WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Amjad Kausar also known as InterMos

Case No. D2003-0663

 

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 Amjad Kausar, of Karachi, Pakistan; also known as InterMos, Moscow, Russian Federation.

 

2. The Domain Names and Registrar

The disputed Domain Names are <hoildayinnexpress.com>, <holidainn.com> and <holidyinn.com> are registered with eNom.

 

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 eNom a request for registrar verification in connection with the Domain Names at issue. eNom did not respond to the request for registrar verification. The Center determined that according to the relevant WHOIS confirmation that the Domain Names specified in the Complaint are registered with eNom, 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 September 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 2, 2003.

The Center appointed Ross Carson as the sole panelist in this matter on October 23, 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

HOLIDAY INN hotels are located throughout the world in such diverse locations as small towns, major cities, along quiet highways and near bustling airports. With more than l, 567 full-service hotels in over 70 countries, including the Russian Federation and Pakistan, the HOLIDAY INN brand constitutes one of the Complainantís flagship brands and is the most global hotel brand and the most widely recognized lodging brand in the world. (Annex 4) The Complainant also owns, operates or franchises HOLIDAY INN EXPRESS hotels, a brand extension of the HOLIDAY INN brand, for value-oriented guests in more than 1000 locations throughout the world. (Annex 4)

The Complainant has spent close to US $1 billion worldwide, at a current rate of about US $46 million per year in advertising and promoting the HOLIDAY INN mark as well as its HOLIDAY INN formative marks. The Complainant itself and through its franchisees have extensively used these marks throughout the United States and the world to promote the Complainantís and its authorized usersí goods and services. As a result of the Complainantís activities, it has acquired substantial goodwill in these marks.

The Complainant owns all rights, titles and interests in and to the service mark HOLIDAY INN, U.S. 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; the service mark HOLIDAY INN EXPRESS, U.S. Registration No. 1,651,851, issued July 23, 1991, in international class 42 in connection with hotel and restaurant services claiming a date of first use and first use in commerce of October 4, 1990; and the service mark HOLIDAY INN EXPRESS and Design, U.S. Registration No. 2,207,318, issued December 1, 1998, in international class 42 in connection with hotel and restaurant services claiming a date of first use and first use in commerce of October 4, 1990. (Annex 5) Inclusive of these marks, the Complainant is also the owner of all rights, titles and interests 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, Pakistan, the Russian Federation and the United States. (Annex 5)

The Complainant also owns over 1,100 domain names, including the domain names <holiday-inn.com>, <holidayinn-hotels.com>, <holidayinntravel.com>, <holidayinnonline .com>, <holidayreservations.com>, <holidayinnworldwide.com>, and <hiexpress .com>, and operates web sites associated therewith, which provide a wide variety of information on the Complainantís and its authorized usersí HOLIDAY INN and HOLIDAY INN EXPRESS hotels. (Annex 6) These web sites are used by millions of consumers of hotel services each year with online reservations growing by 80% in 2002 to 4.5 million room nights. (Annex 4)

 

5. Partiesí Contentions

A. Complainant

Respondent-Fictitious Names

The Complainant submits that a review of the following decisions and submitted evidence confirms that "Amjad Kausar" and "InterMos" are clearly fictitious names and that the Domain Names in this proceeding are controlled by the same person or entity.

The Respondent using the fictitious names "Amjad Kausar" and "InterMos" has been found to have registered and used numerous domain names in bad faith in UDRP proceedings. See, e.g., Federated Western Properties, Inc. v. Amjad Kausar, WIPO Case No. D2003-0265 (Kausar-typosquatting, Registrar eNom, Inc., online casino/gambling site); EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012 (Kausar-typosquatting, Registrar eNom, Inc., online casino/gambling site); Daddyís Junky Music Storres, Inc. v Amjad Kausar, National Arbitration Forum Case No. FA0301000140598 (Kausar-Registrar, eNom, Inc., gito.com web site); Ticketmaster Corporation v Amjad Kausar, WIPO Case No. D2002-1018 (Kausar- Registrar, eNom, Inc., Virtual Reality Casino link, gito.com web site); Alta Vista Company v Amjad Kausar, WIPO Case No. D2002-0934 (Kausar-Registrar, eNom, Inc., competing web site, links to gambling sites); Sterling Jewelers, Inc. v InterMos and Cosmos1, WIPO Case No. D2002-0899 (InterMos Ė pop-up ads); Residential Equity, LLC v. Amjad Kausar, National Arbitration Forum Case No. FA0209000125266 (Kausar-typosquatting, Registrar, eNom, Inc., competing web site); Northwest Airlines, Inc. v. Amjad Kausar, National Arbitration Forum Case No.FA0209000124851 (Kausar Ė typosquatting, Registrar, eNom, Inc., "VIP Fares" web site); Zale Canada Co. v. Intermos, National Arbitration Forum Case No. FA0208000117381 (InterMos Ė typosquatting, website links to competing vendors and credit card, casino and pornography ads); Wachovia Corporation v. InterMos, National Arbitration Forum Case No. FA0111000102520 (InterMos Ė online gambling); Bank of America Corporation v InterMos, National Arbitration Forum Case No.FA0006000095092 (InterMos Ė typosquatting, banner ads and other commercial advertisements).

