WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Jeffrey Evans
Case No. D2002-1118
1. The Parties
The Complainant in this proceeding is Six Continents Hotels, Inc., a corporation of the state of Delaware, United States of America.
The Respondent is Jeffrey Evans, an individual with a principal address of 7 Parkhurst Drive, Nashua, NH, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name <crowne-plaza-hotel-bangkok.com> (the "Domain Name").
The Domain Name was registered on August 11, 2002.
The Registrar with whom the Domain Name is registered is iHoldings.com, Inc. d/b/a Dotregistrar.com.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the WIPO Arbitration and Mediation Center (the "Center") in electronic format on December 4, 2002, and in hardcopy on December 6, 2002. Payment in the required amount to the Center has been made by the Complainant.
On December 6, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name. The Center formally notified the Respondent of the Complaint and the proceedings commenced on December 9, 2002.
On December 29, 2002, a Response was received from the Respondent.
On January 13, 2003, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott.
On January 15, 2003, a request from the Complainant for leave to file a reply was received by the Panel. The Panel admitted the Reply, for reasons given below.
On January 23, 2003, a decision was submitted to the Center.
4. Factual Background
The Complainant, through one or more affiliates owns, manages or franchises over three thousand, three hundred hotels and resorts world-wide under the brands HOLIDAY INN, HOLIDAY INN EXPRESS, CROWNE PLAZA, and INTERCONTINENTAL among others.
The Complainant is the owner of United States Trademark Registration No. 1, 297, 211 for the mark CROWNE PLAZA, covering "hotel services Ė namely, providing lodging and restaurant services in hotels." The CROWN PLAZA mark was registered on September 18, 1984. A copy of the registration certificate has been provided.
The Complainant claims that the Domain Name is comprised of the Complainantís mark, CROWNE PLAZA, plus the generic term HOTEL and the geographically descriptive term BANGKOK.
The Respondent is a contractor for registering high level domain names, developing websites, search engine registration and search engine promotion consistent with its Internet strategies.
5. Partiesí Contentions
The Complainant asserts that it has used its CROWNE PLAZA mark since at least as early as 1983. It also states that, there are currently over 190 CROWNE PLAZA brand hotels and resorts world-wide and as a result of its exclusive use of its CROWNE PLAZA mark, it has developed significant goodwill for consumers throughout the world.
It also states that it has been operating a hotel in Bangkok, Thailand under the name CROWNE PLAZA since at least as early as January 1990.
The Complainant says that it operates a web site at the URL "www.crowneplaza.com", at which web site the Complainant provides hotel reservation services for any of its CROWNE PLAZA hotels world-wide.
The Complainant claims that the Respondent has incorporated several of the Complainantís registered marks into its keyword meta-tag fields, and prominently displays the Complainantís logo mark on its web site, without the consent or approval of the Complainant. It claims the Respondent has registered and is using the Domain Name in an effort to divert Internet browsers looking for the Complainantís web site to its own web site for commercial gain.
The Complainant claims that the Respondent, through its web site at "www.crowne-plaza-hotel-bangkok.com", provides hotel reservation services for hotels in Asia and around the world. Consumers can reserve hotel rooms through the Respondentís web sites for any number of different hotel brands, the majority of which are not affiliated or associated with the Complainant.
It is contended that when the Complainant learned of the Respondentís unauthorised registration and use of the Domain Name, and its unauthorised use of its Complainantís registered logo mark, its counsel sent a cease and desist letter to the Respondent, asserting that its registration and use of the Domain Name and logo mark violated several provisions of the U.S. Trademark Act. The Respondent did not respond to the demand letter. On November 14, 2002, the Complainant again sent a cease and desist letter to the Respondent; however, according to the Complainant, to date the Respondent has neither complied with the demands in the letter, nor responded to the allegations therein.
The Complainant acknowledges that it received a single telephone message from the Respondent on or about December 23, 2002. However, it says that when the Complainant attempted to return the message, the phone number left by the Respondent was not in service.
In the Complainant's Request for Leave to file a Reply it notes that the Respondent asserts a legal right to register the Domain Name at issue in the proceeding by virtue of a contract between the Respondent and the Crowne Plaza Hotel in Bangkok, Thailand. The Complainant states that it was unaware that this particular hotel had entered into the contract upon which the Respondent now relies in its Response. It states that because it did not know of the contract, it did not address what rights, if any, this contract conferred in its Complaint. This submission has merit and, in the Panelís view, justifies the admission of this additional material.
In its Reply, the Complainant asserts that the Contract Agreement did not in any event authorise the Respondent to register the Domain Name, and therefore does not provide the Respondent with any right or legitimate interest in the Domain Name.
The Complainant responds to the assertion that a contractual agreement exists between E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel Bangkok. It notes that reliance is placed on the following provision from Amendment 1 in the contract agreement: "The agent shall provide the hotel an independent high level domain including domain registration-site development-search engine registration and promotion free for a minimum of 2 years from the date signed up."
The Complainant submits that contrary to Respondentís assertions, the contract does not include an express authorisation or grant of right to the Respondent to register a domain name that includes the Complainantís CROWNE PLAZA mark. Rather, the Contract Agreement merely states that the Respondent may provide its reservation services for the hotel through the identified web sites, or any future web site that the Respondent may register.
It goes on to submit that the Amendment requires the Respondent to provide domain registration, web site development, and search engine registration services at no cost to the hotel for two years. It suggests that no reasonable construction of the contract agreement or the Amendment can be interpreted as expressly granting to the Respondent a right or license to register a domain name incorporating the CROWNE PLAZA mark. It concludes that these clauses simply obligate the Respondent to provide certain contracted services to the hotel.
