WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Hotel Partners of Richmond
Case No. D2003-0222
1. The Parties
The Complainant is Six Continents Hotels, Inc., C/O Franklin Moore, Esq., Three Ravinia Drive, Atlanta, Georgia 30346, United States of America, represented by Needle & Rosenberg, PC of Atlanta, Georgia, United States of America. (The reference to "Six Contents Hotels, Inc." in paragraph 2 of the Complaint is evidently a typographical error.)
The Respondent is Hotel Partners of Richmond, C/O Keith West, eGO Inc., Richmond, VA 23223, United States of America.
2. The Domain Name and Registrar
The disputed domain name <holidayinnhotelreservations.com> (the "Domain Name") is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2003. On March 21, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On the same day, BulkRegister.com responded to the Center by email, verifying that Respondent is listed as the registrant and providing the details for the administrative, billing, and technical contacts. 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 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 16, 2003.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 28, 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 undisputed facts are established by the declaration of Eric Pearson, Vice President, E-Commerce for Complainant Six Continents Hotels, Inc. and by other documents annexed to the Complaint, including records concerning Complainantís United States trademark registrations and a selection of its relevant domain name registrations.
Complainant Six Continents Hotels, Inc. (directly or through affiliates) owns, manages, leases, or franchises over 3300 hotels in nearly 100 countries. Some 2900 of these hotels, in 70 countries, bear the "Holiday Inn" name, alone or in combination with other words such as "Holiday Inn Express," "Holiday Inn Select," "Holiday Inn Crowne Plaza," and "Holiday Inn SunSpree Resorts." More than 150 million guests are accommodated at Complainantís hotels each year. According to Complainantís market research, roughly 50% of US hotel guests stay in one of the Complainantís hotels at least one night annually, and the "Holiday Inn" mark is universally recognized in the United States.
Complainant or its predecessors in interest have used the name "Holiday Inn" since 1952. Complainant owns 1,237 registrations for various "Holiday Inn" service marks in 182 countries, including eighteen in the United States alone (fourteen of which are incontestable under Section 15 of the U.S. Trademark Act, 15 U.S.C. ß1065).
Complainant owns more than 1,100 Internet domain names, many linked to <holiday-inn.com>, a website through which travelers have been booking reservations at Holiday Inns since 1995. Complainant reports approximately 260,000 visits per day at this website. Complainantís research also indicates that "Holiday Inn" is one of the twenty most frequently searched travel-related terms on the Internet.
Respondent Hotel Partners of Richmond, c/o Keith West of eGO Inc., registered the Domain Name <holidayinnhotelreservations.com> with BulkRegister in 2003. eGO Inc. operates a travel information website, <ego.com>, with links to <roomsonsale.com>, a discount hotel reservations site with notices asserting copyright on behalf of eGO and identifying "RoomsOnSale.com" as "a division of eGO Inc." Searches from the RoomsOnSale site produce results on web pages bearing the eGO logo and listing available rooms and rates by city and hotel. Thus, eGO appears to be in the business of purchasing room reservations at Holiday Inns and numerous other hotels, and then reselling them online. This also appears to be the activity in which Respondent is engaged on the website associated with the Domain Name, but with a unique focus on reservations at Holiday Inn hotels.
The eGO and RoomsOnSale web pages name the hotels but do not reproduce their logos or otherwise suggest an affiliation with them. By contrast, the home page and other pages of the website associated with the Domain Name <holidayinnhotelreservations.com> are headed by what appears to be a "Holiday Inn" logo, following the words "Reservations for." The name "Holiday Inn" at the top of Respondentís web pages appears in exactly the same stylized script as in several of Complainantís US trademark registrations, and the name "Holiday Inn" on both Respondentís and Complainantís websites is followed by the ® symbol indicating that it is a registered trademark. The name and surrounding design on Respondentís website are in exactly the same form and colors as the "Holiday Inn" logo that appears on the pages of Complainantís own <holiday-inn.com> website, including the words "Hotels ∑ Resorts" under the name "Holiday Inns." Apart from the logo, the overall color scheme and appearance of the two sites are similar but not identical.
The home page and other pages of Respondentís <holidayinnhotelreservations.com> website include the following disclaimer in small print at the bottom of the text: "Independent booking agent. Not affiliated with Six Continents Hotels."
Complainant declares, again without refutation, that it has not given Respondent permission to use Complainantís service mark or trade dress on Respondentís website or in any other fashion.
5. Partiesí Contentions
Complainant asserts that "Holiday Inn" is a famous service mark in the hotel industry, and that Respondent is deliberately using a confusingly similar domain name to attract business that might otherwise go to Complainantís own reservations websites.
