WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Leading Hotels of the World Ltd v. Interdynamic S.A.
Case No. D2001-1435
1. The Parties
The Complainant is The Leading Hotels of the World Ltd, a New York corporation with its principal place of business at New York, NY, U.S.A. The Complainant is represented by Abelman, Frayne & Schwab, Attorneys of New York, NY, U.S.A.
The Respondent is Interdynamic S.A., a Greek corporation with an address in Heraklion, Crete, Greece. The Respondent is represented by its Managing Director, Mr. Jimmy Sophios.
2. The Domain Names and Registrar
The domain names at issue are <worldleadinghotels.net>, <leading-hotels.net> and <greekleadinghotels.com>. The domain names are registered with Tucows Inc. of Toronto, Canada ("the Registrar"). The three names were first registered with the Registrar on June 11, 2000, June 15, 2001 and June 15, 2001 respectively.
3. Procedural History
The Complaint submitted by the above Complainant was received on December 7, 2001, (electronic version) and December 11, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On December 17, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain names at issue are registered with it.
- Confirm that the person identified as the Respondent is the current registrant of the domain names.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the building contact for the domain names.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name.
By email dated December 17, 2001, the Registrar advised WIPO Center as follows:
- It is the Registrar of the domain names in question.
- The Respondent is shown as the "current registrant" of the domain names. Mr. Jimmy Sophios is shown as the administrative and billing contact.
- The UDRP Policy is in effect.
- The domain name registrations are currently on "hold" status.
- The Registrar has currently incorporated in its agreements for Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain names in question are on "hold" status indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on December 18, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
- The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on January 6, 2002 (electronic) and January 6, 2002 (hard copy).
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Panelist in the case.
- The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
- On January 15, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by January 29, 2002.
- However, on January 17, 2002, the Center received an e-mail communication from the Complainant with a further statement in accordance with the UDRP Policy. The e-mail noted that in the Response dated January 5, 2002, the Respondent omitted the concluding statement required under Paragraph 5(b)(viii) of the Rules. The e-mail was forwarded to the Panel. The Panel therefore instructed WIPO Center to issue an order that the Respondent provide the concluding statement under Paragraph 5(b)(viii) of the Rules within 2 working days. No response was received from the Respondent.
4. Factual Background
(1) The Complainant is the registered owner of the following service marks in the United States of America registered by the United States Patent and Trademark Office under the Principal Register:
- THE LEADING HOTELS OF THE WORLD, Trademark Registration No. 1433355;
- THE LEADING HOTELS OF THE WORLD (SPECIAL SCRIPT), Trademark Registration No. 1516816;
- THE LEADING HOTELS OF THE WORLD (AND DESIGN), Registration No. 1520255.
The Complainant has registered and has applied to register as trademarks THE LEADING HOTELS OF THE WORLD, THE LEADING HOTELS OF THE WORLD (SPECIAL SCRIPT), THE LEADING HOTELS OF THE WORLD (AND DESIGN), THE LEADING SMALL HOTELS OF THE WORLD and THE LEADING HOTELS OF THE WORLD LUXURY ALLIANCE (AND DESIGN) collectively referred to as the LHW trademarks) throughout the world. In Greece, the Complainant has trademark registration for "The Leading Hotels of the World" and "The Leading Small Hotels of the World" plus two associated services marks.
The Complainant has used the mark THE LEADING HOTELS OF THE WORLD continuously since January 1976 in domestic, interstate and international commerce as a trademark to refer to its services in respect of hotel reservations, marketing, promotion and advertising. The Complainant has invested considerable sums in promoting the LHW trademarks. It actively monitors their use by member hotels in order to maintain a high-end brand image of hotels of consistent luxury standards.
As a result of its long domestic and international sales activities for 73 years, the Complainant has become well-known throughout the world, and in particular, in the luxury travel industry, in respect of its services offered under the LHW trademarks. The Complainant has received numerous awards and international recognition in the travel industry. The Complainant currently uses their LHW trademarks in approximately 380 member hotels in approximately 75 countries throughout the world, including Greece.
5. Partiesí Contentions
The domain names <worldleadinghotels.net>, <leading-hotels.net> and <greekleadinghotels.com> are identical or confusingly similar to the Complainantís LHW trademarks in terms of visual, phonetic and semantic reference in that they contain or otherwise incorporate the Complaintís registered trademarks. The addition of the word "Greek" in the domain name <greekleadinghotels.com> is not distinctive and acts only as a geographic reference in respect of the Complainantís LHW trademarks.
The Respondent has no rights or legitimate interests in respect of the domain names that are the subject of this Complaint because:
A. The Respondent was aware of the Complainantís rights in respect of the LHW trademarks and deliberately adopted the disputed domain names with the intent to trade-off the Complainantís goodwill and reputation in respect of its LHW trademarks. This is supported by the following facts:
(i) The Complainant has registered or applied to register and has used the LHW trademarks prior to the registration of the domain names. The Complainant is well-known throughout the world in association with the LHW trademarks, and in particular, in the luxury travel industry.
