WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels, Inc. v. Asia Ventures
Case No. D2003-0659
1. The Parties
The Complainant is Six Continents Hotels, Inc., of Atlanta, Georgia United States of America, represented by Robin Blecker & Daley, United States of America.
The Respondent is Asia Ventures, of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <holidayinnsunspreeresort.com> is registered with The Registry at Info Avenue d/b/a IA Registry.
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 The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On the same date, The Registry at Info Avenue d/b/a IA Registry 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 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 18, 2003.
The Center appointed Knud Wallberg as the sole panelist in this matter on September 30, 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 Complainant 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 brands such as CROWNE PLAZA®, HOLIDAY INN®, HOLIDAY INN EXPRESS®, HOLIDAY INN SELECT®, HOLIDAY INN SUNSPREE®, INTERCONTINENTAL®, and STAYBRIDGE SUITES®.
With more than 1,567 hotels in over 70 countries, the HOLIDAY INN® brand constitutes one of the Complainantís flagship brands. Particularly, with respect to China and Hong Kong, the Complainant and its authorized users operate approximately 21 HOLIDAY INN® hotels in China, one of which is located in Hong Kong.
The Complainant also owns, operates or franchises HOLIDAY INN SUNSPREE® resorts, a brand extension of the HOLIDAY INN® brand, in more than 25 locations in the United States, Canada, the Caribbean and Mexico.
The Complainant maintains an active trademark-policing program throughout the United States and the world to investigate, prosecute and deter infringement of its marks. The Complainant owns all right, title and interest in and to the services marks HOLIDAY INN®, HOLIDAY INN SUNSPREE®, HOLIDAY INN SUNSPREE RESORTS and Design®, SUNSPREE® in the US.
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.
This Complaint is based on the Complainantís U.S. and foreign registrations for the marks HOLIDAY INN®, HOLIDAY INN SUNSPREE®, HOLIDAY INN SUNSPREE RESORTS and Design®, SUNSPREE® and other HOLIDAY INN® formative marks, as shown in the attached chart and corresponding registration information (hereinafter referred to as the "Complainantís Marks").
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>, <holidayinnworldwide.com>, <holidayinnsunspreeresorts.com>, and <sunspreeresorts.com> and operates web sites associated therewith, which provide a wide variety of information on the Complainantís and its authorized usersí HOLIDAY INN® hotels and HOLIDAY INN SUNSPREE® resorts.
5. Partiesí Contentions
(a) The Domain Name <holidayinnsunspreeresort.com> is identical or confusingly similar, to the Complainantís marks.
The marks HOLIDAY INN®, HOLIDAY INN SUNSPREE®, HOLIDAY INN SUNSPREE RESORTS and Design® and SUNSPREE®, which are the subject of numerous registrations owned by the Complainant in connection with its hotel services, are inherently distinctive, have been used extensively for many years throughout the world in connection with its hotels and services, and are some of the most widely recognized lodging brands in the world. The second-level domain "HOLIDAYINNSUNSPREERESORT" of the Domain Name comprises not only the Complainantís word marks HOLIDAY INN® and SUNSPREE® but also the Complainantís word mark HOLIDAY INN SUNSPREE® in its entirety as well as the wording in the Complainantís mark HOLIDAY INN SUNSPREE RESORTS and Design®, except for the omission of the letter "s" in the word "resorts." Since domain names are currently limited to text, the second-level domain is confusingly similar, if not virtually identical to the words "HOLIDAY INN SUNSPREE RESORTS" constituting the textual element of the Complainantís mark HOLIDAY INN SUNSPREERESORTS and Design®.
Further when considering that the word "resorts" is descriptive of the services offered by the Complainant under its HOLIDAY INN SUNSPREE® mark, such does not distinguish the Domain Name from the Complainantís mark but rather supports a finding that the Domain Name is identical, if not confusingly similar, thereto. See, e.g., Six Continents Hotels, Inc. v. Interbase, Inc., WIPO Case No. D2002-1045 (domain name <royalpalmcrowneplazaresort.com> identical to the Complainantís ROYAL PALM CROWNE PLAZA RESORT hotel name and service mark).
Based upon the above, paragraph (i) is therefore submitted as being satisfied.
