WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Damir Kruzicevic
Case No. D2002-0674
1. The Parties
The Complainant in this administrative proceeding is Six Continent Hotels, Inc. ("SCH"), a Delaware corporation with its principal place of business at Three Ravinia Drive, Atlanta, Georgia, 30346-2149, United States of America. The Complainant is represented in this proceeding by Carol Anne Been, Esq. of Sonnenschein Nath & Rosenthal of Chicago, Illinois, Unites States of America.
The Respondent is Damir Kruzicevic, Vukovarska 43, 21000, Split, Croatia.
2. The Domain Name and Registrar
The domain name at issue is <holidayinns.com> (the "Domain Name"). The Registrar is Register.Com, Inc. 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 18, 2002. On July 22, 2002, the Center received a hard copy of the Complaint, with supporting evidence.
On July 19, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on July 29, 2002, that it had received a copy of the Complaint, that the Domain Name was registered with it, and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full whois details related to the Domain Name and confirmed that the ICANN Uniform Dispute Resolution Policy (the "Policy") applies to the Domain Name.
On July 30, 2002, the Center determined that the complaint satisfied the formal requirements of the Policy, 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"). On the same day, the Center notified the Respondent of the commencement of this proceeding and set August 19, 2002 as the date for the submission of a Response.
The Center did not receive a Response. On August 20, 2002, the Center sent to the Parties, by email, a Notification of Respondent Default.
The Complainant elected to have the complaint resolved by a sole panelist. On August 30, 2002, the Center invited the undersigned to act as Sole Panelist. On August 31, 2002, the undersigned provided a Statement of Acceptance and Declaration of Impartiality and Independence. On September 2, 2002, the Center appointed the undersigned, notified the Parties by email of this appointment and set September 16, 2002, as the Projected Decision Date.
The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant SCH is a worldwide franchisor of several hotel brands including HOLIDAY INN hotels. SCH and authorized users of its marks own and/or manage HOLIDAY INN hotels in North America, Europe, Latin America, the Caribbean, Asia Pacific, the Middle East and Africa. SCH and such authorized users operate over 1600 hotels and resorts as HOLIDAY INN hotels and over 1200 other hotels bearing the HOLIDAY INN name in some form as part of their brand name worldwide.
The Complainant owns over 1300 trademark registrations in over 150 countries, some of which go back as far as 1954, including in Spain, Germany, France, Switzerland, Monaco, Benelux, Norway, Finland, Denmark, Austria, Italy, United Kingdom, Japan, the United States and Canada. The Complainant also maintains an internet presence. It owns and operates, inter alia, <holiday-inn.com> and "sixcontinentshotels.com/holiday-inn". The Complainant has spent close to one billion dollars worldwide at a current rate of approximately fifty-five million dollars per year in advertising and promoting its goods and services under its HOLIDAY INN marks. The Complainant also maintains a worldwide trademark policing program to prosecute and deter infringement of its marks
The Complainantís predecessor, Rescom World Access, registered the Domain Name in 1995, and for approximately four years the renewal fees were paid in a timely manner in response to standard annual reminder notices. For a variety of reasons, the Complainant inadvertently allowed the Domain Name registration to lapse. The Complainant attempted several times to re-register the Domain Name but was unable to accomplish the registration. The Complainant later discovered that the Domain Name had been registered to the Respondent on August 11, 2000 .
On December 27, 2000, the Complainantís attorney sent a letter via e-mail and registered mail to the Respondent at the address listed in the Register.com WHOIS record for the Domain Name. The letter advised the Respondent of SCHís rights in the HOLIDAY INN trademarks, asserted that the Respondentís registration or use of the Domain Name violated SCHís trademark rights and other rights, and requested that the Respondent immediately refrain from using the Domain Name and assign it to the Complainant. The Respondent failed to respond to this letter.
On April 20, 2001, Complainantís attorney sent a follow-up letter to the Respondent via e-mail and registered mail attaching the December 27, 2000 letter and again asserting the Complainantís trademark and other rights and requesting that the Respondent cease using the Domain Name and assign it to SCH. The Respondent failed to respond to this letter as well .
The Respondent previously used the Domain Name to indirectly link to "www.freewebpage.com/freewebpage.html", a website which provided a link to, among other websites, a search engine called "Bestoftheweb.com," which included a travel link to, among other things various hotel reservation websites that identified hotels owned by many of the Complainantís competitors. The Respondent also previously used the Domain Name to link to the <Hoteldiscount.com> website, a site which identifies availability for various hotels in any given city, including hotels owned by many of the Complainantís competitors. The Respondent currently uses the Domain Name to link to <www.cheaprooms.com/holiday-inns.html>, which allows a user to locate HOLIDAY INN hotels in various cities, or alternatively to search other hotels including many owned by the Complainantís competitors. The Respondent owns the domain name registration for "www.cheaprooms.com" .
5. Parties' Contentions
The Complainant relies on the following arguments to ask that the Domain Name be transferred to it.
The Complainantís HOLIDAY INN marks are well known across the world, inherently distinctive, famous and serve as identifiers of SCHís worldwide goods and services to the public, based among other things upon SCHís many years of continuous, widespread use and extensive advertising and promotion under such marks. The Complainantís HOLIDAY INN marks are immediately recognizable by consumers of hotel related goods and services worldwide as identifying the Complainantís goods and services.
