The Complainant is Six Continents Hotels, Inc., United States of America (“United States” or “U.S.”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Packer Willer, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2021, 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 March 24, 2021 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 March 24, 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 March 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021. The Center appointed Carol Anne Been as the sole panelist in this matter on May 5, 2021. On May 11, 2021, the Center received an email communication from Panelist Been regarding a subsequent disclosure. On May 12, 2021, the Center informed the Parties of a Recusal and subsequent Notification of Panel Appointment, and William R. Towns was appointed as the sole panelist in this matter. 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 Six Continents Hotels, Inc., headquartered in the Atlanta, Georgia, United States. The Complainant is part of IHG Hotel and Resorts (“IHG”), one of the world’s largest hotel groups with a worldwide presence in nearly 100 countries and territories. IHG owns a portfolio of hotels operating under brands including among others “InterContinental”, “Crowne Plaza”, “Holiday Inn”, “Holiday Inn Express”, “Candlewood Suites”, “Staybridge Suites”, and “Hotel Indigo”. The Complainant’s first Hotel Indigo hotel was opened in October 2004 in Atlanta, Georgia. The Complainant since has established an international presence, operating more than 125 hotels worldwide, including Europe, Latin America, and China. The Complainant owns trademark registrations for its HOTEL INDIGO mark in numerous jurisdictions, including the following registrations in United States: - HOTEL INDIGO, U.S. Reg. No. 2953309, applied for March 12, 2003, and registered May 17, 2005, in class 43; - HOTEL INDIGO (and design), U.S. Reg. No. 3424795, applied for June 15, 2004, and registered May 6, 2008; - HOTEL INDIGO, U.S. Reg. No. 3424796, applied for June 15, 2004, and registered May 6, 2008; - HOTEL INDIGO (and design), U.S. Reg. No. 3929099, applied for March 4, 2009, and registered March 8, 2011; - HOTEL INDIGO (and design), U.S. Reg. No.3934936, applied for March 4, 2009, and registered March 22, 2011. The Complainant through an affiliated company registered the domain name The Respondent registered the disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s HOTEL INDIGO mark, in which the Complainant has established rights through registration and extensive use. The Complainant observes that the HOTEL INDIGO mark is clearly recognizable in the disputed domain name, and emphasizes that the insertion of a hyphen (“-”) between “hotelindigo” and the word “recruitments” does not prevent a finding of confusing similarity. The Complainant remarks that the HOTEL INIDGO mark is wholly incorporated by the Respondent in the disputed domain name. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent holds no registrations for the HOTEL INDIGO mark, and has not been licensed, authorized or otherwise given permission to use or register the HOTEL INDIGO mark or any derivations thereof, including domain names. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name and has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant maintains that the Respondent has used the disputed domain name for purposes of impersonation in furtherance of a fraudulent employment-related phishing scam. The Complainant cites analogous UDRP decisions including Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc. v. infosheraton,WIPO Case No. D2010-2195 (respondent used disputed domain name with job search scam aimed at theft of money and identity); and Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 (respondent used disputed domain name to impersonate complainant in employment and identity theft scam). The Complainant further observes that the Respondent has not made a legitimate noncommercial or other fair use of the disputed domain name. The Complainant maintains that the Respondent registered and has used the disputed domain name in bad faith. The Complainant asserts that the Respondent had the Complainant’s HOTEL INDIGO mark firmly in mind when registering the disputed domain name. Further, given that the Complainant’s HOTEL INDIGO mark had been registered and in use for more than 15 years when the Respondent registered the disputed domain name, the Complainant concludes that the Respondent has intentionally targeted the Complainant’s mark, using the disputed domain name in furtherance of an illicit employment phishing scam, and should be found to have registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s HOTEL INDIGO mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. The Complainant’s HOTEL INDIGO mark is clearly recognizable in the disputed domain name.2 The inclusion in the disputed domain name of a hyphen (“-”) inserted between “hotelindigo” and the term “recruitments” name does not prevent a finding of confusing similarity. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s HOTEL INDIGO mark. The record nonetheless reflects the Respondent’s intentional registration and use of the disputed domain name to impersonate the Hotel Indigo and its management in an attempt to profit illicitly from an employment-related and identify theft scam. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. It is apparent from the record that the Respondent was aware of the Complainant and the Complainant’s HOTEL INDIGO mark when registering the disputed domain name. The record clearly establishes that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, using the disputed domain name to impersonate the Hotel Indigo and its management in perpetration of a fraudulent employment-related and identity theft scheme. The use of a domain name for illegal activity (e.g.,phishing, impersonation, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13 and cases cited therein. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent had the Complainant’s HOTEL INDIGO mark firmly in mind when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name as reflected in the record of this case is clearly demonstrative of bad faith. The Respondent sought to capitalize on the Complainant’s trademark rights, creating a likelihood of confusion with the Complainant’s HOTEL INDIGO mark, with the Respondent’s ultimate objective being to profit illicitly from the perpetration of a fraudulent employment-related and identify theft scam. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name William R. Towns 1 SeeWIPO Overview 3.0 , section 1.7 . 2 Id. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
Sole Panelist
Date: May 26, 2021
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