WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Party Night, Inc.
Case No. D2003-0176
1. The Parties
The Complainant is Six Continents Hotels, Inc., C/O Franklin Moore, Esq., Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC, of United States of America.
The Respondent is Party Night, Inc., C/O Peter Carrington, Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <hoilday-inn.com> and <hollidayinnexpress.com> are both registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2003. On March 5, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On March 7, 2003, the registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 March 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 3, 2003.
The Center appointed Leon Trakman as the sole panelist in this matter on April 24, 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
The factual background is set out below, in 5.
5. Partiesí Contentions
Complainant recites its intellectual property history, particularly in regard to its trade and service marks and use of domain names. It also provides documentary evidence in support of its Complaint.
Complainant itself, or through an affiliate is, the franchisor of the HOLIDAY INN and HOLIDAY INN EXPRESS brands, which include, in addition to the HOLIDAY INN hotels, HOLIDAY INN EXPRESS hotels, HOLIDAY INN SELECT hotels, and HOLIDAY INN SUNSPREE Resorts, (collectively "HOLIDAY INN Hotels") as well as Complainantís other hotel brands, CROWNE PLAZA and STAYBRIDGE SUITES.
Complainant asserts that it and its affiliates own, manage, lease or franchise over 3,300 hotels with more than 516,000 guest rooms, in nearly 100 countries and territories worldwide. Each year, more than 150 million guests stay at Complainantís hotels worldwide.
Complainant maintains that it owns one thousand, two hundred thirty-seven (1,237) registrations for its HOLIDAY INN Hotels service marks in one hundred eighty-two (182) countries. Complainant owns eighteen (18) registrations for its marks incorporating HOLIDAY INN in the United States (collectively "HOLIDAY INN Marks"). Fourteen of these registrations are now incontestable pursuant to Section 15 of the U.S. Trademark Act, 15 U.S.C. ß1065, and constitute conclusive evidence of Complainantís exclusive right to use the marks in commerce in the United States. (Pearson Decl., paragraph 5.)
Complainant, directly or through its predecessors in interest, maintains that it has used the HOLIDAY INN mark since at least as early as 1952. There are over two thousand nine hundred (2,900) HOLIDAY INN Hotels in over seventy (70) countries today. (Pearson Decl., paragraph 7.)
In the last fifty (50) years, Complainant (or its predecessor(s) in interest) maintains that it spent nearly one billion dollars advertising and promoting the HOLIDAY INN Marks worldwide, and that it 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. (Pearson Decl., paragraph 8.)
Complainant maintains that, as a result of its widespread and exclusive use and promotion of its HOLIDAY INN mark, it has developed significant good will in the minds of consumers world wide, and is a famous mark. (Pearson Decl., paragraph 9.)
Complainant maintains, too, that it owns over one thousand, one hundred (1,100) Internet domain names, and operates a web site at "www.holiday-inn.com" (among other domains), providing on-line reservation services for all HOLIDAY INN Hotels worldwide, as well as information on all of the SCH hotel brands. (Pearson Decl., ∂ 10.)
Complainant maintains, too, that its web site has been on-line since at least June 1995, and consumers have been able to reserve hotel rooms through the web site since at least July 1995. This web site has received approximately 156 million visits since March 1999. Approximately two hundred and sixty thousand (260,000) Internet browsers visit this web site every day. (Pearson Decl., paragraph 11.)
Complainant maintains that HOLIDAY INN averages over three hundred thousand (300,000) queries per month. (Pearson Decl., paragraph 12.). On-line reservations for HOLIDAY INN brand hotel rooms through Complainantís web sites make up over five percent of Complainantís total HOLIDAY INN Hotels reservations, and generate over four hundred million dollars ($400MM) in revenue annually for Complainant. (Pearson Decl., paragraph 13.)
In addition to reserving rooms at any of Complainantís hotels around the world, Complainant maintains that its PRIORITY CLUB® members (over 15 million) can link to the websites of Complainantís strategic affiliates, allowing them to make and review airline and car rental reservations on line.(Pearson Decl., paragraph 14.)
Based on the foregoing, Complainant alleges that: HOLIDAY INN is truly a famous world-wide mark; Respondent registered the domain names <hollidayinnexpress.com> and <hoilday-inn.com> and that such registrations are confusingly similar to Complainantís marks; that Respondent is attempting to "typo-squat" on Complainantís mark by registering the domain names as <hollidayinnexpress.com> and <hoilday-inn.com>; that, Respondent has no rights or legitimate interests in respect of the domain names in issue; and that Respondent registered the domain names in issue in bad faith.
The Respondent did not reply to the Complainantís contentions.
5. Discussion and Findings
Resolving to the Respondentís web sites produces the following results.
The <hollidayinn.com> domain name resolves to a web site at the URL "www.mp3-express.com". That site features a commercial file-sharing network. Users can subscribe to the network for a monthly fee, and ostensibly gain access to a large number of music, video, and other files. According to the home page for the web site, a filter is available to limit the userís access to adult-oriented materials.
The <hoilday-inn.com> domain name resolves to a web site at the URL "http://amaturevideos.nl/hanky-panky-party.html". The home page at that web site states: "WARNING This web site contains sexually oriented adult content which may include visual images and verbal descriptions of nude adults, adults engaging in sexual acts, and other audio and visual materials of a sexually-explicit nature." Upon "entering" the web site, the Internet browser is re-directed to the URL "www.hanky-panky-college.com/party-girls.html", hosting a web site that features a large variety of sexually explicit and pornographic content.
In addition to the web site at "www.hanky-panky-college.com", additional pop-up web sites featuring pornographic content are spawned when the user enters Respondentís web site, as well as when the user attempts to close the original browser window.
