WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Leading Hotels of the World Ltd. v. Online Travel Group
Case No: D2002-0241
1. The Parties
1.1. This Complaint was filed by The Leading Hotels of the World, Ltd. a corporation organized and existing under the laws of the State of New York with a principal place of business at 99 Park Avenue, New York, New York, 10016-1601, United States of America ("Complainant").
1.2. The Respondent is Online Travel Group, 32 Chestnut Drive, Hout Bay, ZA 7806, South Africa ("Respondent").
2. The Domain Names and Registrar
2.1. The domain names the subject of this Complaint are <leadinghotelsworldwide.com>, <leadinghotels.com> and <leading-hotels-worldwide.com> (collectively "domain names").
2.2. The registrar of these domain names is Domain Bank, Inc. of Bethlehem, Pennsylvania, United States of America ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. On March 13, 2002, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on March 13, 2002 and the copy of the Complaint submitted by courier was received on March 15, 2002. An Acknowledgement of Receipt of Complaint was sent by the WIPO Center to the Complainant by email on March 19, 2002.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on March 20, 2002. By email to the WIPO Center on the same day, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the registrar of the domain names the subject of this Complaint; confirmed that the current registrant of those domain names is the Respondent, and provided a postal contact address for the Respondent; provided the name, email, and postal addresses, of the Administrative, Technical and Zone contact of the registrant, Colette Bellier; confirmed that the Uniform Policy applies to the domain names the subject of this Complaint; informed that the current status of the domain names is "active"; and stated that the service agreement between it and the registrant is in the English language.
Notification to Respondent
3.3. On April 3, 2002, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier to the postal address of the Respondent and by email to the email address of the Respondentís contact, Colette Bellier, as provided by the Registrar. This Notification stated that the date for filing a Response to the Complaint was April 23, 2002. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date. Records of the WIPO Center show that the emails to the Respondentís Contacts were delivered.
3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Request for Extension of Time for Filing of Response
3.5. On April 4, 2002, Ms Colette Bellier, the Respondentís contact, sent an email to the WIPO Center stating that she was then on holiday in Mauritius, that she would not have access to the documents necessary to forward to her legal adviser in the USA until her return to her office on April 9, 2002, and requesting an extension of time in which to file a Response. In that email Ms Bellier refers to a telephone conversation with the WIPO Centerís case manager on March 22, 2002.
3.6. By email to the Complainant of April 4, 2002, the WIPO Center invited the Complainant to express a view on the Respondentís request for an extension of time in which to file a Response. On April 5, 2002, the Complainant by email to the WIPO Center expressed the following views. First, it was concerned at the apparent delay of the WIPO Center in determining whether the Complaint complied with the formal requirements of the Uniform Policy. Secondly, it had been unfairly prejudiced by this delay, because subsequent to receipt of the Notification of Complaint the Respondent had amended the title page of the website at www.leadinghotels.com to include a disclaimer to the effect that the Respondent was not associated with the Complainant. Thirdly, that the Respondent had had sufficient time to review the grounds of the Complaint, and as such the Respondentís request for an extension of time to file a Response does not fall within the requirement of "exceptional cases" as provided in rule 5(d) of the Uniform Rules permitting extensions of time. Fourthly, in view of the Respondentís amendment to the content of the website, the Respondentís request for an extension was further evidence of the Respondentís bad faith. Fifthly, taking into account the time period (namely, five days from receipt of the Complaint) specified in the WIPO Centerís Supplemental Rules ("Supplemental Rules") for serving the Notification of Complaint, the date by which the Respondent was required to file a Response should have been April 9, 2002. Sixthly, the Respondent should be granted an extension to file a Response no later than April 23, 2002 subject to various conditions, including that this communication form part of the pleadings in this Complaint without subject to word limit and that an explanation be provided for the delay in serving the Notification of Complaint.
3.7. By email to the Respondent dated April 5, 2002, the WIPO Center informed the Respondent that the request for an extension of time in which to file the Response was denied and that the date by which a Response was due remained April 23, 2002.