Complainant argues that the use of its registered service mark "Holiday Inn" in Respondentís domain name, compounded by the unauthorized reproduction of Complainantís service mark and trade dress (logo and design) on the site itself, indicates that Respondent registered the domain name in bad faith, trading on Complainantís name to attract travelers to its site and encourage them to book Holiday Inn reservations through Respondent.
Complainant asserts, on information and belief, that Respondent has never been commonly known as "Holiday Inn Hotel Reservations" and has never used such a name to conduct a bona fide business, since the effort to mislead travelers online for its own commercial gain is not itself a "good-faith" business practice. Complainant cites Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002), for the proposition that it is not legitimate to incorporate a famous trademark in a domain name in a manner that confuses or diverts Internet users.
Complainant argues further that the disclaimer on Respondentís website does not prevent the initial diversion of customers relying on the domain name to seek Holiday Inn hotel reservations, and that some potential customers will book through Respondentís site rather than looking further. Those who do so may be denied certain benefits of booking through an approved channel, such as Holiday Innís customer support facilities, cancellation policy, rewards program, and links to other travel partners.
Complainant consequently seeks to have the Domain Name transferred from Respondent to itself.
Respondent did not reply to Complainantís contentions. Under Paragraph 14(b) of the Rules, the Panel may draw such inferences as it deems appropriate from Respondentís failure to comply with the Centerís request for a response.
6. Discussion and Findings
In order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:
• The Domain Name is identical or confusingly similar with Complainantís
• Respondent has no rights or legitimate interests in the Domain Name; and
• The Domain Name has been registered and is being used in bad faith.
(Policy, Paragraph 4(a).)
Under the Policy (Paragraph 4(b)(iv)), it is evidence of bad faith if the Respondent has, by using the domain name, "intentionally attempted to attract, for commercial gain, Internet users to [Respondentís] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondentís] web site or location or of a product or service on [Respondentís] web site or location."
A. Identical or Confusingly Similar
"Holiday" and "Inn" are both generic words in English, but in combination and in reference to hotel rooms they constitute a registered and well-recognized service mark owned by Complainant. Given the undisputed evidence that this mark has been registered and used for half a century and is one of the best-known hotel brands in the world, the Panel agrees with Complainantís assertion that "Holiday Inn" is a famous mark.
This mark appears verbatim as the first part of the Domain Name. The addition of the relevant and descriptive words "hotel reservations" to the Domain Name increases rather than decreases the likelihood of confusion, since many if not most of the online contacts with Complainant are precisely for the purpose of making reservations at Holiday Inn hotels. See, e.g., The Coca-Cola Co. v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (February 14, 2001) (<cocacoladrinks.com> confusingly similar to Coca-Colaís famous mark for soft drinks); General Electric Co. v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001) (in trademark law, the user of a mark "may not avoid likely confusion by appropriating anotherís entire mark and adding descriptive or non-distinctive matter to it," quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, ß 23:50 (4th ed. 1998)).
The Panel agrees with Complainant that the Domain Name incorporates Complainantís service mark, adds relevant descriptive words, and will likely confuse travelers who are seeking to make reservations with Complainant. The likelihood of confusion is greatly increased by the prominent display on Respondentís website of what appears to be the same Holiday Inn logo and other trade dress used in the design of Complainantís own hotel reservations websites.
The question arises if the disclaimer of affiliation found on Respondentís website mitigates the likelihood of confusion. The short answer is that it may to some extent, but actionable damage is already done in the domain name itself, which will tend to mislead and divert Internet users.
Site visitors may or may not read and understand the meaning of "Independent booking agent" at the bottom of the website text, or the small-print disclaimer of affiliation with Six Continents Hotels -- which is not itself a name that is widely advertised and associated with Holiday Inns. Viewing the Holiday Inn logo on the website, replete with the trademark registration symbol, visitors would likely conclude that Respondent is licensed by the owners of Holiday Inn or is cooperating with them, which is not the case at least with respect to customer service, cancellations, partnerships, and award programs. Thus, there is a likelihood of confusion even when the full web page is displayed.
In any event, the "initial interest confusion" occasioned by the use of the service mark in the Domain Name is sufficient to harm Complainant, since some visitors will stay and make their reservations at Respondentís site or simply fail to persevere in locating Complainantís own website. As the Panel concluded in Volvo Trademark Holding AB (cited above), "the Domain Name chosen by Respondent at first sight appears to be one of Complainant's and it is only upon arriving at and studying the web page that the (intended) disclaimer can be seen. At that point, the consumer has already been diverted and mislead, attracted by the false impression created by the misleading Domain Name. The Policy wants to avoid this." C.f. Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F3d 936 (US 9th Cir. Ct. Apps., 2002) (applying US trademark law in the context of Internet domain names and discussing how actionable initial interest confusion occurs when (1) the marks are similar, (2) the offered goods or services are related, and (3) the parties simultaneously use the Web as a marketing channel Ė all factors that appear in the present case).
