WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Georgetown Inc.
Case No. D2003-0214
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 Georgetown Inc., C/O George Beaudet, Portland, United States of America.
2. The Domain Names and Registrar
The disputed domain names <holiday-inn-4-less.com> and <holidayinn4less.com> are registered with Abacus America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2003. On March 19, 2003, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain names at issue. On March 20, 2003, Abacus America Inc. dba Names4Ever 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 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 23, 2003.
The Center appointed Frederick M. Abbott as the Sole Panelist in this matter on May 7, 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
Complainant is the holder of numerous registrations for the service mark "HOLIDAY INN" (word, and word and design) and various "HOLIDAY INN"-formative marks (e.g., "HOLIDAY INN EXPRESS") on the Principal Register of the United States Patent and Trademark Office (USPTO). These registrations include the words "HOLIDAY INN," reg. no. 592,539, dated July 13, 1954, service mark in International Class (IC) 42, covering "Motor Hotel Services" as further specified, claiming date of first use of March 1, 1952, and first use in commerce of July 1, 1952 (and disclaiming the word "INN" apart from the mark as shown). Complainant has submitted copies of eighteen USPTO certificates of registration (and related evidence of assignments and ownership). Complainant asserts ownership of twelve hundred thirty-seven (1,237) registrations for "HOLIDAY INN" service marks in one hundred eighty-two (182) countries. (Complaint, para. 11 & Annex D).
Complainant itself and through its licensees has used the "HOLIDAY INN" mark extensively in commerce in the United States and elsewhere. There are over two thousand nine hundred (2,900) "HOLIDAY INN" hotels in over seventy (70) countries. (Id., para. 11)
Complainant has heavily advertised and promoted the "HOLIDAY INN" mark, and continues to spend millions of dollars annually doing so (id.).
Complainant is the registrant of over one thousand one hundred (1,100) domain names, and operates an active commercial website, inter alia, at "www.holiday-inn.com." Complainantís websites are used by millions of consumers of hotel services each year. Online reservations make up over five percent of Complainantís total "HOLIDAY INN" hotel reservations, generating over four hundred million dollars ($400,000,000) in annual revenue. (Id.)
According to the Registrarís Verification, Respondent "Georgetown Inc." is the registrant of the disputed domain names. The Administrative Contact, with the same address as Respondent, is "George Beaudet." According to NAMES4EVER WHOIS database reports provided by Complainant, the record of registration for each disputed domain name was created on 2002-11-07.
The disputed domain names are each redirected to a web page at "www.travelnow.com/hotels/searchframe.jsp?cid=56880." This web page is headed with the words "HotelRooms4Less.com (ĎThe Right Rooms @ The Right Ratesí)." The web page allows Internet users to choose a city in or outside the United States, and to search for hotels. This web page lists certain "Hotel Deals" which, on March 12, 2003, included rooms at the "Ramada Plaza Downtown Hollywood" in Fort Lauderdale, Florida and the "New Frontier" in Las Vegas, Nevada. A search run by Complainant for Atlanta, Georgia on March 12, 2003, listed 20 hotels with available rooms, most of which hotels were not affiliated with Complainant. Complainant believes that Respondent is a hotel room re-seller that buys bulk quantities of hotel rooms and resells them at its "HotelRooms4Less.com" web page. Apart from asserting that Respondent is mis-using its service mark, Complainant does not assert that Respondent is engaged in improper conduct by purchasing and reselling hotel room services.
The Service Agreement in effect between Respondent and Abacus America Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant indicates that it is the holder of rights in the service mark "HOLIDAY INN" and various "HOLIDAY INN"-formative marks in the United States and throughout the world based on its use in commerce and as evidenced by registrations in the United States and other countries (see Factual Background, supra).
Complainant asserts based on extensive use in commerce, advertising and promotion, and wide consumer recognitions that the "HOLIDAY INN" mark is famous worldwide.
Complainant alleges that the disputed domain names <holiday-inn-4-less.com> and <holidayinn4less.com> are confusingly similar to the "HOLIDAY INN" mark. Complainant argues that addition of the term "4less" does not serve to alleviate Internet user confusion, and may exacerbate it.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names. It says that Respondent is not authorized by Complainant to use its mark, and has not been commonly known by the disputed domain names. Complainant asserts that Respondentís use of its mark to attract Internet users to a website offering the hotel services of third parties does not constitute a bona fide offering of services because it is offering the services of Complainantís competitors. It further argues that Respondentís domain names usage is not "nominative" use "because internet users are likely, upon seeing these domain names among a list of search engine results, to mistakenly believe that Respondentís website is sponsored by, affiliated with, or otherwise endorsed by Complainant, when it is not. Internet users who then proceed to Respondentís web page based upon this mistaken belief may then reserve rooms in hotels not associated or affiliated with Complainant."
Complainant argues that Respondent registered and is using the disputed domain names in bad faith by using its mark intentionally to attract Internet users to a website for commercial gain by creating confusion as to Complainantís sponsorship of or affiliation with its website. Although Respondent does offer Complainantís hotel room services on its website, it offers also the services of competing service providers.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to it.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that the Center took steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The express courier tracking report shows successful delivery to Respondentís address.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the holder of numerous registrations for the service mark "HOLIDAY INN" and "HOLIDAY INN"-formative marks in the United States and other countries. It has used the mark extensively in commerce and has heavily promoted it through advertisement to the public. Complainant has presented substantial evidence of strong consumer association of the mark with its hotel service enterprise. That evidence is not challenged by Respondent. The Panel determines that Complainant has rights in the mark "HOLIDAY INN" and that the mark is famous in the field of hotel services, at least in the United States.