Complainantís Concerns Regarding Case Administration
3.8. By letter sent by email, facsimile and post to the WIPO Center on April 8, 2002, the Complainant expressed the following concerns. First, Ms Bellierís telephone communication to the WIPO Center was in breach of rule 2(a) of the Uniform Rules specifying the mode of communications and rules 2(h)(ii) and (iii) of the Uniform Rules requiring copying of communications to the other party. Secondly, the Notification of Complaint was not served on the Respondent within the time period specified in the Supplemental Rules. Thirdly, that the management of the case created an appearance of prejudice in favor of the Respondent. Fourthly, the WIPO Center should provide to the Complainant certain information, including an explanation for the delay in serving the Notification of Complaint and details of the telephone conversation between Ms Bellier and the WIPO Center on March 22, 2002. Fifthly, that this communication be provided to the relevant panelist.
3.9. By email to the WIPO Center dated April 8, 2002, the Respondent expressed the view that, putting aside the issue of whether Ms Bellierís telephone call to the WIPO Center violated the Supplemental Rules, that conduct was de minimus.
3.10. By letter sent to both parties by email on April 9, 2002, the WIPO Center responded to the communications on this issue as follows. First, it expressed its regret about the delay in serving the Respondent the Notification of Complaint. Secondly, it explained that the telephone call received from the Respondent by the WIPO Centerís case manager essentially was confined to a brief explanation of the procedure to which a Respondent under the Uniform Policy must submit. As such, the call did not contain any elements that, in the opinion of the WIPO Center, might cause prejudice or merit specific description. In particular, the WIPO Center did not interpret the call as a formal request for extension and indeed such extension was never granted. Thirdly, it confirmed that the communications between the WIPO Center and the parties will form part of the procedural record of the case and will be forwarded to the administrative panel, when appointed, for consideration.
Filing of Response
3.11. By email received on April 23, 2002, and by courier received on April 26, 2002, the Respondent sent to the WIPO Center a Response.
Constitution of Administrative Panel
3.12. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On
April 26, 2002, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that
Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by May 10, 2002. The case before this Administrative Panel was conducted in the English language, this being the language of the registration agreement applicable to the domain name in issue.
Submissions Subsequent to Filing of Response
3.13. On May 7, 2007, the Complainant sent to the WIPO Center, and copied to the Respondent, a "Further Statement". In this document the Complaint responds to various aspects of the Response and requests this Administrative Panel to exercise its discretion to include this Further Statement as part of the pleadings in this case. By email dated May 8, 2002, the WIPO Center responded to the Complainant as follows:
"No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Accordingly, the Administrative Panel will be informed of the fact of the Centerís receipt of this Supplemental Filing and it will be in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any."
3.14. By email dated May 8, 2002 the Respondent sent to the WIPO Center a "Statement in Response" to the Complainantís Further Statement. In this document the Respondent requests that the Complainantís Further Statement be rejected as it is not authorized by the Uniform Policy or the Uniform Rules. In addition, the Statement in Response requests that the Administrative Panel, if it decides to consider the Further Statement, consider also the Respondentís statements in reply to the Complainantís Further Statement, as set out in the Statement in Response.
3.15. This Administrative Panel agrees with the view expressed by numerous other panels to the effect that parties must refrain from submitting unsolicited further pleadings, that parties should only submit further pleadings upon request for such from the panel, and that further pleadings should be requested by the panel in exceptional cases only - see, eg, the Interim Order (No. 1) in Gordon Sumner, p/k/a Sting v Michael Urvan, WIPO Case No. D2000-0596 and the cases cited therein. As a general rule, unsolicited further pleadings should be ignored by the panel. In this case, however, this Administrative Panel has read and taken into account both the Complainantís Further Statement and the Respondentís Statement in Response. It has done so because, as discussed above and below, the Complainant has expressed the concern that an aspect of the way this case has been administered may have been prejudicial to it. Although this Administrative Panel has found no basis for this concern, the Panel felt it was prudent to give the Complainant the fullest reasonable opportunity to make its case.
