The Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America (“United States” or “US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is WhoisSecure, WhoisSecure of Los Angeles, California, United States / Gary Foster, NA of Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with OwnRegistrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2018, 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 December 20, 2018, 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 December 21, 2018.
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, and the proceedings commenced on December 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2019.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 17, 2019.
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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
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.
IHG owns a portfolio of well-recognized and respected hotel brands, including Crowne Plaza Hotels & Resorts.
The Complainant owns trademark registrations consisting of or containing the mark CROWNE PLAZA in 170 countries, among others the United States Trademark Registration No. 1297211 CROWNE PLAZA registered on September 18, 1984 for hotel services of Class 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant (via IHG) is the registrant of the domain name , which was created on March 31, 1995 and which the Complainant uses in connection with its website for its Crowne Plaza brand of hotels.
The disputed domain name was registered on November 14, 2018.
The Respondent used the disputed domain name in connection with an employment-related identity-theft scam.
At the time of rendering of this administrative decision the disputed domain name was inactive. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its CROWNE PLAZA trademark since it reproduces the trademark in its entirety and addition of the generic, dictionary words “hotel”, “world” and “recruitment” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated its CROWNE PLAZA trademark in the disputed domain name with obvious bad faith motive to simply disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain, which both constitute evidence of bad faith registration and use under the Policy.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark CROWNE PLAZA, and hence the Panel finds that the Complainant’s US Trademark Registration No. 1297211 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the CROWNE PLAZA mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the CROWNE PLAZA trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
According to section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
According to section 1.11.1 of the WIPO Overview 3.0, “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
The Complainant’s CROWNE PLAZA trademark forms the dominant portion of the disputed domain name . Addition of generic, dictionary terms “hotel”, “world” and “recruitment” is not sufficient per se to prevent a finding of confusing similarity under the first element of the Policy.
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should in relation to this administrative proceeding be disregarded under the first element.
On the basis of facts and circumstances discussed above the Panel finds that the disputed domain name is confusingly similar to the CROWNE PLAZA trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established prior rights in the CROWNE PLAZA trademark.
The Complainant has never authorized the Respondent to use its CROWNE PLAZA trademark in any way, and the Complainant’s prior rights in the CROWNE PLAZA trademark long precede the date of the registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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 online 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.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The CROWNE PLAZA trademark of the Complainant has no dictionary meaning; it is a term invented by the Complainant and therefore distinctive for the corresponding goods and services.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0).
According to section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
Previous UDRP panels have found that the Complainant has well-established rights in and to the CROWNE PLAZA trademark (see, e.g., Six Continents Hotels, Inc. v. Bunjong Chaiviriyawong, WIPO Case No. D2013-1942) and it is implausible to presume that the Respondent chose to incorporate it in the disputed domain name for any other reason than to target the Complainant and its CROWNE PLAZA trademark.
Documents submitted by the Complainant substantiate that the Respondent used the disputed domain name in connection with an employment-related phishing scam, which is also evidence of bad faith (see, e.g., Inter-Continental Hotels Corporation c. Whois Agent, Whois Privacy Protection Service, Inc./Fred Adams,WIPO Case No. D2016-0715).
On December 19, 2018 the Registrar confirmed to the Center that “WhoisSecure is the privacy protected data and not the Registrant data, the Registrant of the domain being Gary Foster: Street: somewhere on earth City: Owerri State: Imo Postal Code: 110001 Country: Nigeria.”
“[S]omewhere on earth” clearly can’t be a street name anywhere, nor is 110001 an Owerri City (Imo State, Nigeria) postal code. In view of the Panel the Respondent’s initial use of a privacy shield and providing these false registrant data are indication of the Respondent’s attempt to obstruct a UDRP proceeding and further evidence of bad faith at the Respondent’s side.
Based on all the above discussed facts and circumstances the Panel finds that the disputed domain name has been registered and is being used in bad faith and the paragraph 4(a)(iii) of the Policy is 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.
Zoltán Takács
Sole Panelist
Date: January 28, 2019
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