Complainant is Inter-Continental Hotels Corporation of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / James Onuoha Doe of Banjul, Gambia. 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 December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 Complainant on December 26, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 27, 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 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2019.
The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on January 23, 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 is one of a number of companies collectively known as InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups. Companies within IHG own, manage, lease or franchise, through various subsidiaries, 5,518 hotels and 825,746 guest rooms in about 100 countries and territories around the world. IHG owns a portfolio of well-recognized and respected hotel brands including InterContinental Hotels & Resorts, Hotel Indigo, Regent Hotels & Resorts, Holiday Inn Hotels, Holiday Inn Express Hotels, Holiday Inn Club Vacations, Holiday Inn Resorts, Crowne Plaza Hotels & Resorts, Kimpton Hotels & Restaurants, Staybridge Suites, Candlewood Suites, Hualuxe, Even Hotels, and avid Hotels and voco Hotels, IHG’s newest brands; and also manages one of the world’s largest hotel loyalty programs, IHG Rewards Club.
Complainant is the holder of the following trademarks registrations with the U.S. Patent and Trademark Office’s:
INTERCONTINENTAL, under No. 890,271, first used in 1948, and dating from April 29, 1970, and;
INTERCONTINENTAL HOTELS AND RESORTS, under No. 2,005,852, first used in February 1995 and dating from October 8, 1996.
Complainant or its affiliates hold also at least eight registrations in at least eight countries or geographic regions worldwide for trademarks that consist of or contain the mark INTERCONTINENTAL HOTELS GROUP (the “INTERCONTINENTAL HOTELS GROUP Trademark”) – e.g., INTERCONTINENTAL HOTELS GROUP, for Canada, under No. TMA897210, dating February 23, 2015; and, INTERCONTINENTAL HOTELS GROUP (in complex and simplified Chinese characters) under No. 300044577, dating from July 9, 2003.
Complainant (via IHG or Six Continents Hotels, Inc.) is the registrant of numerous domain names that contain or are similar to the INTERCONTINENTAL Trademark and the INTERCONTINENTAL HOTELS GROUP Trademark (each of which is defined below), including: (created on July 30, 1997), (created on November 25, 2002), and (created on January 30, 2003).
Respondent registered the disputed domain name on November 14, 2018 – 70 years after Complainant (or its predecessors) first began using the INTERCONTINENTAL Trademark. At the time of the filing of the Complaint, the disputed domain name resolved to an inactive site stating that “[t]his Web page is parked FREE, courtesy of GoDaddy”. 5. Parties’ Contentions A. Complainant
By the Complaint, Complainant asserts that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, since the disputed domain name contains Complainant’s INTERCONTINENTAL Trademark in its entirety as well as Complainant’s INTERCONTINENTAL HOTELS GROUP Trademark (absent the letter “s”).
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the INTERCONTINENTAL Trademark or the INTERCONTINENTAL HOTELS GROUP Trademark in any manner.
- Respondents is using the disputed domain name in connection with an employment/phishing scam, actions which are clearly commercial and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.
- further, by failing to use the disputed domain name in connection with an active website, Respondent is not “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” pursuant to paragraph 4(c)(iii) of the Policy.
- the disputed domain name should be also considered as having been registered and used in bad faith by Respondent, because it is clear that Respondent’s motive in registering and using the disputed domain name seems to be simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain.
- Respondent is using the disputed domain name in connection with an employment/phishing scam, which was found by numerous panels under the Policy as constituting bad faith – especially when targeting, as the Complainant, a hotel company. In this sense, Complainant provides evidence of emails between one of Respondent’s victims and Complainant (dated December 17, 2018) in which the victim reports that he received an email from [HR]@ with “an offer from IHG Montreal and the recruitment process was done complete through Email and never got a call from the HR team and when I tried to reach out to the HR in Montreal i [sic] could not get them over the phone”; and in which Complainant informs the victim that “[t]his offer letter does not appear to be genuine.” Further evidencing the employment/phishing scam used by Respondent, Complainant provides a fraudulent “Letter of Employment” sent to one of Respondent’s victims, falsely appearing to be from Complainant and “confirm[ing] this appointment to you to join InterContinental Hotels Group as a graduate staff of the multinational Group for a temporal/permanent status.”; a fraudulent “‘ESDC’ Labour Market Impact Assessment (LMMIA) Form” falsely appearing to be from Complainant and containing the disputed domain name in an email address printed thereon, [HR]@; and, a fraudulent “Congratulations” letter falsely appearing to be from Complainant and containing the disputed domain name in an email address printed thereon, human.resources@.
