WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Ramada Inn
Case No. D2003-0658
1. The Parties
The Complainant is Six Continents Hotels, Inc., of Georgia, United States of America, represented by Robin Blecker & Daley, United States of America.
The Respondent is Ramada Inn, of Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name <holidayinnmichigan.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2003. On August 22, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On August 28, 2003, BulkRegister.com 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 August 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 19, 2003.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on October 2, 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 is a global hotel company and owns, operates or franchises more than 3,300 hotels and over 514,000 guestrooms in nearly 100 countries and territories. Its properties, marketed under the trade name InterContinental Hotels Group, bear well-known hotel brands, such as: CROWNE PLAZA®, HOLIDAY INN®, HOLIDAY INN EXPRESS®, HOLIDAY INN SELECT®, HOLIDAY INN SUNSPREE®, INTERCONTINENTAL®, and STAYBRIDGE SUITES®.
(b) HOLIDAY INN® hotels are located throughout the world in such diverse locations as small towns, major cities, along highways and near airports. With more than 1,567 full-service hotels in over 70 countries, HOLIDAY INN® hotels is one of the Complainantís flagship brands and is a global hotel brand that is a widely recognized lodging brand.
(c) The Complainant has spent close to US $1Billion worldwide, at a current rate of about US $46 million per year in advertising and promoting the HOLIDAY INN® mark. The Complainant itself and through its franchisees have extensively used the mark HOLIDAY INN® throughout the United States and the world to promote the Complainantís and its authorized usersí goods and services (see Annex 7 of the Complaint).
(d) The Complainant owns all right, title and interest in and to the service mark HOLIDAY INN®, Registration No. 592,539, issued July 13, 1954, in international class 42 in connection with motor hotel services claiming a date of first use of March 1, 1952, and a date of first use in commerce of July 1, 1952 (see Annex 8 of the Complaint). Inclusive of this mark, the Complainant is also the owner of all right, title and interest in and to over 1,200 additional U.S. and foreign trademark and service mark registrations for the mark HOLIDAY INN® (word, and word and design) and various HOLIDAY INN® formative marks as well as pending applications relating to the mark HOLIDAY INN® and variations thereof, in over 180 countries throughout the world, including, but not limited to, Australia, Canada, China, France, Germany, Japan and the United States (see Annex 8 of the Complaint).
(e) The Complainant also owns over 1,100 domain names, including the domain names <holiday-inn.com>, <holidayinn-hotels.com>, <holidayinntravel.com>, <holidayinnonline.com>, <holidayinnreservations.com> and <holidayinnworldwide.com>, as well as <holidayinndetroit.com>, <holidayinnlosangeles.com> and <holidayinnnewyork.com>, and operates websites associated therewith, which provide a wide variety of information on the Complainantís and its authorized usersí HOLIDAY INN® hotel (see Annex 9 to the Complaint).
(f) A search of the Complainantís website at "www.holiday-inn.com" shows that the Complainantís authorized franchisees operate approximately 17 HOLIDAY INN® and HOLIDAY INN EXPRESS® hotels within a 50-mile radius of the Respondentís address in Flint, Michigan (see Annex 10 of the Complaint). Online business directories and visitorsí guides for the local area list both the Respondent and the Complainantís franchised hotels found within this 50-mile radius as providing conveniently located full-service lodging for cost-conscious travelers (see Annex 10 of the Complaint).
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The HOLIDAY INN mark is well known, inherently distinctive and famous, and serves as an identifier of the Complainantís goods and services, based upon the Complainantís many years of continuous, widespread use and extensive advertising and promotion under such mark.
(ii) As a result of the Complainantís widespread and exclusive promotion and use of the mark, the mark has developed significant goodwill in the minds of consumers worldwide, and is a famous mark.
(iii) Without authorization from the Complainant, the Respondent registered the Domain Name <holidayinnmichigan.com> on February 23, 2000 (see Annex 1 of the Complaint), and the Respondent proceeded to post a website at "www.holidayinnmichigan.com", which promoted the Respondentís Ramada Inn & Conference Center.
(iv) On December 7, 2001, the Complainantís in-house counsel sent a cease and desist letter and domain name registration transfer agreement to the Respondent concerning the Respondentís unauthorized registration and use of the Domain Name (see Annex 4 of the Complaint). A Domestic Return Receipt postcard, which had accompanied the letter, was returned to the Complainant signed and bearing a delivery date of December 15, 2001 (see Annex 4 of the Complaint). No correspondence or other communication was received from the Respondent in response to the December 7, 2001 cease and desist letter.
