Complainant is Inter-Continental Hotels Corporation, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Weiping Lee, China. 2. The Domain Name and Registrar
The disputed domain name (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 August 6, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 12, 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 the companies constituting the InterContinental Hotels Group (“IHG”). According to the Complaint, these companies manage, lease or franchise, through various subsidiaries, 5,656 hotels and 842,759 guest rooms in about 100 countries and territories. IHG owns a portfolio of hotel brands including, inter alia, InterContinental Hotels & Resorts. IHG also manages the hotel loyalty program IHG Rewards Club.
Complainant or its affiliates own numerous registrations for trademarks consisting of or containing the INTERCONTINENTAL trademark. In particular, Complainant owns the following registrations:
INTERCONTINENTAL, United States Registration No. 890271, registered on April 28, 1970, filed on May 14, 1969, renewed on March 22, 2010, covering services in International Classes 35, 36, 37, 38, 39, 40, 41 and 42, in particular for hotel services and consulting services to others in the development and planning of hotels.
INTERCONTINENTAL, China Registration No. 6769963, registered on July 21, 2010, covering several hotel services, in International Class 43.
Respondent registered the Disputed Domain Name on March 27, 2012.
Until recently, the website at the Disputed Domain Name was reproducing a photo showing the InterContinental hotel located in Shenzhen and a text describing the hotel, different services were offered such as pick up and drop off services, airport and train transfer service, car rentals, city tours, hotel-to-hotel transfer and “special offers” such as invitation letter for visa purposes, interpreter, flight tickets, meeting room and room reservations, et cetera, presumably for profit. Presently, the Disputed Domain Name does not resolve to any active website. The browser returns a HTTP Error 404 (“The requested resource is not found.”) 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s INTERCONTINENTAL trademark as the Disputed Domain Name contains this mark in its entirety. The only difference with the INTERCONTINENTAL trademark is the addition in the Disputed Domain Name of the city name “Shenzhen” (where Complainant operates an InterContinental-branded hotel). This difference is irrelevant for purposes of confusing similarity under paragraph 4(a)(i) of the Policy. In addition, the Disputed Domain Name is confusingly similar to the INTERCONTINENTAL trademark because the dominant portion of the Disputed Domain Name contains the INTERCONTINENTAL trademark. Finally, the overall impression of the designation of the Disputed Domain Name is one of being connected to the trademark of Complainant.
Complainant also 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 in any manner.
Complainant further contends that Respondent has never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests under paragraph 4(c)(i) of the Policy. Respondent is using the Disputed Domain Name in connection with a website that falsely appears to be affiliated with Complainant and an InterContinental-brand hotel in the Chinese city of Shenzhen, without permission or consent of Complainant.
Complainant also asserts that to its knowledge, Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. According to the WhoIs record, the registrant of the Disputed Domain Name is “Weiping Lee”. Therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
Complainant adds that Respondent is making a commercial use of the Disputed Domain Name by offering hotel services without permission or consent of Complainant. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s INTERCONTINENTAL trademark. Therefore, Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(iii) of the Policy.
Complainant further states that the Disputed Domain Name has been registered and used in bad faith. The INTERCONTINENTAL trademark is a well-known mark, first used in 1948 – 64 yearsbefore Respondent registered the Disputed Domain Name. The INTERCONTINENTAL trademark is protected by multiple registrations in at least 53 countries, the oldest of which was first used 71 yearsago. The INTERCONTINENTAL trademark is used in connection with 204 hotels with 69,166 guest rooms worldwide. Given the fame of the INTERCONTINENTAL trademark and Complainant’s significant presence, it is implausible that Respondent was unaware of the Complainant when he registered the Disputed Domain Name.
Complainant also contends that Respondent is using the Disputed Domain Name in connection with a website that falsely purports to be for an “InterContinental” hotel in Shenzhen, China, where Complainant operates a, InterContinental hotel. This has caused actual confusion. By using Complainant’s INTERCONTINENTAL trademark on a website offering hotel services via a domain name confusingly similar to the INTERCONTINENTAL trademark, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the INTERCONTINENTAL trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy.
Complainant further argues that Respondent has registered the Disputed Domain Name primarily for disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. Respondent is using the Disputed Domain Name, without permission or consent of Complainant, in connection with a website that offers hotel services in competition with Complainant, clearly disrupting Complainant’s business.
Lastly, Complainant says that Respondent is a repeat cybersquatter who has lost at least one previous decision under the Policy, in a case also regarding a domain name that contained a hotel company’s trademark plus the name of a city in China. Accor, SoLuxury HMC v. Weiping Lee,WIPO Case No. D2012‑0031 (transfer of and ). As a result, Respondent has engaged in a “pattern of such conduct” that further establishes bad faith pursuant to paragraph 4(b)(ii) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied that Complainant has rights in the INTERCONTINENTAL trademark. By submitting printouts taken from the corresponding official trademark databases, Complainant has shown that it owns registrations for this mark in the United States and in China, covering hotel services (see section 4 above).