The Panel concludes that there is a likelihood of confusion in the use of Complainantís service mark in the Domain Name, even taking into account the rather cryptic disclaimer published on Respondentís website.
B. Rights or Legitimate Interests
In the absence of a submission by Respondent, there is no evidence that Respondent made a legitimate use (or was preparing to make a legitimate use) of the "Holiday Inn" mark in any commercial or non-commercial fashion (see Policy, Paragraph 4(c)). Respondent's only known use of the mark is as part of the Domain Name for a website reselling Holiday Inn hotel reservations. As the Panel wrote in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek, Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000), reselling a complainantís products does not automatically include the right to use the complainantís trademarks as domain names, absent a licensing agreement or other special circumstances.
The Panel in Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002), cited by Complainant, held that no one, especially a competitor, has a vested right "to incorporate a famous trademark in its domain name in a manner confusing or diverting Internet users," even if the domain name is used in connection with a lawful business endeavor involving the products or services of the trademark owner. The Panel ruled against the registrant of <volvoinsurance.com>, despite its intention of selling insurance to owners of Volvos and other automobiles, because the domain name misled visitors by appearing to suggest an affiliation with Volvo, which does offer insurance in some countries. The Panel suggested that the registrant could legitimately have referred to insuring Volvo automobiles on its web pages and could also have devised a domain name less suggestive of affiliation with Volvo (such as <volvoinsurancebroker.com>).
Similarly, in this case, the use of the "Holiday Inn" mark in the Domain Name is not simply "nominative," an unavoidable use of the name to identify the hotels in which Respondent has reserved rooms. It is not necessary to use the mark in the Domain Name itself (much less to reproduce a Holiday Inn logo on the website) in order to effect a search for rooms at Holiday Inns that are available for resale by Respondent. A better example of nominative use is found at the Respondentís own <ego.com> and <roomsonsale.com> websites, which list hotels typographically without trademarked scripts, logos, or other designs.
Here, the initial interest confusion inherent in the Domain Name, reinforced by the unauthorized use of the service mark, logo, and other trade dress on the pages of the website, strongly suggests that Respondent sought to associate its site with Complainant in the minds of consumers, rather than simply identify the hotels in which rooms were available by resale. This is not a legitimate use of the mark.
C. Registered and Used in Bad Faith
"Holiday Inn" is a famous mark, particularly in the United States, where Respondent itself is established. The mark was well known long before Respondent registered the Domain Name and produced the associated website precisely to resell room reservations at Holiday Inns. Indeed, in replicating the mark on its website, Respondent included the trademark registration symbol that follows the words "Holiday Inn" on Complainantís websites. As Respondent itself had not registered this mark, it knew or should have known that the mark belonged to another, and yet it failed to obtain permission to display the mark (and related trade dress) on its website or in the Domain Name. This may be taken as evidence of bad faith in the registration and use of the mark "Holiday Inn" in the Domain Name. See, e.g., Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., Claim No. FA0208000117876 (National Arbitration Forum, December 16, 2002) (as a longtime US resident and news aggregator, the Lebanese respondent should have recognized that "CNN" was an established mark before using it in multiple domain name registrations).
Respondentís unauthorized reproduction on the website of a Holiday Inn logo, and the selection of colors and styles similar to those used on the principal Holiday Inn reservations website, confirm the view that Respondent deliberately copied aspects of Complainantís site as well as using its mark in the Domain Name, all in an effort to mislead travelers using search engines and browsing hotel reservations websites. As discussed above, the website disclaimer language is too little, too late to avoid misleading and diverting Internet users for Respondentís commercial gain, which is evidence of bad faith (see Policy, Paragraph 4(b)(iv)).
Nor does Respondent appear to be a naïve website operator concerning intellectual property rights. Its own <ego.com> and <roomsonsale.com> websites include trademark and copyright notices.
Under the circumstances, it is not likely that Respondent reasonably believed that the Holiday Inn mark, logo, and trade dress were unprotected or that Complainant had granted permission for Respondent to copy, display, and use them to attract business to itself in competition with Complainantís own websites. The Panel also exercises its prerogative under Paragraph 14(b) of the Rules to infer from Respondentís failure to reply, despite timely notice of these proceedings, that Respondent has no persuasive arguments against the charge that it registered and used the Domain Name in bad faith, in an effort to trade on a famous name owned by Complainant and divert consumers to its own website for its own commercial gain.
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 Name <holidayinnhotelreservations.com> be transferred to Complainant.
W. Scott Blackmer
Dated: May 14, 2003