(v) On May 28, 2002, the Complainantís outside counsel sent a cease and desist letter via Federal Express to the Respondent regarding the Respondentís continued unauthorized registration and use of the Domain Name (see Annex 5 of the Complaint). An invoice from Federal Express indicates that the letter was delivered on May 29, 2002, and signed for by a "V. Bailey" (see Annex 5 of the Complaint). No correspondence or other communication was received from the Respondent in response to the May 28, 2002 cease and desist letter.
(vi) On March 24, 2003, the Complainantís outside counsel received a telephone call from the Respondent, on his own initiative, offering to sell the Domain Name to the Complainant for US $700-$800. He also confirmed that he had registered several other domain names including the Domain Name. The Complainantís outside counsel proceeded to contact the Complainant concerning the Respondentís offer. The Complainant declined to accept the Respondentís offer and has proceeded to file this complaint in response to the Respondentís unauthorized registration and use of the Domain Name <holidayinnmichigan.com>. (see Affidavit of Marylee Jenkins, Esq., Annex 12 of the Complaint).
(vii) The Domain Name <holidayinnmichigan.com> is confusingly similar, if not virtually identical, to the Complainantís Mark HOLIDAY INN®.
(viii) The Respondent has no rights or legitimate interests in the Domain Name <holidayinnmichigan.com>.
(ix) Upon information and belief, the Respondent has registered and is using the Domain Name <holidayinnmichigan.com> in bad faith.
(x) Upon information and belief, the Respondent registered the Domain Name to prevent the Complainant from reflecting its marks in the corresponding Domain Name and has engaged in a pattern of such conduct.
(xi) Upon information and belief, the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
(xii) Upon information and belief, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its site, by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation and endorsement of its site or of a product or service on its site.
(xiii) Upon information and belief, the Respondent has engaged in "passive holding" of the Domain Name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the ground of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".
In the light of the above, the Panel may draw such inferences from the Respondentís failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainantís trademark or service mark;
(ii) 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 <holidayinnmichigan.com>. As mentioned above, the Complainant owns several trademark registrations for the words " holiday inn" alone or in combination with different words.
The Domain Name is made up of a simple combination of the Complainantís trademark and the geographical location of Michigan.
Therefore, the only difference between the domain name and the Complainantís "holiday inn" mark is the addition of the word "Michigan" and the generic top level domain name identifier <com>. The addition of the geographical term "Michigan" does not prevent a finding of confusing similarity. In fact, in the Panelís review, the addition of the suffix "Michigan" is apt to suggest that the Complainantís goods and services are provided in that particular location.
This reasoning is consistent with many previous WIPO decisions in which it has been ruled that the addition of a country or a city name does not distinguish the domain name from the trademark (see among other BP p.l.c.v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; The Nasdaq Stock Market, Inc. v Vidudala Prasad, WIPO Case No. D2001-1493).
Therefore the Panel finds that the Domain Name is confusingly similar to the Complainantís trademarks pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant for using the "holiday inn" mark; that the Respondent has not been commonly known by the Domain Name and is in fact a franchisee of a competitor; that the Respondent is not, and has never been, commonly known by the Domain Name. The Panelís view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
On the other hand, the Respondent has not submitted a proper Response, therefore, has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in registering the Domain Name pursuant to Paragraph 4(b) of the Policy.
C. Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainantís trademarks are very well known worldwide, it is very unlikely that the Respondent, at the time he registered the Domain Name, was not aware that he was infringing the Complainantís trademarks.
As regards the Respondentís use of the Domain Name to attract internet users to his competing hotel franchise, the Panelís view is that, the diversion of the Domain Name to his hotel franchise, a competitor of the Complainant, is consistent with the finding that the Domain Name was registered and is being used in bad faith (see Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568).
The Complainant has provided evidence that the Respondent is using the confusion in the consumersí minds over the use of "holiday inn" to divert users for commercial gain and for personal gain. In particular, users entering the website addressed at "www.holidayinnmichigan.com" were diverted to promote the Respondentís competing hotel franchise. 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, 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 hotel rooms and services. This conduct falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and has been using the Domain Name in bad faith.
In addition, the Respondentís attempt to sell the Domain Name to the Complainant at a value in excess of out-of-pocket expenses is prima facie evidence of bad faith (see EMI PLC v. Jason Mace, WIPO Case No. D2000-0712).
In the light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
For the foregoing reasons, the Panel orders that the Domain Name <holidayinnmichigan.com> be transferred to Complainant.
Thomas P. Pinansky
Dated: October 16, 2003