to the Respondent to rebut or displace the Complainant’s evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark HOLIDAY INN, including in India where the Respondent is based, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang,WIPO Case No. D2000-0055; Caesar’s World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement in the disputed domain name which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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 you have registered or you have 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 that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
While bad faith can exist where a domain name contains in its entirety a complainant’s trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name, almost in its entirety, is an intentional adoption of the Complainant’s registered trademark.
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Moreover, by use of a domain name confusingly similar to the Complainant’s trademark, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s trademark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it must have been well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Date: January 25, 2016
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