As a result of the Complainantís activities, it has acquired substantial good will in its HOLIDAY INN trademarks, and these marks have become worldwide identifiers of genuinely-sponsored SCH goods and services.
The domain name <holidayinns.com> is virtually identical and confusingly similar to the Complainant HOLIDAY INN marks. The Respondent use of "Holiday Inn" is instantly recognizable by the public as the Complainantís proprietary HOLIDAY INN mark and as identifying the Complainantís hotel-related services
The Respondent has no rights or legitimate interests in the domain name <holidayinns.com>. The Respondent is neither a licensee of the Complainant, nor otherwise authorized by the Complainant to use any of the HOLIDAY INN marks, including HOLIDAY INN or <holidayinns.com>. The Respondent is not known (either as an individual, business, or other organization) by the name "holidayinns.com". The Respondentís only interest in the Domain Name is to reap commercial gain from misleading consumers and diverting them to his website "CheapRooms.com".
Respondent has registered and is using the domain name in bad faith. Respondent registered, used and continues to use the Domain Name for hotel-related services clearly intending to misdirect Internet users to sites which identify and promote hotels owned by Complainantís competitors, even after receiving two demand letters.
Respondent has also displayed a pattern of cybersquatting, as evidenced by numerous proceedings under the Policy brought against Respondent, and in which the subject domain name has been cancelled or transferred. Many of these proceedings involve domain names that incorporate famous trademarks, such as "Victoriaís Secret," "Absolut" (for use with alcoholic spirits), and "Oui Magazine." See also WIPO Cases No. D2001-0059 and D2001-0502.
The Respondent has not submitted a Response nor any other comments.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
On the first point, the record clearly shows that Complainant has rights in the trademark HOLIDAY INN.
On the second point, a minor difference in spelling by, for example, adding an "s" to a mark, has no trademark significance (see Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enters. Ltd., WIPO Case No. D2000-0802 (September 9, 2000) (holding respondentís domain names <itoyota.com> and <itoyotas.com> are confusingly similar to complainantís TOYOTA trademark); and Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274 (June 8, 2000) (holding respondentís domain name <duncanhine.com> confusingly similar to complainantís Duncan Hines trademark)).
Respondentís registration and use of the Domain Name creates a likelihood of confusion among consumers by falsely suggesting that the Complainant is the source, sponsor, affiliate or endorser of Respondent, its services and any websites that may be offered at or linked to the Domain Name. In this and other respects, this case is similar to ACCOR v. SEOCHO, WIPO Case No. D2002-0517 (August 12, 2002).
The Panel thus finds that the Complainant has rights in the HOLIDAY INN trademarks and service marks, and that the Domain Name is confusingly similar to such trademarks and service marks.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name ?
The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainantís prior use of the HOLIDAY INN marks and was never authorized to use Respondentís marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Respondent has not made any bona fide offering of goods or services under the name HOLIDAY INN . There are no elements showing that the Respondent is or was commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith ?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) The Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product.
The Complainant must prove that the Domain Name was both registered and used in bad faith.
It is not difficult to conclude that the Domain Name was registered in bad faith. The Complainantís marks are famous and have been used in several countries throughout the world, including in Central and Eastern Europe. The Complainant uses the domain name <holiday-inn.com> to advertise and offer its services over the Internet. Any doubt as to the Respondentís knowledge of what the mark represented at the time it registered it is removed by the very fact that it has consistently used the Domain Name to attract customers to sites offering hotel-related services directly competing with the Complainantís.
Indeed, Respondentís use of the Domain Name clearly demonstrates an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship affiliation or endorsement of the registrantís website. According to Paragraph 4(b)(iv) of the Policy, that in itself constitutes evidence of bad faith registration and bad faith use.
The Respondent also failed to respond to the Complainantís letters and emails. Failure to respond is another sign of bad faith use (See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (November 13, 2000); Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (January 24, 2001); Telstra Corporation, Ltd. v. Nuclear Marshmallows, already cited; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO Case No. D2000-0330 (June 7, 2000); eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (January 18, 2001); Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461; and ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625 (August 29, 2002)).
Finally, there is some evidence of a pattern by Respondent of registering domain names confusingly similar with well-known marks "to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name." In light of the foregoing, it is unnecessary to decide whether the Complainant would win its case on that ground alone.
In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
On the basis of the elements set out above, the Panel finds that :
1. The domain name <holidayinns.com> is confusingly similar to the trademark HOLIDAY INN, in which the Complainant has rights;
2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;
3. The Domain Name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <holidayinns.com> be transferred to the Complainant.
Dated: September 10, 2002
1. Complainant asserts that this situation would be covered under ICANNís proposed Redemption Grace Periods for Deleted Names, which was posted for comment on February 14, 2002.
2. Some nineteen months elapsed between the time the second letter was sent and the time Complainant filed its complaint. Under some circumstances, that may have required the panel to decide whether Respondent would have been entitled to argue for the application of the equitable doctrine of laches (see The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072 (December 5, 2000); Scorpions Musikproductions und Verlagsgesellschaft MBH .v. Alberta Hot Rods, WIPO Case No. D2001-0787 (November 7, 2001)). However, as Respondent did not file a response, there is no need to do so.
3. According to the WHOIS database.
4. As the only offering made under the domain name (i.e. linking Internet users to <cheaprooms.com>) constitutes bad faith use, it cannot be a bona fide offering.