3.16. Having read and considered both the Further Statement and the Statement in Response, this Administrative Panel has concluded that, as is usually the case with unsolicited subsequent submissions, these two documents did not add anything of substance to the issues and facts addressed in the Complaint and the Response.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.17. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
3.18. This Administrative Panel has given close consideration to the concerns of the Complainant regarding the administration of this case. The essence of the Complainantís concern appears to be that the reason for the delay in serving the Notification of Complaint is that some understanding as to an "informal" extension of time was reached between the WIPO Center and Ms Bellier as a result of Ms Bellierís telephone call to the WIPO Center on March 22, 2002. While in theory it is not impossible to draw such an implication from the fact that the WIPO Center has not explained the reason for the delay, the Panel does not share the Complainantís concern. The WIPO Center in its letter to the parties of April 9, 2002, provided an express and specific declaration that Ms Bellierís telephone call did not contain elements that might cause prejudice to the Complainant, that the WIPO Center did not interpret that call as a request for an extension, and that the WIPO Center did not grant an extension. There is nothing in the record that casts doubt on this declaration. Accordingly, there are no grounds for the Panel to come to any other conclusion.
3.19. Nevertheless, this Panel is concerned to ensure that no prejudice apply, or been seen to have possibly applied, to any party in a proceeding under the Uniform Policy. Accordingly, this Panel has considered whether there would have been any prejudice to the Complainant if it were the case that the WIPO Center had granted an informal extension to the Respondent through the means of delaying service of the Notification of Complaint. It has concluded that there would not have been any such prejudice. The essential prejudice which the Complaint appears to be alleging is that the delay in serving the Notification of Complaint provide the Respondent with time to insert a disclaimer on the title page of the website at www.leadinghotels.com subsequent to the filing of the Complaint and prior to filing of the Response. This Panel is clear that such an action has not and could not prejudice the Complainant. As the Complainant itself pleads, amendment of a website subsequent to the filing of a complaint will not exonerate the Respondent from a finding of bad faith if bad faith is established by acts prior to the filing of the Complaint. Accordingly, even assuming that the Respondent was provided with an informal extension by virtue of the WIPO Centerís delay in serving the Notification of Complaint (which is a conclusion that this Panel does not adopt), that extension would not have prejudiced the Complainant.
Extension of Time for Providing a Decision
3.20. Given the further deliberations required of this Administrative Panel in light of the Complainantís concerns of prejudice and the receipt of unsolicited further submissions from both parties, by two notices to the parties this Panel extended the time for providing a decision to May 28, 2002.
4. Factual Background to this Complaint
Complainantís Activities and Trademarks
4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. 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 (copies of the Certificates of Registration in respect of which are provided as Exhibit 3 to the Complaint):
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), Trademark Registration No. 1520255
4.2. The Complainant has registered and applied to register 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 AND LUXURY ALLIANCE (AND DESIGN) (collectively referred to as the "Complainantís trademarks") throughout the world. The Complainant currently uses and has registered the Complainantís trademarks in approximately 77 countries throughout the world, including South Africa, and uses the Complainantís trademarks in respect of approximately 395 member hotels.
4.3. The Complainant has used THE LEADING HOTELS OF THE WORLD since January 1976, continuously to the present as a trademark to refer to their services in respect of hotel reservation and hotel marketing, promotion and advertising. The Complainant also uses the Complainantís trademarks on their web site at www.lhw.com. An example of pages from the web site at www.lhw.com downloaded on March 7, 2002 is provided as Exhibit 4 to the Complaint. In addition, the Complainant has used THE LEADING HOTELS OF THE WORLD as their company and trade name since 1983. A true and correct copy of the Certificate of Amendment of the Certificate of Incorporation in respect of The Leading Hotels of the World, Ltd. is provided as Exhibit 5 to the Complaint.
4.4. The Respondent asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Respondent was founded in May 1997, by Colette Bellier under the name South African Hotels. Two months later, in July 1997, the name was changed to Internet Hotel Guides ("IHG"). The company operated under the name IHG until August 2001, when Ms Bellier applied for a change of name to Online Travel Group (OTG). This was done to reflect the broader services that were being offered and to consolidate IHGís various websites. The change of name to OTG was registered in October 2001.
4.5. In May 1997, when IHG was first formed, Ms Bellier began preparations to provide travel services online. One month later, in June 1997, and in anticipation of the travel related services that she intended to provide, she registered the domain name <leading-hotels.com> along with a number of other descriptive domain names such as <cuban-hotels.com>, <chinese-hotels.com>, <southafrican-hotels.com>, <cubanhotels.com>, <chinesehotels.com>, <southafricanhotels.com> and <frenchhotels.com>. The domain name <leading-hotels.com> was registered on June 24, 1997. A page from a report listing some of IHG's domain name registrations in 1997, along with certificates of registration for some of these early domain names are attached as Exhibit 3 to the Response.