- Bad faith use and registration of the disputed domain name also exists under the well-established doctrine of “passive holding” set forth in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which is applicable in this case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Under the first element of the Policy, Complainant should show that the disputed domain name is identical or confusingly similar to a trademark in which is Complainant holds rights.
Based on the assertions and evidence presented by Complainant, this Panel finds undisputable that Complainant holds rights in the INTERCONTINENTAL trademarks.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s registered INTERCONTINENTAL marks because it fully incorporates the INTERCONTINENTAL marks. The Panel agrees with Complainant that the only differences between the disputed domain name and the INTERCONTINENTAL trademarks are the addition of a hyphen and the words “hotel” and “group” to the disputed domain name, although these verbal elements could be found in the INTERCONTINENTAL HOTELS GROUP trademarks. It is the opinion of this Panel, that all of these differences are irrelevant for the purpose of confusing similarity under paragraph 4(a)(i) of the Policy. If comparing the disputed domain name with at least the INTERCONTINENTAL Trademark, addition of the word “hotel” in the disputed domain name is irrelevant for purposes of the Policy and it may actually increase the confusing similarity, given that the word “hotel” is obviously associated with, and even describes, Complainant’s services using the INTERCONTINENTAL trademark and it is quite more similar with the INTERCONTINENTAL HOTELS GROUP trademarks.
For all the reasons above, this Panel finds that the disputed domain name is confusingly similar to the INTERCONTINENTAL marks and that Complainant has established the first element of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under the second element of the Policy, Complainant has to show that Respondent lacks rights or legitimate interests in respect of the disputed domain name. If Complainant makes that showing, the burden of production shifts to Respondent, according to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.1. In these proceedings, this Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by Respondent, as it did not reply to Complainant’s contentions.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the INTERCONTINENTAL Trademark or the INTERCONTINENTAL HOTELS GROUP Trademark in any manner. Moreover, as it results from WhoIs records and Registrar’s responses Respondent is not known by the name of INTERCONTINENTAL or INTERCONTINENTAL HOTEL GROUP.
Respondent is using the disputed domain name in connection to an employment/phishing scam, actions which are clearly commercial and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.
Further, by failing to use the disputed domain name in connection with an active website, Respondent is not “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” pursuant to paragraph 4(c)(iii) of the Policy.
As noted, the contentions of Complainant had not been rebutted by Respondent, and the Panel agrees with Complainant that the registration and use of such a well-known trademark in a domain name cannot be considered as bona fide activities.
Therefore, Complainant has fully demonstrated that Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
Respondent has registered and holds the disputed domain name inactively, while using it for impersonating Complainant in an employment/phishing scam.
Both type of actions constitute, by themselves or together, indications of bad faith registration and use of the disputed domain, confirmed in the UDRP practice, according to WIPO Overview 3.0, sections 3.3 and 3.4.
According to WIPO Overview 3.0, section 3.3., in applying the passive holding doctrine, panelists will look at the totality of the circumstances in each case and consider: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel agrees with Complainant that, in these proceedings, all of the factors set forth in WIPO Overview 3.0, section 3.3, are present and indicate that bad faith exists under the passive holding doctrine, specifically: the INTERCONTINENTAL Trademark and INTERCONTINENTAL HOTELS GROUP Trademark are both very distinctive and have a strong reputation, given that (as set forth in detail above) they have been registered for 70 years, are protected by at least 281 registrations in at least 163 countries; Respondent is unable to provide any evidence of actual or contemplated good-faith use; Respondent has concealed its identity by using a privacy service that identifies itself only as “Registration Private / Domains By Proxy, LLC”; and it is impossible to identify any good faith use to which the disputed domain name may be put, given that it is confusingly similar (as stated above) to both the INTERCONTINENTAL Trademark and INTERCONTINENTAL HOTELS GROUP Trademark and that it has been used in connection with an employment scam, which constitutes according to WIPO Overview 3.0, section 3.4, bad faith by itself.
Under this heading, Complainant has fully demonstrated that Respondent has registered and used the disputed domain name in bad faith and consequently, the third element of paragraph 4(a) of the Policy is established. 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 Complainant.
Dr. Beatrice Onica Jarka
Sole Panelist
Date: February 6, 2019
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