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 of United States of America.
The Respondent is Wang Qing Feng of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2016, 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 February 10, 2016 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 February 10, 2016.
On February 10, 2016, the Center sent an email to the parties in both Chinese and English regarding the language of the proceeding. On February 10, 2016, the Complainant submitted its confirmation that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on March 21, 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 Complainant is a member of the Intercontinental Hotels Group and international chain of hotels.
The Complainant is the owner of the trademark HOTEL INDIGO registered in various countries around the world. It has pending applications in China for HOTEL INDIGO and a registration for the Chinese translation of HOTEL INDIGO. It is also the registrant of the domain name .
The disputed domain name was registered on June 24, 2013.
The website under the disputed domain name resolves to a website in Chinese for a “Hotel Indigo” that is not related to the Complainant which claims to be located on the Bund in Shanghai. 5. Parties’ Contentions A. Complainant
The Complainant’s contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark HOTEL INDIGO. The only difference is the switching around of the two words and the addition of a hyphen.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for HOTEL INDIGO. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely that the Respondent knew of the Complainant’s rights in the mark HOTEL INDIGO and acquired the disputed domain name to attract Internet users to its website and/or to disrupt the Complainant’s business. B. Respondent
The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be English on the grounds that the disputed domain name is English and the trademark displayed on the website under the disputed domain name “Hotel Indigo” was in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint. Further, the Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”. The Respondent did not submit a Response in English or in Chinese.
Accordingly, the Panel determines that it will render its decision in English. Substantive Decision A. Identical or Confusingly Similar
The disputed domain name , other than the generic Top-Level Domain (gTLD) “.com”, is confusingly similar to the Complainant’s trademark HOTEL INDIGO. The distinctive part of the disputed domain name is INDIGO. The reversal of the words does not remove any confusion.
The Panel notes that the Complainant does not have a registered trademark for HOTEL INDIGO in English in China. However, the ownership of a trademark is generally considered to be a threshold standing issue under the UDRP and the location of the trademark is irrelevant for the purpose of finding rights under the first element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”))
The first part of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish they have rights and legitimate interests. These are:
“(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.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith:
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith. Given the disputed domain name directs to the website of a hotel that trades under the name “Hotel Indigo”, the Respondent must have known of the Complainant’s rights in the trademark HOTEL INDIGO when it registered the disputed domain name.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The website under the disputed domain name is being used to attract Internet users to the Respondent’s website.
The third part of paragraph 4(a) of the Policy is, therefore, satisfied. 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.
Douglas Clark
Sole Panelist
Date: March 31, 2016
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