4.6. After registering <leading-hotels.com>, Ms Bellier began preparations to create a website using that domain name. In July 1997, the home page for the Leading Hotels website, which announced the arrival of a new site under the <leading-hotels.com> domain name, launched. Copies of this home page are attached as Exhibit 5 to the Response. On September 25, 1997, -- after IHG had already launched the home page for the Leading Hotels website -- IHG received a demand letter from the Complainant claiming that IHG's registration of <leading-hotels.com> infringed its rights in "THE LEADING HOTELS OF THE WORLD." By letter dated October 9, 1997, IHG responded to the Complainant's letter, denying any claims of infringement. A copy of IHG's response is attached as Exhibit 6 to the Response. The Leading Hotels website was not fully functional until late November 1997. At that time, it provided links to IHG's French satellite site (which also launched in or about November 1997) and anticipated South African and Chinese hotel sites. IHG included a disclaimer on the Leading Hotels site which stated that the site had "no affiliation with The Leading Hotels of the World." Printouts from the Leading Hotels website as it appeared in November and December 1997 are attached as Exhibit 7 to the Response.
4.7. On May 14, 1998, IHG registered <leadinghotels.com> and used that domain name to point to its Leading Hotels website. In December 2000, the Complainant wrote a second letter to IHG in which it complained of IHG's use and registration of the <leadinghotels.com> and <leading-hotels.com> domain names. As before, IHG responded to the Complainant's letter stating that the Complainant's allegations were meritless and that IHG had legitimate rights to the domain names at issue. A copy of IHG's letter is attached as Exhibit 8 to the Response.
4.8. IHG used the <leading-hotels.com> and <leadinghotels.com> domain names in connection with its Leading Hotels website until sometime in April or May 2001, when the site was temporarily removed while IHG undertook the integration of 50,000 new hotels into the site's database. During this integration, the programming and functionality of the site had to be modified to include the new hotel content. Consequently, for a period of about three months, the <leading-hotels.com> and <leadinghotels.com> domain names were pointed to one of IHG's satellite sites while the scripts, database and html pages for the site were modified. This way, users were able to access some of the hotels available at the time. The Leading Hotels website relaunched sometime in May/June 2001. The revised website contained access to over 77,000 hotels worldwide and 27 satellite sites. On May 30, 2001, around the time of the relaunching of IHG's Leading Hotels website, IHG registered the additional domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>. These domain names were also used to point to the Leading Hotels website.
4.9. In September 2001, the domain name <leading-hotels.com> along with several other domain names inadvertently lapsed when the domain names were incorrectly transferred from one registrar to another. Before IHG could remedy the situation, the domain name was purchased by the Complainant.
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain names the subject of this dispute.
5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that domain names <leadinghotelsworldwide.com>, <leadinghotels.com> and <leading-hotels-worldwide.com> are identical or confusingly similar to the Complainantís trademarks in terms of visual, phonetic and semantic reference in that they contain or otherwise incorporate the Complainantís registered trademarks, consistent with the decision in The Leading Hotels of the World, Ltd. v Interdynamic, S.A., WIPO Case No. D2001-1435. Further, both the Complainant and the Respondent operate in the same industry and use the Internet to advertise and conduct their business activities. The use of the heading "Leading Hotels.com" and the similarity of the services offered by the Respondent on the web sites at <leadinghotelsworldwide.com>, <leadinghotels.com> and <leading-hotels-worldwide.com> is intended, and is likely, to mislead or deceive consumers that the web sites are those or associated with the Complainant and the Complainantís services offered under the Complainantís trademarks, consistent with the decision in Slep-Tone Entertainment Corporation D/B/A Sound Choice Accompaniment Tracks v Sound Choice Disc Jockeys, Inc., NAF Case No. FA#2002000093636.
