WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk
Case No. D2003-0161
1. The Parties
The Complainant is Six Continents Hotels Inc., of Atlanta, Georgia, United States of America.
The Respondent is null John Zuccarini d/b/a Country Walk, of Nassau, The Bahamas.
2. The Domain Name and Registrar
The disputed domain name <hoildayinn.com> (the "Domain Name") is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2003. On March 3, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 3, 2003, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. After Respondent was notified of the Complaint, the Center received an email from Respondent informing the Center that the Complaint was administratively deficient. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 27, 2003. The Center verified that the Complaint, together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced, on March 4, 2003. In accordance with paragraph 5(a) of the Rules, the due date for a Response was March 24, 2003, which was extended to March 31, 2003, because of the Complainantís delay in amending the case. The Response was filed with the Center on March 31, 2003. On April 1, 2003, the Center acknowledged receipt of the Response.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 9, 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 paragraph 7 of the Rules.
4. Factual Background
Complainant is the franchiser of the HOLIDAY INN and HOLIDAY INN EXPRESS brands. In addition, Complainant and its affiliates own and operate numerous HOLIDAY INN hotels. The mark HOLIDAY INN is a federally registered trademark in the United States and has been in continuous use since 1952. The mark is owned by Complainant.
Complainantís official website is connected to the domain name <holiday-inn.com>. Complainant also maintains numerous related websites such as <holidayinn.com> and <theholidayinn.com>.
According to the Registrar, Respondent registered the Domain Name on October 25, 1999.
5. Partiesí Contentions
Complainant is the franchiser of the HOLIDAY INN and HOLIDAY INN EXPRESS brands. These brands include hotels under the name HOLIDAY INN and under similar and related brand names. Complainant and its affiliates also directly own and operate numerous HOLIDAY INN hotels and other brand-name hotels worldwide. In total, Complainant and its affiliates own, manage, lease and franchise over 3,300 hotels worldwide in nearly 100 countries. More than 150 million guests stay at Complainantís hotels worldwide each year, making Complainant the worldís leading global hotel company. The HOLIDAY INN mark is the most recognized hotel name brand in the world and has significant good will in the minds of consumers.
Complainant owns 1,237 registrations for its numerous HOLIDAY INN marks in 182 countries throughout the world. Fourteen of these marks, including the HOLIDAY INN mark, are registered on the Principal Register and are federally incontestable marks under the United States Trademark Act. The mark HOLIDAY INN has been continuously used by Complainant and its affiliates since at least as early as 1952.
According to the Registrar, Respondent registered the Domain Name on October 25, 1999.
Respondent is attempting to "typo-squat" on Complainantís marks by registering a mistyped spelling of Complainantís mark. Previous WIPO decisions have held that domain names which contain misspellings of famous marks may qualify as confusingly similar. Therefore, because the Domain Name is a misspelling of Complainantís mark and is intended to confuse and divert Complainantís customers, the Domain Name registered by Respondent is confusingly similar to Complainantís mark HOLIDAY INN.
Respondent is not a franchisee of Complainant and is not otherwise authorized to use any of Complainantís marks. Upon information and belief, Respondent has never used or made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Furthermore, Respondent has not been commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the Domain Name. On the contrary, Respondent directs Internet traffic at the Domain Name to sexually explicit and pornographic websites such as <hanky-panky-college.com>. In addition to this website, additional pop-up websites featuring pornographic content are spawned when the user attempts to close the original browser window.
Respondent is a well-known cyber-squatter and is the registrant of numerous other domain names containing well-known trademarks and famous personsí names, typically in a slightly misspelled form. His registration and use of such domain names has been found to be in bad faith in a reported judicial decision and in over fifty UDRP cases.
Respondentís registration and use of a domain name confusingly similar to Complainantís famous marks is designed to divert customers to Respondentís web pages for commercial gain. Furthermore, Respondentís registration and use of the Domain Name to forward Internet browsers to websites featuring pornographic material is likely to tarnish Complainantís valuable marks and good will, as well as serve to dilute the distinctive qualify of Complainantís famous mark.
Respondent filed a Response to the Complaint in which he argued that the Complaint was administratively deficient on jurisdictional grounds. Respondent, however, did not file a Response based on legal or factual grounds and has not submitted evidence contesting Complainantís allegations as set forth above.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
Complainantís mark HOLIDAY INN is a federally registered and incontestable mark in the United States. Complainantís evidence shows that the mark has been in continuous use since 1952, and is a famous mark in the hotel field. The Panel thus finds that the mark HOLIDAY INN is protected by federal and common law.
The Panel further finds that the Domain Name <hoildayinn.com> is confusingly similar to Complainantís mark. It is well established that domain names that are misspellings of trade and service marks may be confusingly similar. See Natíl Assín of Profíl Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (March 27, 2002). In fact, typo-squatting is intended to be confusing to Internet users in order to lure them to the registrantsí websites. In this case, <hoildayinn.com> is a misspelling of Holiday Inn and constitutes an attempt to confuse and lure the customers of Complainant. Thus, the Panel finds that the Domain Name is confusingly similar to Complainantís mark.
B. Rights or Legitimate Interests
Respondent is not commonly known by the Domain Name and is not a franchisee of Complainant or otherwise authorized to use any of Complainantís marks. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Respondentís acts of typo-squatting and redirecting the Domain Name to pornographic websites do not qualify as a bona fide offering of goods or services. Thus, a prima facie claim has been made by Complainant.
Respondentís failure to submit evidence of his rights or legitimate interests in the Domain Name allows the inference that the evidence would not have been favorable to Respondent. In addition, Respondentís reputation as a typo-squatter does not shed a favorable light in Respondentís defense. Accordingly, the Panel finds that Respondent has no legitimate interests or rights in the Domain Name.
C. Registered and Used in Bad Faith
Respondentís mere act of typo-squatting a famous mark presents ample evidence of bad faith. Bad faith is further evidenced by Respondentís use of the Domain Name to forward Internet browsers to websites featuring pornographic material. As is common with typo-squatters, Respondent is preying on Internet users who misspell famous names such as Holiday Inn. In fact, Respondentís commercial gain is derived directly from the good will of Complainant.
The Panel finds that the Domain Name was registered and is being used in bad faith. In so finding, the Panel makes note of its previous WIPO decision finding against Respondent. See Apogee Software Ltd. v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0885 (November 19, 2002).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hoildayinn.com> be transferred to Complainant.
Maxim H. Waldbaum
Dated: April 17, 2003