Based on the facts, the Complaint and the discussion above, the Panel holds as follow:
A. Identical or Confusingly Similar
The domain names in issue, <hollidayinnexpress.com> and <hoilday-inn.com> are confusingly similar to the trademark, web site and other domain names of the Complainant.
It is well established that domain names that are misspellings of a trade or service mark may qualify as confusingly similar. See Geobra Brandstatter GmbH & Co KG v. Only Kids Inc., WIPO Case No. D2001-0841; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201. The two domain names in dispute in the instant case are clearly confusingly similar to the trade and service mark of the Complainant. Both constitute misspellings of Holiday Inn Express or Holiday Inn. Indeed, "hollidayinnexpress.com" is identical to Complainantís well-known brand, HOLIDAY INN EXPRESS, but for the use of two "lís" in "holliday". The domain name <holiday-inn.com> differs from the Complainantís brand "Holiday Inn" only in the justapositioning of the "o" and "i" in Holiday: and the use of a hyphen between "holiday" and "inn."
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the domain names in dispute. Through use of the domain names, Respondent directs Internet traffic to a number of adult-oriented and sexually explicit web sites, including "www.hanky-panky-college.com". It also directs Internet traffic to a commercial web site featuring a subscription-based music and video peer-to-peer file-sharing network.
Respondent is not making a legitimate, non-commercial or fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. On the contrary, Respondentís use of these domain names is likely to mislead consumers by diverting them from Complainantís legitimate trade and service marks. The domain names in issue are also likely to undermine Complainantís well-known and distinctive trade and service mark and harm its reputation. Furthermore, Respondentís registration and use of the domain names to forward internet browsers to web sites featuring pornographic material is clearly likely to tarnish Complainantís service marks and good will in relation to its well-known and global hotel business.
Respondent has no countervailing right or legitimate interest in the circumstances. Respondent is not commonly known by either of the domain names in issue. In addition, Respondent is not using these names corresponding to the domain names in connection with a bona fide offering of goods or services in the circumstances.
C. Registered and Used in Bad Faith
Respondentís registration of domain names that are confusingly similar to Complainantís famous service marks is designed, in bad faith, to divert consumers to the aforementioned web pages for commercial gain. Respondent is engaging in bad faith typo-squatting by diverting consumers who misspell the Complainantís mark to Respondentís pornographic and other web sites. Respondentís activities are also intended to intrude upon Complainantís service marks by inducing Internet users to associate Complainantís well-known services with Respondentís provision of pornographic material.
This is not the first instance in which Respondent has been held to act in bad faith in its use of a domain name. In an almost identical context, Respondent has used another Complainantís well-known trademark to attract Internet users to Respondentís pornographic web sites. The Panel there held that such action constituted bad-faith use of the domain name in issue. See Bass Hotels and Resorts v. Mike Rodgerall, WIPO Case No. D2000-0568 (filed by Complainantís predecessor-in-interest). As in the current case, Respondent "typo-squatted" on another Complainantís trademark. The Panel held that the Respondent acted in bad faith in directing Internet traffic to its pornographic web sites.
In Sears, Roebuck and Co. v. Party Night, Inc., WIPO Case No. D2002-0732, the Panel found that Respondent acted in bad faith when it registered the domain name "searcard.com", and forwarded browsers to the same URL used by the Respondent in the current case, namely, "www.hanky-panky-college.com". The Panel noted that Pop-up advertisements appeared at Respondentís site and that these advertisements were intended to generate revenue for Respondent.
The instant case is similar to this prior decision in material respects, except only in regard to the identity of the Complainant and the domain names used by the Respondent.
The Panel notes, too, the case of Cimcities LLC v. Party Night, Inc., WIPO Case No. 2002-0613. There, Respondent registered the domain name <accessaltanta.com>, attempting to "typo-squat" on the registered mark ACCESS ATLANTA and the Complainantís domain name <accessatlanta.com>. Internet users who mis-typed the domain name were directed to Respondentís web page that included numerous pop-up ads for gambling and sexually explicit web sites. In holding that the Respondent had acted in bad faith, that Panel stated: "Öthere can be no doubt that the domain name <accessaltanta.com> has been abusively construed to divert website visitors to sites offering gambling games services. Although there is no hard evidence, though a serious likelihood, that Respondent obtains commercial compensation for redirecting website visitors, the Panel decides that by registration of the domain name <accessaltanta.com>, Respondent has acted with bad faith because it positively and directly harms Complainantís goodwill and trademark." [italics added]
Respondent has embarked on a comparable and bad faith course of conduct in the instant case. Respondent has re-directed website visitors to its "hoilday-inn.com" and related websites at which it provides, among other services, pornographic web materials. Respondent has done so deliberately and for commercial gain.
Respondent has also acted in bad faith in re-directing visitors from the <hollidayinnexpress.com> domain name to a commercial file-sharing network. The Panel agrees with the determination in the ATLANTIC ACCCESS case that Respondentís activities " positively and directly harms" Complainant.
Complainant has another pending UDRP case filed against this Respondent regarding the domain name <sixcontinentalhotels.com>. Without attempting to prejudge that case, the Panel notes that the facts are materially similar to the instant case. Respondent registered the domain name <sixcontinentalhotels.com>. Internet users are directed to the Respondentís pornographic web "www.hanky-panky-college.com". Complainant sent a cease and desist letter to Respondent, advising of Respondentís allegedly bad-faith registration and use of the domain names and alleging violation of Complainantís intellectual property rights. Complainant maintains that it received no response to its demand letter. Comparable to the instant case, the site "www.hanky-panky-college.com" continues to operate.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <hoilday-inn.com> and <hollidayinnexpress.com>, be transferred to the Complainant.
Dated: April 30, 2003