The Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Contact Privacy Inc. Customer 0152399944 of Toronto, Ontario, Canada / Hotel Indigo, hotel indigo, of Vernon Hills, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2019, 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 January 17, 2019, 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 January 17, 2019.
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 January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 13, 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
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. The companies within IHG own, manage, lease, or franchise, through various subsidiaries, 5,518 hotels and 825,746 guest rooms in nearly 100 countries and territories around the world. IHG owns a portfolio of well-recognized and respected hotel brands that includes the Hotel Indigo hotels.
The Complainant owns the Hotel Indigo hotel brand, which is an upscale boutique property that is designed to reflect the local culture, featuring locally inspired murals and a renewal program where the images, music, scent and menu items change throughout the year. The Complainant’s first Hotel Indigo hotel was opened in Atlanta, Georgia, United States, in October 2004, and expanded to Europe in 2008, Latin America in 2009 and Shanghai on the Bund (China) in 2010. The brand will expand to New Zealand in 2021. The Complainant’s Hotel Indigo brand offers 11,581 hotel rooms in 94 hotels worldwide, with another 93 hotels in the pipeline. The Complainant is the registrant (via its related company InterContinental Hotels Group) of the domain name , which was created on February 26, 2003, and resolves to its official website.
The Complainant and its affiliates own at least 184 trademark registrations in at least 79 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOTEL INDIGO (e.g. United States Reg. No. 2953309, registered on May 17, 2005). In addition, the Complainant and its affiliates own trademark registrations for the Hotel Indigo design, that include the text “HOTEL INDIGO” in a stylized font, along with a conch shell design (hereinafter collectively, the “HOTEL INDIGO Mark”).
The Disputed Domain Name was registered on August 12, 2018 – 15 years after the Complainant filed its first HOTEL INDIGO Mark. The Respondent used the Disputed Domain Name in connection with an employment-related and identity-theft scam, also called a phishing scam, by impersonating the Complainant in an effort to obtain personal information from innocent job seekers. For example, on December 29, 2018, an email was sent from “[...]@”, transmitting a fraudulent “Contract of Agreement” for a non-existent job offer at the “Hotel Indigo Atlanta Downtown”, which displayed the HOTEL INDIGO Mark. On January 2, 2019, an email was sent from the Complainant’s human resources manager at the Hotel Indigo Atlanta Downtown, reporting “a hiring scam involving our hotel” in which “[s]omeone is [e]mailing people from [...]@ and telling them they have a job at our hotel” and “asking for [USD]1000 for a work permit”.
The Disputed Domain Name resolves to a passive parking page, which has a large rendition of the Disputed Domain Name under which it states, “We’re under construction. Please check back for an update soon”. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the Disputed Domain Name is confusingly similar to the HOTEL INDIGO Mark.
First, the Complainant is the owner of numerous trademark registrations for HOTEL INDIGO. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the HOTEL INDIGO Mark.
The Disputed Domain Name consists of a misspelling of the HOTEL INDIGO Mark, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting. The addition of the letter “s” in the Disputed Domain Name is a minor difference that does nothing to avoid a finding of confusing similarity. See, e.g., ALH Group Pty Ltd v. Naveen Mathur,WIPO Case No. D2015-2004 (finding confusingly similar to the trademark ALH GROUP despite the addition of the letter “s” to the domain name); Sanofi v. Cimpress Schweiz GmbH,WIPO Case No. D2017-1342.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. The Respondent does not run any business under the name “Hotel Indigo” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy for the reasons set forth below.
First, the Respondent’s phishing scheme to send potential job seekers fraudulent emails purporting to come from the Complainant, transmitting a fraudulent “Contract of Agreement” for a non-existent job offer at the “Hotel Indigo Atlanta Downtown”, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s HOTEL INDIGO Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s HOTEL INDIGO Mark for commercial gain.
Third, the Respondent knew or should have known of the Complainant’s rights in its widely-used HOTEL INDIGO Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name after the Complainant first used and obtained its numerous trademark registrations for the HOTEL INDIGO Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its HOTEL INDIGO Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Fourth, the Respondent’s identification of itself as “Hotel Indigo, hotel indigo” (a name that contains the Complainant’s own trademark), at an address where the Complainant operates a legitimate Hotel Indigo hotel, “reflect[s] a false identification of Domain Name ownership.” American Honda Motor Co., Inc. v. Domain Administrator - WhoIs Watchdog / Honda Automobile Customer Service - American Honda Motor Co., Inc.,WIPO Case No. D2015-0559. Such conduct is evidence of the Respondent’s bad faith. See, e.g., Colas v. Benjamin Bouillot,WIPO Case No. D2015-0925 (“Respondent registered the disputed domain name using the Complainant’s name and address”); Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index,WIPO Case No. D2010-0807 (“the registration information in the WhoIs records for the Domain Name is false, as it refers to Complainant’s name and address”); Swissquote Group Holding SA v. Swissquote Group Holding Ltd,WIPO Case No. DCO2012-0036 (“use of the Complainant’s name (and address) in the registration of the disputed domain name is further indicia of bad faith and subterfuge”).
Finally, by using the Disputed Domain Name passively and having no content on its web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”. Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME,WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo,WIPO Case No. D2001-0177.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: February 20, 2019
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