Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw, United States.
Respondent is Contact Privacy Inc. Customer 0151534653 of Toronto, Ontario, Canada / Mark Serrano, Crowne Plaza of Chicago, Illinois, United States / Crown Plaza, Crowne Plaza of Chicago, Illinois, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with Tucows 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 Names. On December 19, 2018, the Registrar transmitted by email to the Center its verification response 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 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. 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 14, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 29, 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. 4. Factual Background
Complainant belongs to a group of companies collectively known as InterContinental Hotels Group (“IHG”), operating hotels in nearly 100 countries around the world. IHG owns numerous hotel brands, including Crowne Plaza Hotels & Resorts. The Crowne Plaza brand was founded in 1983 and is used today in connection with 423 hotels worldwide.
Complainant or its affiliates are the proprietors of approximately 330 registrations consisting of or containing the words CROWNE PLAZA in 170 countries or geographic regions worldwide, including the following:
- United States trademark No. 1297211 for CROWNE PLAZA (word mark) in class 42, registered on September 18, 1994;
- United States trademark No. 2329872 for CROWNE PLAZA (figurative mark) in class 42, registered on March 14, 2000;
- United States trademark No. 3761592 for CROWNE PLAZA (word mark) in class 41, registered on March 16, 2010.
IHG is the registrant of the domain name , created on March 31, 1995, and uses this domain in connection with its Crowne Plaza brand of hotels.
The Disputed Domain Names were registered on May 12, 2018 () and June 4, 2018 (), respectively, by a party identified as “Contact Privacy Inc. Customer 0151534653 of Toronto, Ontario, Canada / Mark Serrano, crowne Plaza of Chicago, Illinois, United States / crown Plaza, Crowne Plaza of Chicago, Illinois, United States”.
Both of the Disputed Domain Names resolve to websites that are “under construction”. The Disputed Domain Name has been used in connection with an email scheme to acquire personal information from prospective job applicants of Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that previous UDRP panels have found that Complainant has strong rights in the CROWNE PLAZA trademark, and that this trademark is incorporated in its entirety in each of the Dispute Domain Names. The spaces between the two words in the trademark are not relevant to a finding of identity or similarity between the trademark and the Disputed Domain Names, since such spaces cannot be reproduced in domain names.
The Complaint further submits that the inclusion of the city name “Chicago” in one of the Disputed Domain Names does nothing to alleviate confusing similarity (Inter-Continental Hotels Corporation v. Mr. Tuan / Mr. Miko / Miss Ha Phuong,WIPO Case No. D2014-1987). Similarly, the addition of the word “hotel” in one of the Disputed Domain Names does not decrease the likelihood of confusion, since this word is descriptive of the services offered by Complainant under the CROWNE PLAZA marks. The additional letter “s” following the word “plaza” in one of the Disputed Domain Names is a minor difference that does nothing to avoid a finding of confusing similarity.
The placement of the words CROWNE PLAZA at the beginning of each of the Disputed Domain Names represents the “dominant portion” of said domains, and such placement followed by additional words or characters does not dispel confusing similarity (F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher / Mark Lichtenberger,WIPO Case No. D2007-0189).
Respondent has no rights or legitimate interests in either of the Disputed Domain Names, since Complainant as the right holder has not granted permission to Respondent to register domains containing its CROWNE PLAZA trademarks. Respondent is using one the Disputed Domain Names () in connection with an employment/phishing scam, which cannot be a bona fide offering of goods or services under the Policy and instead demonstrates that Respondent’s actions are clearly commercial. Respondent is not using either of the Disputed Domain Names in connection with active websites, further evidencing that Respondent has failed to establish rights or legitimate interests in the Disputed Domain Names through legitimate noncommercial or fair use of the Disputed Domain Names. To Complainant’s knowledge, Respondent has never been commonly known by either of the Disputed Domain Names and has not acquired any trademark rights in either Disputed Domain Name.
The Disputed Domain Names have been registered and are being used in bad faith by Respondent. The Disputed Domain Name is being used to effect a scam whereby emails are sent to job applicants in connection with purported job vacancies. Bad faith is further evidenced by Respondent’s failure to provide any evidence of actual or contemplated good-faith use, Respondent’s use of a privacy service to conceal its identity, and the impossibility of identifying any good faith use of the Disputed Domain Names as they contain Complainant’s trademarks in their entirety. Complainant has long established rights in the CROWNE PLAZA trademarks and enjoys significant brand recognition therein.
