WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Ameriasa
Case No. D2002-1132
1. The Parties
The Complainant is Six Continents Hotels, Inc., a Delaware Corporation of Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC of Atlanta, Georgia, United States of America.
The Respondent is Ameriasa of Ravels, Belgium.
2. The Domain Name and Registrar
The disputed domain name is <holiday-inn-hotels.net>("the Domain Name"), registered with Intercosmos Media Group d/b/a directNIC.com. ("Intercosmos").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2002. On December 13, 2002, the Center transmitted by email to Intercosmos a request for registrar verification in connection with the Domain Name. On the same day, Intercosmos transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2002. In accordance with the Rules, paragraph 5(a), the due date for response was January 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 9, 2003.
The Center appointed Christopher P. Tootal as the sole Panelist in this matter on January 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
A. The Complainant owns over 1,200 registrations of service marks comprising the words HOLIDAY INN, either alone, as part of a design or in combination with one or more other words ("the HOLIDAY INN Marks");
B. In particular, the Complainant owns U.S. Service Mark No. 592,539, registered on July 13, 1954, for HOLIDAY INN ("the Trademark");
C. The Domain Name was registered on June 28, 2001.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The Complainant, itself, or through an affiliate, is the franchisor of the HOLIDAY INN and HOLIDAY INN EXPRESS brands, which include, in addition to the well known HOLIDAY INN hotels, HOLIDAY INN EXPRESS hotels, HOLIDAY INN SELECT hotels, and HOLIDAY INN SUNSPREE Resorts, (collectively "HOLIDAY INN Hotels"). In addition to franchised hotels, the Complainant owns and operates numerous HOLIDAY INN and HOLIDAY INN EXPRESS branded hotels worldwide.
(ii) The HOLIDAY INN brands are the most recognized hotel brands in the world. More travellers have stayed at HOLIDAY INN Hotels than any other hotel brand in the world. Every year, in the United States, 50% of all hotel guests stay in a HOLIDAY INN Hotel at least one night. 90% have stayed in a HOLIDAY INN Hotel at some time in their lives. The HOLIDAY INN brands have 100% name recognition in the U.S.
(iii) The Complainant, directly or through its predecessors in interest, has used the Trademark since at least as early as 1952. Today, there are over two thousand nine hundred (2,900) HOLIDAY INN Hotels in over seventy (70) countries throughout the world. HOLIDAY INN is the most global hotel brand.
(iv) In the last fifty (50) years the Complainant (or its predecessor(s) in interest) has spent nearly one billion dollars advertising and promoting the HOLIDAY INN Marks worldwide, and currently spends many millions of dollars annually on advertising, marketing, and promoting its brands, in addition to what its franchisees spend on advertising their individual hotels.
(v) As a result of the Complainantís widespread and exclusive promotion and use of the Trademark, the mark has developed significant good will in the minds of consumers world wide, and is a famous mark.
(vi) The Complainant owns over one thousand one hundred (1,100) Internet domain names, and operates a website at "www.holiday-inn.com" (among other domains), providing on-line reservation services for all HOLIDAY INN Hotels worldwide.
(vii) The Complainantís website has been on-line since at least June 1995, and consumers have been able to reserve hotel rooms through the website since at least July 1995. This website has received approximately 156 million visits since March 1999. Approximately 260,000 Internet browsers visit this website every day.
(viii) HOLIDAY INN is routinely one of the top twenty most commonly searched travel-related terms on the Internet, averaging over 300,000 queries per month.
(ix) Upon information and belief, the Respondent is a hotel room re-seller, buying bulk quantities of hotel rooms and re-selling them through its Internet website "www.holiday-inn-hotels.net." Respondent re-sells rooms for many different hotels and hotel chains around the world at its website. At the home page for the website, Respondent includes links to various car reservation and airline ticket reservation services, none of which are affiliated with the Complainant.
(x) Upon information and belief, the Respondent is not, and has never been, commonly known by the Domain Name. Rather, the Respondent offers its services primarily under the mark Lowest-Airfare.com.
