The Complainant is Inter-Continental Hotels Corporation, 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 1247331665, Canada / “Intercontinental Hotel”, Cameroon. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 30, 2020, 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 31, 2021. 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2021. The Center appointed Gareth Dickson as the sole panelist in this matter on February 25, 2021. 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 part of the InterContinental Hotels Group, which is, directly or indirectly, responsible for the ownership and management of thousands of hotels and guest rooms around the world. It has brought and won several UDRP complaints concerning domain names incorporating its INTERCONTINENTAL trade mark (the “Mark”) and is the owner of hundreds of trade mark registrations consisting of or containing the Mark around the world, including United States trade mark registration number 890271, registered on April 28, 1970. Previous UDRP Panels have found the Mark to be a well-known mark. The disputed domain name was registered on May 28, 2020. At least one email address using the disputed domain name is being used to ask job seekers to disclose to the Respondent (or to someone using the domain name with their consent) highly valuable personal information such as copies of passports, birth certificates, home addresses and Social Security numbers. The sender of these emails includes in correspondence the real address of one of the Complainant’s hotels. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark in its entirety together with the descriptive terms “hotel” and “Florida”, which together serve to increase the confusing similarity of the disputed domain name to the Mark, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to further a fraud, imitating the Complainant in order to persuade individuals to send valuable personal information. Although the registrant of the disputed domain name has been revealed, once the registrant data lying behind the privacy service was disclosed, to have used the name “Intercontinental Hotel” when registering the disputed domain name, the Complainant submits that there is no evidence that the Respondent has in fact ever been commonly known by that name or by the disputed domain name; nor is there evidence that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of it, the disputed domain name having been used specifically for the purposes of tricking visitors into disclosing personal information to the Respondent for an identity-theft scam; nor has the Respondent ever used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name and that it did so in bad faith. The Mark, according not just to the Complainant but also to previous Panels, is well-known and the Respondent has adopted the postal address of one of the Complainant’s hotels in connection with its use of the disputed domain name. The Complainant also argues that the use of a domain name for per se illegal activity such as impersonating the Complainant and phishing for personal information is manifest evidence of bad faith use of the disputed domain name. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Section 1.8 of the WIPO Overview 3.0 further provides that: “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 Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is incorporated in its entirety within the disputed domain name. The addition of the descriptive and geographical terms “hotel” and “Florida” do not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but is a well-known trade mark, which makes a coincidental adoption by the Respondent highly unlikely. Furthermore the Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise. While it is true that the Respondent has used the name “Intercontinental Hotel” when registering the disputed domain name, the Panel does not accept that the mere citation of that name on the WhoIs is sufficient to establish that the Respondent has been commonly known by the disputed domain name for the purposes of paragraph 4(c)(ii) of the Policy. Section 2.3 of the WIPO Overview 3.0 states that: “Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence”. Furthermore, the WIPO Overview 3.0 provides in the same section that: “Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting”. It seems highly unlikely, in the context of the whole of the cogent evidence of cybersquatting provided by the Complainant, that the Respondent’s claim to be called “Intercontinental Hotel” is accurate. But even if the Respondent’s claim was not so outlandish and it was theoretically possible that it was true, the Respondent has produced no concrete evidence to support the assertion. In these circumstances, the proposition that the Respondent has the same name as the owner of the trade mark targeted by the illegitimate activities pursued by the disputed domain name is weak and unpersuasive. Nor is there any evidence that the Respondent has acquired any common law rights to use the Mark, or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it: the use of the disputed domain name to send emails impersonating the Complainant in order to obtain the disclosure of sensitive personal information to the Respondent does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered, using the Complainant’s name no less, and accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the context of all the evidence before the Panel, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The Respondent is using the disputed domain name to impersonate the Complainant in order to phish for personal information, has not sought to explain its registration and use of the disputed domain name, has doubled its efforts to conceal its identity by using both a privacy service and false WhoIs data, and has not participated in these proceedings. There is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is in bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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, Gareth Dickson
Sole Panelist
Date: March 16, 2021
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