WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Telmex Management Services
Case No. D2001-0996
1. The Parties
The Complainant is Six Continents Hotels, Inc. of Three Ravinia Drive, Suite 2900, Atlanta, Georgia, 30346-2149, United States of America.
Represented by Carol Anne Been, Esq., Sonnenschein Nath & Rosenthal, 8000 Sears Tower, 233 South Wacker Drive, Chicago, Illinois, 60606, United States of America.
The Respondent is Telmex Management Services ("Telmex"), of Pasae Estate, Road Town, Tortola, British Virgin Islands, BVI, VG.
Respondent is not represented.
2. The Domain Name and Registrar
The domain names with which this dispute is concerned are: <theholidayinn.com>, <theinter-continental.com> and <thecrowneplaza.com>.
At the Commencement of this Proceeding, the Registrar with which the domain name <theholidayinn.com> was registered was Tucows, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3MI, Canada, and the Registrar with which the domain names <theintercontinental.com> and <thecrowneplaza.com> were registered was Intercosmos, Media Group, Inc., 650 Povdras Street, Suite 2311, Toronto, Ontario, Canada.
3. Procedural History
This matter has a long and complex history.
3.1 The Original Complaint was filed in respect of the domain name <theholidayinn.com> (the "holidayinn" domain name) on August 4, 2001, electronically and on August 7, 2001, in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").
3.2 As originally filed, the Complaint named "Organized Crime" as Respondent. However, following advice from the Registrar, Tucows, Inc., a Deficiency Notice was issued and an Amended Complaint was filed naming the present Respondent, Telmex, in respect of the "holidayinn" domain name and also the domain name <theinter-continental.com> (the "inter-continental" domain name) and the domain name <thecrowneplaza.com> (the "crowneplaza" domain name). Again, the Complaint was incorrect in naming the wrong registrar in respect of the latter two domain names, and a further Revised Complaint was filed on September 8, 2001.
3.3 On August 30, 2001, the Registrar, Tucows, Inc., verified in respect of the "holidayinn" domain name:
(i) that a copy of the Complaint had been served on it;
(ii) that the domain name is registered with it;
(iii) that the current registrant of the domain name is the Respondent;
(iv) that the Policy applies to the registration of the domain name;
(v) that the domain name is currently "on hold";
(vi) Respondent's contact information for the Administrative, Technical and Billing Contact of the domain name;
(vii) that the domain name was created on October 26, 2000.
3.4 On September 12, 2001, the Registrar, Intercosmos Media Group, Inc. verified in respect of the "inter-continental" domain name and the "crowneplaza" domain name:
(i) that a copy of the Complaint had been served on it;
(ii) that each of the domain names is registered with it;
(iii) that the current Registrant for each of the domain names is the Respondent;
(iv) that the Policy applies to the registrations of each of the domain names;
(v) that each of the domain names is currently "active";
(vi) Respondent's contact information for the Administrative, Technical and Billing Contact of the domain names;
(vii) that each of the domain names was created on June 28, 2001.
3.5 All formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Amended Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules.
3.6 On September 19, 2001, the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier and by e-mail to Respondent, the Administrative, the Billing Contact and the Technical Contact;
(ii) by e-mail to the postmaster at each of the domain names;
3.7 The e-mail deliveries appear to have been effected, but the courier delivery was returned. The Panel is satisfied that the responsibility on the Center imposed by Rule 2(a) of the Rules has been met and that Respondent received due notice of the Complaint by e-mail.
3.8 The Administrative Proceeding commenced on September 19, 2001, and the Response was due on October 9, 2001.
3.9 No Response was filed, and on February 28, 2002, a Notice of Respondent default was sent to Respondent and to the Administrative, Billing and Technical Contacts for the domain names.
3.10 The sole panelist, Desmond J. Ryan, having filed a Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on February 28, 2002.
4. Factual Background
4.1 Complainant is a worldwide franchisor of several hotel chains, including chains operating under the name and service marks "Holiday Inn", "Crowne Plaza" and "Inter-Continental."
4.2 Complainant claims to own hundreds of U.S. and foreign trademark registrations and pending applications for each of its aforesaid trademarks. In relation to the "Holiday Inn" trademark, it claims to own 864 registrations in 159 countries worldwide. Complainant cites registrations of "Holiday Inn" dating back to July 1954, (Complaint Annex E), "Crowne Plaza" dating back to September 1984, (Complaint Annex X), and "Inter-Continental Hotels" dating back to September 1969 (Complaint Annex Y). Complainant further asserts that each of its marks are well-known and inherently distinctive, famous and serves as an identifier of Complainants goods and services. Complainant claims to have spent close to one billion dollars worldwide in the promotion of its "Holiday Inn" marks alone.
Complainant owns and operates web-sites promoting and providing its services at "www.holiday-inn.com", "www.crowneplaza.com", and "www.intercontinental.com."
The "holidayinn" Domain Name
4.3 Ownership of the "holidayinn" domain name has been recorded at different times under different names. On January 29, 2001, the Registrant was recorded as: "Stealth Commerce", with an address in Nevada and a Nevada telephone number, and the Administrative, Billing and Technical Contact was Mark Townsend, with an e-mail address "email@example.com" (Complaint Annex B). On June 13, 2001, the owner's name was shown as "Organized Crime", with the same address, telephone number and Technical and Billing Contacts. On August 10, 2001, the owner was named as "Telmex Management Services", with an address in the British Virgin Islands. The Administrative, Billing and Technical Contact was named as Antoinne Rousseau, with the same Nevada telephone number and an e-mail address "telmex@sentbyemail" (Complaint Annex W).
