The Complainant is Six Continents Hotels, Inc., United States of America (“US”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, US.
The Respondent is Domain Administrator, Ideogram Technology Solutions Private Limited, India.
2. The Domain Names and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Response was filed with the Center on November 17, 2021. The Complainant submitted a Supplemental Filing on November 19, 2201.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 23, 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 BackgroundThe Complainant is a company within the InterContinental Hotels Group (“IHG”). Companies within the IHG own, manage, lease or franchise, through various subsidiaries, 5,994 hotels and 884,484 guest rooms in nearly 100 countries and territories around the world.
IHG owns a portfolio of hotel brands including Holiday Inn Hotels, Holiday Inn Club Vacations, and Holiday Inn Express. The Complainant’s Holiday Inn brand was founded in 1952 and today is used worldwide in connection with 1,234 hotels offering 224,855 rooms, including in India where the Respondent is located.
The Complainant, or its affiliates, owns approximately 1,665 registrations in at least 174 countries or regions wordwide for trademarks that consist of, or contain, the mark HOLIDAY INN, such as the following:
- the Indian trademark registration number 226267 for the words HOLIDAY INN, filed and registered on December 30, 1964, and covering goods in Nice Class 16; and
- the US trademark registration number 0592539 for the words HOLIDAY INN, registered on July 13, 1954, and covering services in Nice Class 42.
According to Annex 11 to Complaint, the Complainant’s trademark HOLIDAY INN is included on the list of well-known marks in India, following a decision of the High Court in Delhi.
The Complainant owns more than a thousand domain names including the mark HOLIDAY INN, e.g.,
The disputed domain name
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark HOLIDAY INN registered and used extensively since 1952, including in India; the Respondent has no rights or legitimate interests in the disputed domain name; and the Respondent registered and is using the disputed domain name in bad faith.
In the Supplemental Filing, the Complainant states mainly that the Respondent’s registration as a travel agent is analogous to a corporate registration, which previous UDRP panels have repeatedly said is irrelevant to establish rights or legitimate interests or to defeat a bad faith claim, noting particularly that the Complainant’s trademark is protected in many jurisdictions for decades, including in India since 1964 and it is well known worldwide, including in India, as confirmed by the evidence provided in its Complaint.
B. RespondentThe Respondent alleges that it was not aware of the Complainant’s trademark when registering the disputed domain name. The disputed domain name was legally registered with the local authorities of the state of Jammu and Kashmir, India, after a due diligence, for use in relation to a travel business named “Holiday Inn Tour & Travels”.
The Respondent provides in its defense a document with the title “DEPARTMENT OF TOURISM GOVERNMENT OF JAMMU AND KASHMIR - FORM VI - Certificate of Registration of TRAVEL AGENT” issued on July 11, 2019, and renewed on January 1, 2021, mentioning under the section “Name of the Agency” the following name: “HOLIDAY INN TOUR & TRAVEL”.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Procedural matter: Supplemental FilingsThe Complainant submitted supplemental filings on November 19, 2021, addressing matters raised in the Respondent’s defenses.
Whereas unsolicited supplemental filings are generally discouraged particularly due to the UDRP procedure’s expeditious character, pursuant to its powers under paragraph 10 of the UDRP Rules which vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, this Panel finds relevant the supplemental submission because the Complainant was unable to reasonably foresee and thus, to provide it in its Complaint, and therefore the Panel accepts such filings.
B. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the HOLIDAY INN trademark.
The disputed domain name
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark HOLIDAY INN, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark HOLIDAY INN, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Further the Respondent’s claims regarding the registration of the name “Holiday Inn Tour & Travel” as a travel agency name with local authorities is irrelevant having in view particularly the circumstances where the Complainant’s mark is widely known for many years in relation to similar services.
Under the Policy, “where 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”. See section 2.1 of the WIPO Overview 3.0.
The Respondent states that it has registered the disputed domain name for a commercial activity, a travel agency registered with the local authorities with a similar name with the disputed domain name.
Section 2.5 of the WIPO Overview 3.0 provides that “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”.
Given the circumstances of this matter, particularly the worldwide reputation of the Complainant’s trademark established for decades, including in India, the registration of a local travel agency, company name, obtaining of trade licenses or other similar permissions, containing the Complainant’s trademark or similar variations thereof is not sufficient, for the purpose of the Policy, to establish that the Respondent was commonly known by the disputed domain name or that it was making a legitimate fair use of the disputed domain name. Moreover, despite the Respondent’s agency registration, the Respondent has failed to provide any evidence attesting to the known nature of its travel agency, least any documents evidencing expenses or profit since its formation in 2019.
In addition, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s well-known trademark in its entirety in combination with a dictionary term, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds, on the balance of the probabilities, that the Respondent’s registration is not sufficient for the purposes of the Policy to establish that the Respondent is commonly known by such name, when that name had been chosen because of its association with the Complainant.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad FaithThe Complainant holds approximatelly 1,665 registered trademarks worldwide for HOLIDAY INN and the first mark was registered since 1954.
Previous decisions under the Policy have established that the Complainant’s HOLIDAY INN trademark is well known worldwide. See Six Continents Hotels, Inc. v. Ahmed Marzooq,WIPO Case No. D2012-0757 and cases cited therein.
The Complainant’s trademark is included in the list of well-known trademarks in India.
The disputed domain name was created in 2020 and incorporates the Complainant’s mark with the additional term “travels”, closely related to the Complainant’s business.
Having in view the above, the Panel cannot accept the Respondent’s allegations that it was not aware of the Complainant’s trademark when registering the disputed domain name, but to the contrary, the Panel finds that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its business, and particularly targeting its HOLIDAY INN trademark.
Further, at the time of filing the Complaint the disputed domain name was used in connection to a website using the name “Holiday Inn Tour & Travels” and providing travel services in India.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent is using without permission the Complainant’s trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s famous trademark in the disputed domain name and the content on the website provided thereunder which includes the Complainant’s mark and promotes competing or similar services to those provided by the Complainant.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Marilena Comanescu
Sole Panelist
Date: November 29, 2021