(ii) The domain names <leading-hotels.net> and <greekleadinghotels.com> link to the domain name <worldleadinghotels.net>. The domain name<worldleadinghotels.net> is used to refer to an active website for online hotel travel reservations and membership services in respect of hotel reservations. These services which are also offered on the Complainantís website at <lhw.com>.
(iii) The content of the Respondentís website at <worldleadinghotels.net> uses the Complainantís trademarks THE LEADING HOTELS OF THE WORLD and THE LEADING SMALL HOTELS OF THE WORLD on the web page at the domain name <worldleadinghotels.net>. This use of Complainantís marks is unauthorized.
(iv) The content of the Respondentís website at <worldleadinghotels.net> uses similar language to refer to its membership services as the Complainant does for the same or similar services referred to on the Complainantís website at <lhw.com>, which was registered on July 16, 1996.
(v) The content of the Respondentís website at <worldleadinghotels.net> uses identical pictures to depict the hotels as the Complainant uses on its website at <lhw.com> and in its trade directories and other promotional material for the same or similar services.
B. The Respondent is not commonly known as or otherwise uses as a company, business or trade name the domain names the subject of their Complaint. The Respondent registered the domain name in question after the Complainantís mark was registered and well-established.
The Respondent is using the domain names <worldleadinghotels>, <leading-hotels.net> and <greekleadinghotels.com> for commercial gain at the expense of the Complainantís accrued goodwill in respect of their LHW trademarks and with the intent misleadingly to divert consumers. The Respondent requests a fee for its customer membership services and thus usurps the reservation commission systems of the Complainant for the same or similar services.
C. The domain names <worldleadinghotels.net>, <leading-hotels.net> and <greekleadinghotels.com> have been registered and are being used in bad faith for the following reasons:
(a) the domain names <leading-hotels.net> and <greekleadinghotels.com> link to the domain <worldleadinghotels.net>. The domain name <worldleadinghotels.net> is being used as at the time of filing this Complaint to refer to a web page which provides: (a) online hotel reservation services; and (b) offers, for a fee, customer membership services in respect of hotel reservation services.
(b) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website and the products and services offered on the website.
(c) The Complainant initially became aware of the Respondentís registration of the domain name <worldleadinghotels.net> on or about July 19, 2001. The Complainant wrote to the Respondent on August 30, 2001 and requested it cease use of THE LEADING HOTELS OF THE WORLD and THE LEADING SMALL HOTELS OF THE WORLD and cancel or assign the domain name <worldleadinghotels.net>. The Complainant requested a response on October 1, 2001. No response from the Respondent has been received.
(d) Since August 31, 2001 the Respondent has increased the scope of its activities under the domain name <worldleadinghotels.net> in respect of its online hotel reservation services by: (a) including additional countries in which they offer online hotel reservation services, and (b) including additional hotels.
(e) The Respondentís domain names link to a website which uses the Complainantís registered trademarks "THE LEADING HOTELS OF THE WORLD" AND "THE LEADING SMALL HOTELS OF THE WORLD". The website also uses the following terms which are identical or confusingly similar to the Complainantís registered trademarks: "International Leading Hotels of the World", "The Best Luxury Hotels of the World", "The Great Hotels of the World" and "The Finest Hotels of the World".
The use of the Complainantís LHW trademarks, and numerous expressions are identical or confusingly similar to the complainantís LHW trademarks, is intentional deception of consumers seeking to show that the Respondentís website is, or is affiliated with, the Complainant.
The content of the Respondentís website at <worldleadinghotels.net> gives a description of the membership services similar to the description given by the Complainant at its website at <lhw.com> for the same or similar services and uses identical pictures to depict hotels in respect of the same or similar services offered by the Complainant.
(f) The content of the website refers to the Complainant but does not refer to the Complainantís hotel reservation or membership services. For example, the website states:
"The Elite Membership Card (that you will soon receive after you sign up), gives you extra privileges in each Hotel you visit, such as special discounts to the hotelís services and facilities. The hotels of this site are members of the best international hotel associations such as "The Leading Hotels of the World, LtdÖ"
This statement on the website suggests that the hotel reservation services offered by the Respondent at their website are those of the Complainant or otherwise have the sponsorship, affiliation or endorsement of the Complainant.
(g) The Respondentís membership services offered at the website at <worldleadinghotels.net> are deliberately designed to deceive consumers that such services are those of or associated with the Complainant in respect of the Complainantís services offered under their LHW trademarks. The Respondent fails to state the membership services organization involved and merely offers customers an opportunity to become a "member".
(h) The Respondentís services offered at the website at <worldleadinghotels.net> are intentionally designed to trade-off the goodwill of the Complainant in respect of the Complainantís LHW trademarks and profit therefrom. There is no indication of the Complainantís services offered under the LHW trademarks or any link to the Complainantís website. By taking online hotel reservations and requesting membership fees the Respondent is attempting wrongfully to gain from the reputation of the Complainant in respect of its LHW trademarks.