(b) The Respondent has no rights or legitimate interests in the Domain Name <holidayinnsunspreeresort.com>.
The Complainantís HOLIDAY INN® mark and HOLIDAY INN® formative marks, such as the marks HOLIDAY INN SUNSPREE® and HOLIDAY INN SUNSPREE RESORTS and Design®, are inherently distinctive and have been used extensively for many years throughout the world in connection with the Complainantís hotels and services. Indeed, the HOLIDAY INN® brand along with its HOLIDAY INN SUNSPREE® brand extension constitutes one of the most widely recognized lodging brands in the world. The idea thus suggested by the domain name <holidayinnsunspreeresort.com>, in view of the Complainantís marks and the Complainantís long-time use thereof, is that any possible goods or services offered on a web site accessible from this Domain Name are somehow authorized by the Complainant. See Caterpillar Inc. v. Matthew Quin, WIPO Case No. D2000-0314, (the domain names were confusingly similar to the complainantís long- used and inherently distinctive mark because "the idea suggestedÖ is that the goods or services offered in association with domain names are manufactured by or sold by the complainant").
Based upon the numerous trademark and service mark registrations for, and the fame, goodwill and notoriety associated with, the HOLIDAY INN® mark and HOLIDAY INN® formative marks, it is impossible to conceive of any circumstance in which the Respondent could legitimately use the Domain Name without creating a false impression of association with the Complainant. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007, (no right or legitimate interest because the complainantís famous mark "is not one that the Respondent would legitimately choose in the context of provision of goods, services or information via a Web site unless seeking to create an impression of an association with the complainant"); Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132, ("it is inconceivable to the Panelist how a party could demonstrate it had a legitimate interest in the Domain Name, when HOLIDAY INN HOTELS can only be understood to refer to the Complainant").
The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Without authorization from the Complainant, the Respondent registered and posted at the Domain Name a web site promoting its "RocketSearch" site with a "Welcome to www.holidayinnsunspreeresort.com" title, a prominently displayed banner advertisement for a competitor travel service, links to competitor hotels and services and pop-up advertisements from which the Respondent gains commercial benefit. Specifically, the Respondent traded on the Complainantís marks and goodwill associated therewith by registering and using a Domain Name containing a misspelling thereof to lure consumers seeking a web site of the Complainant to the Respondentís site. See The Sportsmanís Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116 (Respondent, Asia Ventures, "deliberately selected the domain name with a view to attracting visitors to its site, anticipating that it would attract visitors intending to reach the [c]omplainantís site, but misspelling the name or inaccurately recollecting the name").
Such unauthorized registration and use of the Complainantís marks in the Domain Name merely serves to confuse and mislead Internet users who are seeking the Complainantís HOLIDAY INN® and HOLIDAY INN SUNSPREE® hotels. Yet, even having been placed on notice concerning the unauthorized registration and use of the Domain Name, the Respondent continues to maintain the registration of the Domain Name and has renewed the registration for another year. (Annex 1) The Respondent cannot therefore "sensibly be said to have any rights or legitimate interests" in respect of the Domain Name.
Moreover, the Respondentís use of the Domain Name to generate revenue based on clickthrough traffic to banner and pop-up advertisements posted on its site and through its mousetrappings of visitors visiting the site cannot constitute a bona fide offering of goods or services. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 (respondentís use of the domain name <billoriley.com> to generate revenue by charging a fee for what is identified as advertisement and affiliate fees is not a bona fide offering of goods or services).