The disputed domain names <holiday-inn-4-less.com> and <holidayinn4less.com> directly incorporate Complainantís mark as their lead term, with and without a hyphen. The visual impression of the disputed domain names is strongly associated with Complainantís mark based on this essentially identical initial usage. Each domain name adds the term "4less," a common short form adjectival reference for "for less," meaning at a lower price. The addition of the common adjectival phrase "4less" does not serve to dispel a likelihood of Internet user confusion between Complainantís famous "HOLIDAY INN" mark and the disputed domain names. An Internet user would be likely to believe that Complainant was using or authorizing the use of its mark in the names to offer rooms at a low rate. Neither hyphens nor the addition of ".com" serve to dispel Internet user confusion here. The Panel determines that the disputed domain names are confusingly similar to Complainantís "HOLIDAY INN" mark.
Complainant has established the first element necessary for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark or service mark at issue." (Policy, para. 4(c)).
Respondent has not replied to the Complaint, and has not presented a claim of rights or legitimate interests in the disputed domain names on its own behalf.
There is no suggestion in the evidence that Respondent has been commonly known by the disputed domain names.
Respondent was without doubt aware of Complainantís rights in its mark when it registered the disputed domain names. Respondent had good reason to believe that Complainant would object to the use of its mark in connection with offering third party hotel services, and Complainant has in fact quickly made its objection known by initiating this proceeding. In these circumstances, Respondent has not established rights or legitimate interests in the disputed domain names by making a bona fide offering of services before notice of a dispute.
Complainant anticipated that Respondent might assert "nominative fair use" of its mark in the disputed domain names. The doctrine of nominative fair use has been considered with some frequency in decisions under the Policy. Whether use of a third party trademark constitutes nominative fair use involves a contextual analysis. Two recent decisions of the U.S. Court of Appeals for the Ninth Circuit, Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002) and Horphag Research v. Mario Pellegrini, 2003 U.S. App. LEXIS 8757 (9th Cir. 2003), reaffirm a useful three-prong approach:
"This court looks to three factors in determining whether a defendant is entitled to the nominative fair use defense: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids, 971 F.2d at 308."
Respondent cannot readily offer "HOLIDAY INN" hotel room services on its website without referring to "HOLIDAY INN." In addition, there does not appear to be more of the mark used by Respondent than reasonably necessary to identify Complainantís services.
However, Respondentís use of the mark in the disputed domain names suggests to Internet users that Complainant sponsors or endorses Respondentís hotel reservation services. The famous mark "HOLIDAY INN" appears as the initial and principal visual identifier in the disputed domain names, and the phrase "4less" added to the mark suggests the availability of room reservation services. A logical conclusion on viewing the disputed domain names is that Complainant is offering room reservations at low prices on its website. While this is not the only way that Internet users might understand the domain names, a substantial number of such users are likely to understand them that way. There is no disclaimer on Respondentís website to indicate the absence of a connection between Complainant and Respondent.
There is a difference between using a service mark such as Complainantís within the body of a website to distinguish hotel services of Complainant and those of other hotel service providers, on one hand, and using Complainantís mark as a domain name, on the other. The domain name identifies the website to Internet users as a commercial enterprise, much as the name posted at the entryway to a brick-and-mortar establishment. A brick-and-mortar travel service agency might offer to book hotel rooms for its clients at a "HOLIDAY INN" hotel as a nominative fair use of Complainantís mark, but it could not fairly name its service business "Holiday Inn Reservations," putting a sign on the door to that effect. The latter usage would imply ownership, sponsorship or authorization by Complainant. The same distinction applies here. Respondent may be able to offer Complainantís hotel rooms on its website as part of its range of hotel room offerings, but it cannot use Complainantís mark as its domain name, that is, as the entryway to its business. The latter use suggests ownership, sponsorship or authorization by Complainant.
The fact that Respondentís website offers hotel services competitive with those of Complainant supports a finding that use by Respondent of Complainantís mark in its domain names is not nominative fair use in the circumstances of this case. See discussion of Ty Inc. v. Perryman, 306 F.3d 509, 2002 U.S. App. LEXIS 20870 (7th Cir. 2002), cert.denied,123 S. Ct. 1750 (April 7, 2003), in HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (February 11, 2003).
Respondentís use of Complainantís mark in the disputed domain names is not nominative fair use.
Respondent has failed to establish that it has rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Respondent is using Complainantís mark in domain names as a principal identifier of its website. Respondent is offering the hotel services of competitors of Complainant, which Complainant does not sponsor or endorse. Respondent is profiting from the confusing use of Complainantís mark in the disputed domain names.
By registering and using <holiday-inn-4-less.com> and <holidayinn4less.com> to direct Internet users to its own hotel reservation website, Respondent has intentionally intended to attract Internet users for commercial gain by creating confusion as to Complainantís sponsorship of or affiliation with Respondentís website. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third element necessary to a finding of abusive domain name registration and use.
The Panel will therefore direct the registrar to transfer the disputed domain names to Complainant.
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 <holiday-inn-4-less.com> and <holidayinn4less.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: May 18, 2003