Furthermore, it asserts that the Crowne Plaza Hotel in Bangkok, Thailand, that entered into the Contract Agreement with Respondent has no legal authority to grant to any third party the right to register a domain name that incorporates the CROWNE PLAZA mark. It states that the Complainantís eCommerce Standards, which were effective for all of the Complainantís hotels outside of the Americas as of July 1, 2001, expressly prohibit hotels from registering domain names that incorporate any of the Complainantís marks, including CROWNE PLAZA. Accordingly, it submits that because the Crowne Plaza Hotel in Bangkok had no legal right to register the Domain Name itself, it had no legal right to authorise the Respondent to register the Domain Name.
As foreshadowed above, the Respondent claims to have a contractual agreement with E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel Bangkok. It states that part of the contract included registering a high level domain, developing the website, search engine registration and search engine promotion consistent with its Internet strategies. The Respondent also claims that they understood the Complainant was aware of the agreement.
According to the agreement, the Respondent was appointed as the "reservation agent for the sale of hotel rooms or packages through "http://e-biz-travel.com", "http://bangkok-hotel-reservations.com", "http://thailand-hotel-reservations.com" and any other URLís the agent may register to promote the sales at its own expense."
It is asserted that the Holiday Inn Crowne Plaza Hotel Bangkok provided a sales kit, which included all logos and almost all graphics (including the trademark in question). These were provided to facilitate the creation of the website. As these were provided for the website, we must conclude that their use is not only authorised but also expected.
The Respondent states that it is compensated by The Crowne Plaza Hotel Bangkok IAW the commission schedule in Amendment 1. This schedule is based on the number of room nights produced per month and other considerations. As it does not have exclusive coverage of The Crowne Plaza Hotel Bangkok it must compete for search engine positioning with many other reservation companies. For this reason they put the hotel name in the keyword list. It is also part of its search engine strategy.
The Respondent believes that E-Biz Travel Co., Ltd. registered the Domain Name on August 11, 2001, after completing a signed agreement on July 19, 2001, with The Crowne Plaza Hotel Bangkok and that the Domain Name was registered pursuant to the contract for the purpose of selling room nights at this hotel. The affiliate sites listed at the bottom of the page are part of the Respondent's link strategy to increase the search engine position and page ranking of its sites. It is submitted that it is not intended in any way to divert business away from this hotel. There are also links to other sites. It is submitted that this link strategy and the use of the hotel name in conjunction with the destination name are consistent with the Respondent's search engine strategy and are necessary under amendment 1 as part of our search engine promotion obligation.
The Complainant asserts that the Respondent failed to respond to outside counsel's demand letter that included transferring the rights to this Domain Name. In response it notes its telephone records indicate four phone calls to the Complainant's outside counsel on October 25, 2002. The Respondent says that the Complainant never returned its telephone calls.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to a trade mark or service
mark in which the Complainant has rights;
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Name Identical or Similar
There is no real dispute that the Complainant has used its CROWNE PLAZA mark for many years, there are currently numerous CROWNE PLAZA brand hotels and resorts world-wide and that as a result of the Complainantís exclusive use of its CROWNE PLAZA mark, it has developed significant goodwill for consumers throughout the world, including in Bangkok, Thailand.
The Complainant claims that the Domain Name is comprised of the Complainantís mark, CROWNE PLAZA, plus the generic term "hotel" and the geographically descriptive term "Bangkok". This is self evidently so and the ground is made out.
Respondent has no Right or Legitimate Interest
The real nub of the case is that the Respondent asserts it has a right to the Domain Name and an entitlement to use it, based on the contractual agreement between E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel, Bangkok. The Respondent relies on what is effectively a defence to the Complaint, namely that part of the contract included registering a high level domain, developing the website, search engine registration and search engine promotion consistent with its Internet strategies.
The Respondent of course claims that he understood the Complainant was aware of the agreement but no satisfactory evidence is proffered to support this. It also appears to be inconsistent with the Complainantís international practice in this regard.
The Complainant submits that because the Crowne Plaza Hotel in Bangkok had no legal right to register the Domain Name itself, it had no legal right to authorise the Respondent to register the Domain Name. This is true to an extent but it does not necessarily resolve the issue because of possible difficulties arising from the concept of ostensible authority.
At the end of the day, the Panel is of the view that, even putting things in as positive as possible a light for the Respondent, the answer must be found in the wording of the contract between the parties or their agents.
The Panel agrees that the contract does not include an express authorisation or grant of rights to the Respondent to register a domain name that includes the Complainantís CROWNE PLAZA mark, but merely states that the Respondent may provide its reservation services for the hotel through the identified web sites, or any future web site that the Respondent may register (emphasis added).
There is merit in the submission that no reasonable construction of the contract agreement or the Amendment can be interpreted as expressly granting to the Respondent a right or license to register a domain name incorporating the CROWNE PLAZA mark and that these clauses simply obligate the Respondent to provide certain contracted services to the hotel.
In the context of the facts of this particular case, it seems to be neither necessary nor appropriate to imply or infer a right to register and use the Domain Name. The Respondent was well able to provide its services without such a right being implied or inferred.
Accordingly, it is found that the Respondent lacked the necessary right or interest and the ground is made out.
Domain Name Registered and Being Used in Bad Faith
As the Panel sees it, the Respondentís argument depends on a positive finding on the issue of the Contractual Agreement and the rights and interests that are purported to flow from it. Having rejected its argument on this point, the necessary conclusion on this ground is that the ground is satisfactorily made out.
Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainantís CROWNE PLAZA trade mark and name.
(2) that the Respondent has no right or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: January 23, 2003