The Panel notes that in the Disputed Domain Name the INTERCONTINENTAL trademark is incorporated in its entirety, to which the geographic term “Shenzhen”, a city in China, is added. It is well established that in a domain name such kind of additions would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where 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. The nature of such additional term(s) may however bear on assessment of the second and third elements.)
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s INTERCONTINENTAL trademark. B. Rights or Legitimate Interests
Complainant says that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the INTERCONTINENTAL trademark in any manner, and there is no evidence indicating the contrary. The Panel also notes that according to the relevant WhoIs record, the registrant of the Disputed Domain Name is “Weiping Lee”, and there is no evidence showing that this person is known by the Disputed Domain Name. Thus, paragraph 4(c)(ii) of the Policy is inapplicable.
In addition, Complainant has shown that at least in July 2019, on the website at the Disputed Domain Name, under a photo showing the InterContinental hotel in Shenzhen and a text describing the hotel, various services were offered presumably for profit, including pick up and drop off services, airport and train transfer service, car rentals, city tours, hotel-to-hotel transfer and “special offers” such as invitation letter for visa purposes, interpreter, flight tickets, meeting room and room reservations, et cetera (Annex 6 to the Complaint).
The Panel agrees with Complainant that by using the Disputed Domain Name as shown, Respondent falsely appeared to be affiliated with Complainant and the InterContinental brand hotel located in the Chinese city of Shenzhen. In fact, Complainant has provided an example of actual confusion, an email exchange with a customer that contacted the website at the Disputed Domain Name and discovered that the payment for services offered thereon did not belong to the InterContinental group. In the view of the Panel, this use of the website at the Disputed Domain Name appears to have been an attempt at impersonation of Complainant, or at suggesting Internet users that the owner of the website is being sponsored or endorsed by Complainant. Obviously, such use does not qualify as a bona fide offering of services under Policy paragraph 4(c)(i), or as a fair or legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers, under Policy paragraph 4(c)(iii). See WIPO Overview 3.0, section 2.5.1(“Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. […] (C)ertain geographic terms (e.g., , or ) …are seen as tending to suggest sponsorship or endorsement by the trademark owner.”)
In the Panel’s opinion, the present lack of any active use of the Disputed Domain Name (see section 4 above, in fine) suggests that Respondent’s only contemplated use for the Disputed Domain Name was extracting a profit from the confusion it created among Internet users presumably looking for Complainant and its hotel services in Shenzhen, by selling services in competition with Complainant.
In sum, Complainant was successful in raising a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. For its part, Respondent failed to provide the Panel with an explanation for its reasons to register and use the Disputed Domain Name as shown, or with otherwise relevant evidence to rebut Complainant’s prima facie case. See WIPO Overview 3.0., section 2.1 (“[…] (W)here 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 relevant evidence demonstrating rights or 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 Panel concludes that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant has shown that its INTERCONTINENTAL trademark was first used and registered several decades before the registration of the Disputed Domain Name. The Panel agrees with prior UDRP panels that the INTERCONTINENTAL mark is internationally well-known in relation to hotel services. See, e.g., Inter-Continental Hotels Corporation v. Registration Private, Domains By Proxy, LLC / James Onuoha Doe,WIPO Case No. D2018-2902 (“The INTERCONTINENTAL Trademark and INTERCONTINENTAL HOTELS GROUP Trademark are both very distinctive and have a strong reputation…”); see also Inter-Continental Hotels Corporation v. WhoIs Privacy Protection Service by VALUE-DOMAIN / #temporarily set#, Agent information set by transfer,WIPO Case No. D2019-0539 (“The Respondent has registered the Disputed Domain Name that contains the Complainant’s well-known INTERCONTINENTAL mark in its entirety.”)
In addition, the only evidenced active use of the Disputed Domain Name shows that Respondent’s purpose at the registration was, as a minimum, to create confusion among Internet users presumably looking for Complainant and its Intercontinental brand hotel in Shenzhen, and offering services in competition with Complainant. In sum, Respondent must have clearly known of and targeted Complainant, the INTERCONTINENTAL trademark and its associated hotel services when it registered the Disputed Domain Name. In the circumstances of this case, this means that the registration of the Disputed Domain Name was in bad faith.
As seen above, until recently the Disputed Domain Name was used in an attempt of impersonation, or by falsely creating an impression of association with, or of endorsement or sponsorship by Complainant’s group of companies. In the view of the Panel, by using the Disputed Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the Disputed Domain Name.
Presently, the Disputed Domain Name does not resolve to any active website. This suggests that Respondent is not contemplating any use of the Disputed Domain Name that would not be to the detriment of Complainant, i.e., in bad faith. Respondent’s failure to provide any argument in its own favor reinforces the Panel’s overall impression that Respondent is acting in bad faith.
The Panel concludes that the Disputed Domain Name was registered and is being used in bad faith. 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.
Roberto Bianchi
Sole Panelist
Date: September 26, 2019
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