The Respondent has used the disputed domain names primarily for the purpose of disrupting the business of a competitor and improperly profiting from their goodwill. The domain name <worldleadinghotels.net> is used for the same or similar services of the Complainant. The website allows a visitor to review a hotel by reference to the Complainantís LHW trademarks and make hotel reservations online. By using the Complainantís LHW trademarks and trademarks identical or confusingly similar thereto the Respondent is attempting to divert customers from the Complainant and profit therefrom.
The use of the LHW trademarks by the Respondent is unsupervised. The Complainant has established a high brand image in respect of their LHW trademarks and actively maintains and monitors standards for the use of the LHW trademarks by member hotels. Hotels which fail to meet the standard of luxury in respect of their hotel services are unable to use the LHW trademarks.
The unsupervised use of the LHW trademarks by the Respondent on the website at <worldleadinghotels.net> may dilute and tarnish the reputation and high brand image of the LHW trademarks and otherwise injure the Complainantís customers and member hotels.
The holder of a trade name, registered at the Board of Trade, has the right to file for a domain name. This just does not guarantee the use of a domain name through the internet if the holder of the trade name has not registered it as a domain name.
Respondent has been in the travel agency business for 30 years, providing services to the top end of the market. Part of the service involves informing clients about what hotels are available, including hotels that are members of associations such as the Complainantís. Respondent operates a number of domain sites for various categories in the travel business. Respondent claims the right to categorize and organize products under relative sites as the best way of providing information to customers. The hotels involved authorize information about themselves including photographs being displayed on the internet.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain names; and
- The domain names have been registered and used in bad faith.
The domain name <worldleadinghotels.net> is obviously confusingly similar to the Complainantís marks "The Leading Hotels of the World".
The domain name <leading-hotels.net>, although it does not specify a global coverage, is also confusingly similar to the Complainantís marks. The words "leading hotels" indicate "leading hotels" anywhere in the world.
The domain name <greekleadinghotels.com> is in a slightly different category. However, the Panel considers that the domain name is confusingly similar in that it indicates a particular country subset of leading hotels of the world. In other words, an internet user, interested in accessing detail on the Greek hotels included under the "Leading Hotels of the World" banner, would think that the "leading hotels" of Greece had been placed in a separate website to save the user facing a list of numerous country sites. Similar views were reached in other WIPO decisions, e.g:
(a) British Broadcasting Corporation v Renteria (D2000-0050 Ė trademark BBC, offending domain names <bbclondres.com>, <bbcespanol.com>).
(b) AT&T Corp v WorldclassMedia.com (D2000-0553, trademark AT&T, offending domain names <attmexico.com> and <att-latinamerica.com>).
(c) Axel Springer Verlaq A.G. v Fritsche (D2000-1335, trademark BILD, offending domain name <bild-dominicanacom>).
In each of these decisions, with which the Panel respectfully agrees, there was a geographical word alongside a well-known mark. This addition does not sufficiently or necessarily distinguish the domain name from the brand in the mind of consumers. In the present case, consumers of high-quality accommodation products would assume an association with the Complainant of a domain site for the leading hotels of a particular country which is a well-known tourist destination, i.e. Greece.
The Response demonstrates a lack of appreciation of the Policy when it refers to a registered trade name not guaranteeing the right to use that trade name as a domain name. The Policy is concerned with the rights of holders of trade and/or service marks not to have those marks reflected in domain names with which they have no connection. The Complainant owns marks: this fact entitles it to bring proceedings under the Policy and which have been acquired and are being used in bad faith.
The Respondent was given no right to use the names in any way by the Complainant. It is actively using the Complainantís marks in its websites without any authority from the Complainant. It offers similar services to the Complainant and uses identical images for hotels as does the Complainant. Moreover, the domain names <leading-hotels.net> and <greekleadinghotels.com> link to the domain name <worldleadinghotels.net>. Since August 31, 2001, Respondent has added further hotels to its website for which it will take reservations. The Complainant has therefore proved the second criterion primarily for the reasons enunciated in the Complainantís submissions which are accepted by the Panel.
Obviously, as a travel agent for 30 years, the Respondent knew of the Complainantís marks at the time of registration of the disputed domain names. Since then, it has blatantly and actively used the Complainantís marks on its websites, as well as in some of its marketing strategies. The potential for confusion and diversion of customers is obvious. Moreover, there is a grave risk of tarnishment of the marks from such unauthorized use, given the Complainantís concerns to maintain quality standards amongst the hotels in its portfolio.
In the view of the Panel, bad faith registration and use is convincingly proved in this case. Another reason for that finding lies in the Respondentís disregard of the Complainantís "cease and desist" letter. The Respondent has offered no explanation for not replying.
For the foregoing reasons, the Panel decides:
(a) That the domain names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) The Respondentís domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <worldleadinghotels.net>, <leading-hotels.net> and <greekleadinghotels.com> be transferred to the Complainant.
Hon. Sir Ian Barker Q.C.
Dated: January 28, 2002