5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent was aware of the Complainantís rights in respect of the Complainantís trademarks prior to any notice of this dispute, and registered and commenced use of the domain names after, and as a result of, being advised of the Complainantís rights in respect of the Complainantís trademarks. In addition, the Respondent is not commonly known by, now or at any time previously, or otherwise uses, as a personal, company, business, partnership or trade name the domain names. Further, the Respondent is using the domain names for commercial gain at the expense of the Complainantís goodwill in respect of the Complainantís trademarks and with the intent to divert customers.
5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends as follows. First, at the time of registration of the domain names, the Respondent had knowledge of the Complainantís use and rights in respect of the Complainantís trademarks and was aware of, or should have been aware, that the registration of the domain names was an infringement upon or otherwise violated the rights of the Complainant. The onus rests on the Respondent to determine if their domain name registration infringes or violates the rights of a third party. Secondly, the Respondent has registered the domain names in order to prevent the Complainant from reflecting the Complainantís trademarks in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. Thirdly, the Respondent deliberately targeted the Complainant and the Complainantís rights in respect of the Complainantís trademarks with the intent to prevent the Complainant from registering the same. Fourthly, the Respondent has registered the domain names primarily for the purpose of disrupting a business competitor. Fifthly, that by using the domain names in issue, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliate or endorsement of the web site and the products and services offered on the web site. In view of the well-established use of the Complainantís trademarks and the widespread recognition of the Complainantís services as "The Leading Hotels", the Respondent is intentionally attempting to pass themselves off or otherwise create an association in the minds of consumers that the services offered under the domain names are those of, or otherwise associated with, the Complainant and the Complainantís services in respect of the Complainantís trademarks.
5.5. The Respondent contends that none of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.6. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Respondent contends as follows. First, any claim of exclusive rights in the term "LEADING HOTELS" by the Complainant is baseless. That term is descriptive, if not generic, for top or "leading" hotels or hotel groups. Thus, it is available to others in the trade for use in connection with their own goods or services without violating anyone's trademark rights. Secondly, the domains names are clearly not identical with the Complainantís trademarks. Thirdly, the domain names are not confusingly similar to the Complainantís trademarks. The domain name <leadinghotels.com> (which is purely descriptive) creates a different commercial impression than the longer phrase THE LEADING HOTELS OF THE WORLD (which the Complainant contends is associated with it). Moreover, with respect to <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>, the descriptive "worldwide" portion of those domain names is also different from the descriptive "of the world" portion of the Complainantís trademarks. Moreover, the Respondent uses the descriptive terms "leading hotels" and "leadinghotelsworldwide" in the domain names only in conjunction with its company name; the home page of OTG's website clearly states that it is "an ONLINE TRAVEL GROUP Site."
5.7. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Respondent contends as follows. First, it has legitimate rights and interest in and to the domain names, which it developed prior to receiving notice of this dispute. The Respondent has been offering worldwide hotel and lodging reservation services under the Leading Hotels service mark since 1997. At that time it was using the domain name <leading-hotels.com>. The domain name <leadinghotels.com> is not qualitatively different from <leading-hotels.com> and was registered after the Respondent had already developed rights in the LEADING HOTELS service mark. In addition, the domain names <leadinghotelsworldwide> and <leading-hotels-worldwide> similarly reflect and are used in connection with OTG's worldwide hotel reservation services. Secondly, the fact that it knew about the Complainant prior to registering <leadinghotels.com>, <leadinghotelsworldwide> and <leading-hotels-worldwide> does not detract from the Respondentís rights. The Respondent was already using the service mark LEADING HOTELS and sought to acquire additional descriptive domain names. Moreover, as stated in its letters to the Complainant, the Respondent was not infringing any of the Complainantís rights.