Complainant requests transfer of the Disputed Domain Names. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) Respondent has registered and is using the Disputed Domain Names in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark CROWNE PLAZA through trademark registrations at least in the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”).
In comparing Complainant’s trademark with the Disputed Domain Names, the Panel concludes that both of the latter wholly incorporate Complainant’s trademark, and that the Disputed Domain Names are confusingly similar to Complainant’s trademark for purposes of UDRP standing. The addition of the dictionary terms such as “hotels” or “Chicago” does not prevent a finding of confusing similarity under the first element. (See, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (); and Six Continents Hotels, Inc. v. WhoisSecure, WhoisSecure / Gary Foster, NA,WIPO Case No. D2018-2871 ()).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in either of the Disputed Domain Names. The Panel finds that the materials in the case file indicate that Respondent is not an agent or employee of Complainant, nor is Respondent a licensee nor a subsidiary thereof. There is no evidence that Respondent is commonly known by either of the Disputed Domain Names. Both Disputed Domain Names resolve to inactive websites and no information is provided on what rights or legitimate interests Respondent may have in the Disputed Domain Names.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Disputed Domains Names, the burden shifts to Respondent to establish such rights or legitimate interests. Based on the evidence presented that the Disputed Domain Names resolve to inactive web sites, and that at least one of the Disputed Domain Names has been used to send fraudulent emails, the Panel finds that Respondent is not using the Disputed Domain Names in connection with any bona fide offering. It is the consensus view of panels that the use of a domain name in connection with illegal activity, including phishing, cannot confer rights nor legitimate interests in a domain name (WIPO Overview 3.0, section 2.13.1). Furthermore, Respondent has not filed a response to Complainant.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The evidence submitted by Complainant demonstrates that Respondent has intentionally attempted to create a likelihood of confusion with Complainant’s CROWNE PLAZA trademark by incorporating Complainant’s trademark into the Disputed Domain Name that was used to send phishing messages to unwitting job seekers by impersonating personnel of a purported “Crown Plaza Chicago West Loop” hotel. Complainant alleges that the purpose of sending such phishing messages was to obtain personal information and the content of the sample phishing-email provided by Complainant demonstrates that such an explanation is plausible. The Panel agrees that bad faith is thereby proved in respect of the Disputed Domain Name , in accordance with the consensus view that disrupting the business of a competitor indicates bad faith (WIPO Overview 3.0, section 3.1.3). Moreover, an email address mentioned in the phishing message (“[…]@crowneplazahotelworldrecruitment”) is identical to one that was subject to a recent decision whereby said domain was transferred to Complainant (Six Continents Hotels, Inc. v. WhoisSecure, WhoisSecure / Gary Foster, NA,WIPO Case No. D2018-2871. Moreover, the Disputed Domain Name contains in its entirety Complainant’s trademark, which is inherently distinctive as discussed below.
In respect of Disputed Domain Name , the record contains no evidence regarding the use of this domain name apart from the inactive web site previously mentioned. In the case of this domain, the Panel finds bad faith in the following circumstances. First, Complainant’s trademark is inherently distinctive and is well known around the world, as previous panels have found (see, e.g., Six Continents Hotels, Inc. v. Bunjong Chaiviriyawong,WIPO Case No. D2013-1942). As in the cited case, it is the Panel’s view that Respondent was aware of Complainant’s trademark when registering a domain name incorporating the mark CROWNE PLAZA in its entirety with the addition of the dictionary word “hotels,” relating to Complainant’s activity. Next, the two Disputed Domain Names were registered by the same party within a very short time period, via the same Registrar and using the same name servers, indicating a pattern of activity by Respondent. Finally, evaluating the totality of the circumstances, the Panel finds that “passive holding” of this domain name is indicative of bad faith. The Complainant’s mark is highly distinctive, Respondent did not submit a response nor submit any evidence of actual or contemplated good-faith use, Respondent has concealed its identity and/or used false contact details, and there is no plausible good-faith use to which the domain may be put. (WIPO Overview 3.0, section 3.3).
Accordingly, the Panel finds that Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 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.
Ingrīda Kariņa-Berziņa
Sole Panelist
Date: February 12, 2019
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