Further, there is no evidence that the Respondent, as an individual, business, or other organization, has been or is commonly known by the Domain Name or that the Respondent has acquired any trademark or service mark rights in the Domain Name. The Complainant has not licensed, contracted, franchised or otherwise permitted the Respondent in any way to use any of the Complainantís marks or to apply for any domain name incorporating any such marks. Furthermore, at no time has the Respondent ever had any authorization to register or use the Domain Name. See also Six Continents Hotels, Inc. v. Damir Kruzicevic, WIPO Case No. D2002-0674. Nor can the site that the Respondent has posted at the Domain Name be considered legitimate non-commercial use of the Domain Name. Indeed, the Respondentís intent in registering a Domain Name incorporating the Complainantís marks and posting a site promoting the search engine affiliate program (i.e., Applied Semantics) and displaying and linking to numerous banner and pop- up advertisements provided through an affiliate program (i.e., Advertising.com) on the site is undoubtedly to further its own commercial gain. See The Sportsmanís Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116, (Respondentís motive was commercial gain by its connection of its "RocketSearch" site with an affiliate program). In addition, based upon such banner advertisements and linking being to competitors of the Complainant, there can be no finding of any legitimate noncommercial or fair use of the Domain Name. See Six Continents Hotels, Inc., fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292, ("[r]espondentís chosen use of the domain names [<holidayinnhotels.com> and <holidayinnsuites.com>] to promote services arguably competitive to, and certainly related to Complainantís services, dispels any doubt as to the lack of fair use and the commercial nature of [r]espondentís unauthorized use").
Based upon the above, it is therefore submitted that the Respondent is not using the Domain Name in connection with any type of bona fide offering of goods or services, is not commonly known by or has any trademark or service mark rights in the Domain Name and is not making any legitimate non-commercial or fair use of the Domain Name. The Respondent therefore has no rights or legitimate interests with respect to the Domain Name, see Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996, (Complainant established "a clear prima facie case of absence of [r]espondentís right or interest in any of the domain names"), and that Element (ii) has been satisfied.
(c) The Respondent has registered and is using the domain name <holidayinnsunspreeresort.com in> bad faith.
(i) It is inconceivable that the Respondent was not aware of the Complainantís marks when the Domain Name was registered. Indeed, it light of the many domain names that are or have been registered to the Respondent incorporating misspellings or variations on the marks of the Complainant or other parties and the fact that the Respondent has no rights or legitimate interests in such domain names, it is apparent that the Respondentís continued maintenance and renewal of the registration of the Domain Name and corresponding web site thereto are to procure a monetary compensation from the Complainant. Thus, the Respondent has registered and continues to use the Domain Name in bad faith by its maintenance of the registration for no purpose other than to hold the Domain Name hostage in order to try and obtain valuable consideration from the Complainant. Based upon the evidence submitted, it is therefore believed that paragraph 4(b)(i) has been satisfied based upon the Respondentís bad faith registration and use of the Domain Name.
(ii) Based upon the evidence submitted, it is readily apparent that the Respondent was well aware of the Complainantís marks when registering and renewing the Domain Name. Viewing the entirety of the Respondentís actions and evidence, the Respondent has therefore prevented the Complainant from reflecting its marks in a corresponding domain name. When coupled with the many registrations by the Respondent of domain names incorporating the marks and variations of marks of others and each having been used by the Respondent to divert visitors to his web sites for commercial gain, such establishes and constitutes evidence of "a pattern of such conduct" by the Respondent. See, e.g., Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056.
paragraph 4(b)(ii) has therefore been satisfied in that the Respondent has registered, renewed and is using the Domain Name in bad faith based upon the Complainant being prevented from reflecting its marks in the corresponding Domain Name and the Respondent having engaged in a pattern of conduct of registering domain names incorporating the marks of third parties.
(iii) The Complainant owns numerous registrations for the mark HOLIDAY INN® and HOLIDAY INN® formative marks for use in connection with its hotels and services. Moreover, the Complainant also uses such marks on its web sites in connection with such services wherein Internet users may search for availability of hotel rooms and reserve and pay for such rooms online.
The Respondent prominently displays a banner advertisement for CheapTickets, an online travel service offering flights, hotels, cars and vacation packages at the top of its "RocketSearch" web site as well as links for "Travel", "Hotels," and "Vacations " to travel- related web sites that provide hotel and vacation services in competition with the Complainantís hotels and services. Moreover, before being transferred to these web sites, visitors are bombarded with pop-up and banner advertisements and are asked whether they want to set their homepage to the Respondentís "RocketSearch" site.
Based upon the evidence submitted, the Respondent is specifically directing its web site to travel-related services in competition with the Complainant and is deriving a financial benefit from such direction and redirection of users to such sites, particularly, through banner advertisements, pop-up windows and its affiliate relationships with Applied Semantics and Advertising.com. When viewed with the evidence that the Respondent has no rights or legitimate interests in the Domain Name, it is apparent that the Respondent has registered and using the Domain Name primarily for the purpose of disrupting the business of the Complainant. paragraph 4(b)(iii) has therefore been satisfied in that the Respondent has registered and using the Domain Name in bad faith.