4.4 The "holidayinn" domain name has been variously linked to sites offering adult hotel and vacation packages (Complaint Annexes F and Z), secretarial and escort services (Complaint Annexes M and P), and a travel, entertainment and retail portal (Complaint Annexes N and O).
The "crowneplaza" and "inter-continental" Domain Names
4.5 As at August 10, 2001, each of these domain names was registered to Respondent at a British Virgin Islands address, and showed the same Administrative, Billing and Technical Contact, the same Nevada telephone number and the same e-mail address as for the "holidayinn" domain name (Complaint Annex W).
4.6 The "crowneplaza" domain name is linked to the same secretarial and escort service as shown in Complaint Annexes M and P above (Complaint Annex AA and BB).
4.7 Letters of demand were sent by Complainant to Respondent in respect of the holidayinn domain name by mail (Complaint Annex G), by e-mail (Complaint Annex H), and by registered mail and e-mail (Complaint Annex J). Delivery was refused of the first letter. The second and third elicited responses from Mr. Mark Townsend on behalf of Stealth Commerce, stating respectively that he was "working on a global e-mail platform on behalf of ten leading hotel groups/operators", and "your claims contain a number of inaccuracies and I intend to exercise my legal rights and continued with the said domain address" (Complaint Annexes I and K).
4.8 No information is available with respect to Respondent, save for that which can be gleaned from the registration record and correspondence referred to above. The Panel notes, however, that Respondent has been the Respondent in, or associated with the Respondent in, at least eight other domain name disputes involving registration of domain names consisting of, or including, third party trademarks.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(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 in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties' Contentions
6.1 Each of the domain names is virtually identical and confusingly similar to Complainant's respective trademarks, which are instantly recognisable as the property of Complainant. The inclusion of the definite article "the" does not diminish or alter such recognition. Complainant cites in support of its contention WIPO Case No. D2000-0812, New York Life Ins. Co. v. Arunesh C Puthiyoth.
6.2 Respondent has no right or legitimate interest in any of the domain names. It was never licensed or authorised by Complainant to use any of the names and was not, either as Telmex, Organized Crime or Stealth Commerce, ever known by, or doing business under a name corresponding to any of the domain names. Complainant contends that Respondent has no interest in the domain names, other than for the purpose of commercial gain by misleading consumers and diverting them to its websites.
6.3 Respondent has registered and is using the domain names in bad faith. Complainant contends that Respondent is using the domain names intentionally to attract, for commercial gain, internet users to its web-site by creating a likelihood of confusion with Complainant's trade marks, as to the source, sponsorship, affiliation or endorsement of Respondent's web-sites. Complainant further contends that the linking of the domain names to adult oriented hotel and other services is closely akin to the use of the domain name for a pornographic site, and cites, inter alia, WIPO Case No. D2000-0102, Nokia Corp. v. Nokiagirls.com, for the proposition that such use is evidence of bad faith use and registration.
6.4 No Response has been filed.
7. Discussion and Findings
Identical or Confusingly Similar Trademark
7.1 The Panel accepts Complainant's contention that each of the domain names is confusingly similar to a trademark in which Complainant has rights. Complainant has clearly demonstrated such rights by reference to its many trade mark registrations and substantial promotion of each of the trade marks throughout the world. The addition of the prefix "the" does not diminish, and could even accentuate, the likelihood of confusion.
Rights and Legitimate Interests
7.2 Complainant has established a clear prima facie case of absence of Respondent's right or interest in any of the domain names. There is no apparent basis on which such right could be claimed by Respondent and Respondent has failed to rebut Complainant's prima facie showing.
Bad Faith Use and Registration
7.3 Once again, the Panel accepts Complainant's contentions in this regard. The deliberate adoption of Complainant's well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant's demonstrated use of the domain names to link to other service sites, including accommodation and vacation sites and adult services sites, demonstrates bad faith use. Having regard to the overlapping contact details, telephone numbers, addresses and personnel, the Panel is satisfied that the various names under which the "holidayinn", "crowneplaza" and "inter-continental" domain names have been registered, represent the same person or interests in the domain, and the Panel's finding of bad faith registration and use, and absence of legitimate right or interest is equally applicable at each stage in the history of the domain names. The Panel therefore finds that the domain names were registered and have been used in bad faith.
7.4 In this case there was a procedural error in that the Panel was not appointed within the time prescribed by Rule 6(b) of the Rules. This failure has in no way prejudiced the Respondent, and neither the Complainant nor the Respondent have raised objection. The Panel, therefore, in the exercise of the general powers conferred upon it by Rule 10, and the Direction contained in Rule 14(a), proceeds to its decision on the basis of the Complaint.
8.1 The Panel decides and orders that:
(i) Each of the domain names is confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in any of the domain names;
(iii) Each of the domain names was registered and is being used in bad faith; and
(iv) The domain names shall each be transferred to Complainant.
Dated: March 14, 2002