(xi) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent uses the Domain Name to host a website where the Respondent offers hotel, car rental, and airline ticket booking services in competition with Complainantís own on-line hotel reservation services.
(xii) Internet users are likely, upon seeing the Domain Name among a list of search engine results, to mistakenly believe that it is sponsored by, affiliated with, or otherwise endorsed by the Complainant, when it is not. Internet users who then proceed to the Respondentís web page based upon this mistaken belief may then reserve rooms in hotels not associated or affiliated with the Complainant.
(xiii) While the Respondent does sell reservations for rooms in HOLIDAY INN hotels through its website, it also sells reservations for hotel rooms of the Complainantís competitors. An internet user at the Respondentís web page intending to view HOLIDAY INN hotels by geographic location, for instance, by clicking on the link to "Atlanta," can "refine" the search query to view not only HOLIDAY INN hotels in Atlanta, but any or all hotels, simply by removing the HOLIDAY INN text from the search query. Furthermore, by clicking on the "Hotel Reservations" link at the Web Page, an Internet user will be re-directed to the website <affiliates.travelhero.com>, a search page allowing the user to search for hotel rooms in any city and country. The results of this search are not limited to HOLIDAY INN hotel rooms, but include competing hotels brands as well.
(xiv) The "Contact Us" page of the Respondentís website identifies one Marcel Stillekens, with addresses in Laredo, Texas and Cancun, Mexico. Mr. Stillekens owns the domain name <lowest-airfare.com>. The Respondent offers its hotel and travel reservation services at the website "www.lowest-airfare.com", and Mr. Stillekens also owns the following domain names, all of which offer the same reservations services under the LOWEST-AIRFARE.COM trademark: <hotel-reservations-cheap-flights.com>, <discount-hotels-in-europe.com>, and <discount-hotel-accomodations.com>.
(xv) After the Complainant learned that the Respondent was operating its website at the Domain Name, the Complainant sent a cease and desist letter to the Respondent, alleging that the Respondent was in violation of the U.S. Anticybersquatting Consumer Protection Act, the U.S. Trademark Act, and the U.S. Federal Trademark Dilution Act, and demanded that the Respondent transfer the Domain Name to the Complainant. Mr. Stillekens responded that he thought Complainant was addressing the wrong website. After further correspondence, Mr. Stillekens stated "We donít understand that big hotel chains not buy all possible extensions and domain names their self [sic]. When I loose this domain name, tomorrow I can buy another one again." Despite repeated requests, the Respondent refused to transfer the Domain Name to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The onus is, of course, on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is not identical to any of the Complainantís service marks. However, it is undoubtedly confusingly similar to the Trademark (HOLIDAY INN). The Complainant franchises and itself operates hotels all over the world under the Trademark, which is clearly extremely well known. Indeed it probably qualifies as a "famous" mark. To add the word "hotels" to the Trademark merely serves to emphasise that the Domain Name appears to be connected with the Complainantís hotel business and its confusing similarity to the Trademark.
B. Rights or Legitimate Interests
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply. In the absence of any justification from the Respondent, it is inconceivable to the Panelist how a party could demonstrate it had a legitimate interest in the Domain Name, when HOLIDAY INN HOTELS can only be understood to refer to the Complainant. Accordingly, the Panelist concludes that the Complainant has established element (ii).
C. Registered and Used in Bad Faith
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [Respondentís] website or location, or of a product or service on [Respondentís] website or location."
The Respondentís website is clearly intended to attract members of the public who may be wishing to reserve HOLIDAY INN hotel rooms, and then to offer them other hotels and services (see in particular paragraph 5A.(xii) and (xiii) above). This conduct falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:
- the domain name <holiday-inn-hotels.net> is confusingly similar to the trademark HOLIDAY INN of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Therefore, in accordance with Paragraph 4(i) of the Policy the Panelist orders that the Domain Name <holiday-inn-hotels.net> be transferred to the Complainant, Six Continents Hotels, Inc.
Christopher P. Tootal
Dated: January 24, 2003