5.8. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Respondent contends as follows. First, the domain names were not registered in bad faith. The Respondent registered the domain names in order to use them in connection with its online travel services. The Respondentís formation and preparations to begin offering online travel services predated the Complainantís demand letter by three months. Moreover, the Respondent responded to the Complainant's letter, indicating that it had developed rights in the <leading-hotels.com> domain name and that it was not infringing the Complainantís mark. The Respondent then continued to build and expand its business through the use of the LEADING HOTELS service mark and corresponding domain names. Secondly, the Respondent did not register the domain names to prevent the Complainant from using its mark in a domain name. Because the domain names are not identical to Complainantís mark, there is nothing preventing the Complainant from registering its mark in its corresponding domain name form. Thirdly, the Respondent did not register or use the domain names in issue to trade on the Complainant's goodwill. Rather, it secured the domain names to use them in connection with its own online travel and hotel services. Fourthly, the Respondentís use of the domain names has always been bona fide. They have always been used in connection with the Respondentís online services. During brief intervals, <leading-hotels.com> was diverted to certain satellite sites while upgrades and maintenance were being performed. The Respondentís registration and use of the domain names at issue has always been in connection with the development and expansion of its services.
6. Discussion and Findings
(a) Domain Names Identical or Confusingly Similar to Complainantís Mark
6.1. In relation to the domain name <leadinghotels.com>, the relevant part is "leadinghotels". All of the Complainantís trademarks contain substantive words additional to the words of this domain name, namely "the" (which, in this instance at least, has a substantive operation) and "of the world" (which clearly have substantive operation). It is plain, therefore, that this domain name is not identical to any of the Complainantís trademarks.
6.2. The Complainant was the Complainant in The Leading Hotels of the World, Ltd. v Interdynamic, S.A., WIPO Case No. D2001-1435. The Complainantís trademarks are the same as those in that earlier case. Further, the domain name <leadinghotels.com> is essentially identical to one of the domain names in issue in that earlier case - <leading-hotels.net> - since the presence or absence of a hyphen between "leading" and "hotels" is of no substance. The learned panelist in WIPO Case No. D2001-1435 found that <leading-hotels.net> was confusingly similar to the Complainantís trademarks, for the following reason.
"The domain name <leading-hotels.net>, although it does not specify a global coverage, is Ö confusingly similar to the Complainantís marks. The words "leading hotels" indicate "leading hotels" anywhere in the world."
6.3. This Administrative Panel is of the view that, as general rule, it is desirable to have conformity with the decisions of earlier panels in relation to the same or closely similar facts. Accordingly, in considering whether the domain name <leadinghotels.com> is confusingly similar to any of the Complainantís trademarks, the conclusion of the panelist in WIPO Case No. D2001-1435 has been given weight. Nevertheless, the fact is that this Panel is inclined to a different view on the issue of whether <leadinghotels.com> is confusingly similar to the Complainantís trademarks. However, given the conclusion reached by this Panel on the issues of the Respondentís legitimate interest and bad faith, it is not necessary for this Panel to reach a decision on this matter.
(ii) <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>
6.4. In relation to the domain names <leadinghotelsworldwide> and <leading-hotels-worldwide>, the relevant parts are "leadinghotelsworldwide" and "leading-hotels-worldwide", respectively. The presence of the hyphens between the words in the second of these domain names is not substantive. Accordingly, no distinction is drawn between these two domain names for the purposes of deciding the issue of identicality and confusing similarity.
6.5. The domains names lack the word "the" and have the word "worldwide" in place of the words "of the world". Accordingly, these domain names are not identical to any of the Complainantís trademarks.
6.6. In considering whether these domain names are confusingly similar to any of the Complainantís trademarks, note is taken of the fact that the phrase "leading hotels worldwide", like the phrase "leading hotels of the world", is descriptive. Nevertheless, that phrase, like the phrase of the Complainantís trademarks, does appear to have some distinctiveness, and thus some capacity to act as a trademark. Thus, when consumers see the phrase "leading hotels worldwide", there is the potential for them to think that the person using this phrase is somehow associated with the Complaint. However, the magnitude of this potential (ie the likelihood of this occurring) is not obvious, since the phrase is also quite descriptive. Although the issue is finely balanced, this Administrative Panel has concluded that the domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide> are confusingly similar to the Complainantís trademarks.
(b) Respondentís Rights or Legitimate Interests in the Domain Names, and Domain Names Registered and Used in Bad Faith
6.7. From late 1997, the Respondent used the domain name <leading-hotels.com> (not a domain name the subject of this dispute) to point to a number of its accommodation-related websites. Thus, it is prima facie plausible for the Respondent to claim that it developed a legitimate interest in the effectively identical domain name <leadinghotels.com> when, in early 1998, it registered that domain name and used it to point to its accommodation-related websites.