(iv) The Respondent has intentionally attempted to attract for commercial gain Internet consumers to its web site by suggesting an affiliation or association with the Complainantís HOLIDAY INN® and HOLIDAY INN SUNSPREE® hotels by trading upon the image and goodwill associated with these marks and brands by registering and using the Domain Name, in which it has no legitimate rights or interests therein. See, e.g., Six Continents Hotels, Inc. v. eGo, WIPO Case No. D2003-0341; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132; Six Continents Hotels, Inc., fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292; Six Continents Hotels, Inc. v. Damir Kruzicevic, WIPO Case No. D2002-0674; Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996.
Indeed, the Respondent intentionally directs numerous Internet consumers searching for the Complainantís site to the Respondentís competing site. By such registration and use of the Domain Name, in view of the distinctiveness and fame of the Complainantís marks, the Respondent has created a likelihood of confusion with respect to the Complainantís marks as to the source, sponsorship, affiliation and endorsement of the corresponding site and of the services offered on the site. In addition, the Respondentís recent renewal of the Domain Name for an additional year only helps to increase such confusion on the part of Internet users. Furthermore, even if an Internet user did conduct a further investigation and realized that the particular site was not authorized or operated by the Complainant, such does not diminish the fact that substantial confusion, or at minimum, initial interest confusion, has or will occur. See Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, WIPO Case No. D2001- 0491 ("initial interest confusion" of which the respondent took advantage constituted bad faith).
Additionally, the Respondentís use of the Complainantís marks in the Domain Name is clearly sufficient evidence of the Respondentís intent to attract confused Internet users to its site for commercial gain. The Respondent has also associated its site with numerous banner and pop-up advertisements from which it derives substantial revenue while trading on the Complainantís image and goodwill.
Further, the Respondentís apparent participation in affiliate programs with Applied Semantics and Advertising.com constitutes additional commercial gain. See The Sportsmanís Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116, (the respondent, Asia Ventures found to have registered and used Domain Name in bad faith under Paragraphs 4(b)(iv) and 4(a)(iii) of the Policy). (Annex 15) It is therefore once again submitted that the Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(b)(iii) has been satisfied.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis 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.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
The evidence presented by the Complainant demonstrates without doubt that the Complainantís trademark HOLIDAY INN has long been a registered trademark in the United States as well as in the place of residence of Respondent Hong Kong. The mark must be considered famous and has substantial value on account of its recognition and goodwill.
The Complainant has also registered and has been using the mark HOLIDAY INN SUNSPREE RESORTS for a number of years and the Panel is convinced that the mark is known within the relevant circles.
The Panel finds that the domain name <holidayinnsunspreeresort.com> is confusingly similar to the Complainantís mark HOILYDAY INN and HOLIDAY INN SUNSPREE RESORTS. The fact that part of the domain name is misspelled (the missing "s" in the end) does not change this assessment.
The requirement of Paragraph 4(a)(i) is met.
B. Rights or Legitimate Interests
The Complainant has not authorized or otherwise permitted the Respondent to use their trademark including as a part of a domain name. The Complainant further alleges that the Respondent has no rights or legitimate interest in the domain name.
The Respondent has not rebutted this allegation and in view of the Panel it is unlikely that any such rights or interest may exist.
Therefore, the requirement of Paragraph 4(a)(ii) is also met.
C. Registered and Used in Bad Faith
Given the notoriety of the HOILIDAY INN mark and the use of the mark HOLIDAY INN SUNSPREE RESORTS, and based on the proven facts that the domain name is actively used to redirect to a web-site, which inter alia offers competing services, and that pop-up ads for competing services occur when visiting the site, and that the Respondent has been engaged in a pattern of conduct of registering domain names containing others' trademarks, the Panel finds that the requirements of Paragraph 4(a)(iii) are also met.
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 <holidayinnsunspreeresort.com> be transferred to the Complainant.
Dated: October 14, 2003