6.8. On the issue of whether the Respondent registered and is using the domain name in bad faith, this Panel considers the very nature of the domain name to be significant. This Panel is inclined to the view that the phrase "leading hotels" is highly descriptive, is not distinctive, and thus on its own would not be capable of acting as a trademark. Such a view is consistent with the fact that the Complainant does not claim trademark rights in the phrase "leading hotels", and indeed in its Further Statement expressly disclaimed exclusive rights to this phrase. This Panel believes that when a consumer sees the phrase "leading hotels", the consumer thinks of hotels that are leading - ie. of high quality and/or renown. The consumer does not think of the phrase as acting as a trademark, and so the consumer is not confused into thinking that the person using the phrase is somehow associated with the Complainant. Thus, although there is undoubtedly some similarity between the domain name and the Complainantís trademarks, this Panel believes the Respondentís use of the domain name is not an intentional attempt to attract Internet users to its websites by creating a likelihood of confusion with the Complainantís trademarks. Accordingly, there is no bad faith pursuant to paragraph 4(b)(iv) of the Uniform Policy.
6.9. For similar reasons, this Panel believes the Respondentís primary purpose in registering the domain name was not to disrupt the business of the Complainant. Rather, the Respondentís primary purpose in registering the domain name appears to be to take advantage of its descriptiveness and hence its suitability as a domain name for the Respondentís accommodation-related websites. Accordingly, there is no bad faith pursuant to paragraph 4(b)(iii) of the Uniform Policy.
6.10. The Complainantís contention that the Respondent registered the domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name was adequately rebutted by the Respondentís observation that "leading hotels" is not one of the Complainantís trademarks. Accordingly, there is no bad faith pursuant to paragraph 4(b)(ii) of the Uniform Policy.
6.11. The Complainant did not contend that Respondentís bad faith is established by circumstances of the type specified in paragraph 4(b)(i) of the Uniform Policy. Further, this Panel finds there is no other evidence that establishes bad faith on the part of the Respondent. Accordingly, this Panel concludes that the Complainant has not discharged the burden of proving that the Respondent registered and is using the domain name <leadinghotels.com> in bad faith.
(ii) <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>
6.12. The position in relation to the domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com> is less clear. On December 4, 2000, the Complainant wrote to the Respondent objecting to the Respondentís registration and use of the domain names <leading-hotels.com> and <leadinghotels.com>. This Administrative Panel considers this letter constituted notice to the Respondent of this dispute. Approximately six months later, the Respondent registered the domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>. The use to which the Respondent has put these domain names is use that is subsequent to its notice of this dispute. The Respondent has not established that it has been commonly known by these domain names or that it is making a legitimate noncommercial or fair use of the domain names. Given that these domain names are confusingly similar to the Complainantís trademarks, and that the Respondent had knowledge of these trademarks and the existence of this dispute prior to registering these domain names, this Panel concludes that the Respondent does not have a right or legitimate interest in the domain names.
6.13. The issue whether the Respondent registered and is using the domain names in bad faith is very finely balanced. Although the matter is not without some doubt, this Panel has concluded that the Respondent did register and is using those domain names in bad faith, in the sense in which that concept is used in the Uniform Policy. The Respondentís registration of these confusingly similar domain names was done with knowledge of the Complainantís trademarks and with notice of this dispute. There are sufficient grounds in the facts for this Panel to conclude either that the domain names were registered by the Respondent primarily for the purpose of disrupting the business of a competitor (the Complainant) or that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainantís trademarks, or possibly both. Accordingly, this Panel is satisfied, on the balance of probabilities, that the Respondent registered and is using the domain names in bad faith.
7.1. In relation to the domain name <leadinghotels.com>, this Administrative Panel decides that the Complainant has not proven each of the three elements in paragraph 4(a) of the Uniform Policy.
7.2. In relation to the domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>, this Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy.
7.3. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainant contained in the Complaint, this Administrative Panel requires that the Registrar, Domain Bank, Inc., transfer to the Complainant, The Leading Hotels of the World, Ltd., the domain names <leadinghotelsworldwide.com> and <leading-hotels-worldwide.com>.
Andrew F. Christie
Dated: May 24, 2002