The Complainant submits that the previous decisions in which the registrants were named as Respondents together with Complainantís evidence (Annex 1, Annex 7) shows that "Amjad Kausar" and "InterMos" are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified or proper. Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899 (Annex 10). The evidence submitted by the Complainant (Annex 1, Annex 7) supports the conclusion that on a balance of probabilities that: (i) the corresponding whois records all provide false contacts and false addresses; (ii) each of the Domain Names have been directed or are currently directed to the same web sites, banner and pop-up advertisements and affiliate program of a third party commercial web site that is a competitor of the Complainant; (iii) each of the Domain Names are registered with the same Registrar, use the same name servers, have the same IP address and are on the same network in the same location; (iv) each of the Domain Names incorporates a trademark of a third party; and (v) the "registrants" of the Domain Names have a well-known pattern of registering and using domain names in bad faith. It is therefore submitted that "Amjad Kausar" and "InterMos" are the same person or entity, or entities controlled by the same person or entity, so that the filing of the Complaint is justified and proper.

Legal Grounds

Identical or Confusingly Similar

The Complainantsí registered trademarks HOLIDAY INN and HOLIDAY INN EXPRESS have been extensively used for many years throughout the world becoming two of the most widely recognized lodging brands in the world.

The Domain Names in dispute are misspellings of one or the other of the Complainantís trademarks and are confusingly similar to one or the other or both of the Complainantís trademarks. Six Continent Hotels, Inc. v. Party Night, Inc., WIPO Case No. D2003-0176. (Annex 11)

Rights or Legitimate Interests

The Complainant submits that based upon Complainantís numerous trademark and service mark registrations for, and the goodwill and notoriety associated with the HOLIDAY INN mark and HOLIDAY INN EXPRESS mark, it is impossible to conceive of any circumstance in which the Respondent could legitimately use the Domain Names without creating a false impression of association with the Complainant. Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132, (Annex 13)

The Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. The Respondent has been and is trading on the Complainantís trademarks and goodwill associated herewith by registering and using these Domain Names containing misspellings thereof to lure consumers seeking web sites of the Complainant to the Respondentís sites. Northwest Airlines, Inc. v. Amjad Kausar, National Arbitration Forum Case No. FA0209000124851 (Respondent, Kausar, using a confusingly similar domain name to divert Internet users interested in the complainantís services to a competing web site is not use in connection with a bona fide offering of goods or services or fair use). (Annex 14)

Registered and Used in Bad Faith

The Complainant submits that the Respondentís uses of the Complainantís trademarks in the Domain Names is clearly sufficient evidence of the Respondentís intent to attract confused Internet users to its sites for commercial gain. The Respondent has also associated its sites 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 an affiliate program based upon redirection of the Domain Names to these sites constitutes additional commercial gain. Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 see (Annex 15). In addition, using a domain name to lure Internet users to gambling web sites has been found to constitute bad faith under the Policy. Telstra Corporation Ltd. v. David Whittle, WIPO Case No. D2001-0434 (redirection of Internet users to a gambling site through the use of a confusingly similar domain name constitutes bad faith registration and use). (Annex 23) The Complainant further submits that the practice of providing false contact details in the whois records of the Domain Names has been found to constitute bad faith under the Policy. Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899. (Annex 10) The Complainant submits that the above evidence establishes that the Respondent has registered and is using the Domain Names in bad faith and that Element (iii) has been satisfied.

B. Respondent

The Respondent did not reply to the Complainants contentions.

 

6. Discussion and Findings

Preliminary Issue: Filing of a Single Complaint

The Complainant names two Respondents "Amjad Kausar" and "InterMos".

The Domain Names <hoildayinnexpress.com> and <holidainn.com> show "Amjad Kausar" having an address Karachi, Pakistan as the Registrant. The Domain Name <holidyinn.com> shows "InterMos" having an address in Moscow, Russian Federation as the Registrant. In circumstances where two Respondents are named in relation to different domain names, the Complaint will be considered appropriate only if the Panel can be satisfied that the two Respondents are in fact the same entity. Sterling Jewelers, Inc., v. InterMos and Cosmos1, WIPO Case No. D2002-0899. (Annex 10)

Both "Amjad Kausar" and "InterMos" were individually named Respondents in numerous earlier UDRP proceedings involving typosquatting. The decisions are reviewed in Complainant's submission in paragraph 5 immediately above.

The Complainantís evidence supports a finding that (i) the whois records of the Domain Names in dispute provide false contacts and addresses; (ii) each of the Domain Names have been directed or are currently directed to the same web sites, banner and pop-up advertisements and affiliate program of a third party commercial web site that is a competitor of the Complainant; (iii) each of the Domain Names are registered with the same Registrar, use the same name servers, have the same IP address and are on the same network in the same location; (iv) each of the Domain Names incorporates a trademark of the Complainant and (v) the "registrants" of the Domain Names have a well-known pattern of registering and using domain names in bad faith. Based on the prior decisions showing the registrants adopting misspellings of the trademarks of the Complainant or others in domain names and use of the domain names in bad faith; the Complainant's evidence in this case, summarized immediately above, and the failure of the registrants to file a response, the Panel finds that "Amjad Kausar" and "InterMos" are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complainant is justified and proper. Sterling Jewelers, Inc. v. InterMos and Cosmosl, WIPO Case No. D2002-0899. (Annex 10)

Principal Issues

Paragraph 15 (a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

In view of Respondentís failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainantís undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainantsí registered trademarks HOLIDAY INN and HOLIDAY INN EXPRESS have been registered and extensively used for many years throughout the world becoming two of the most widely recognized lodging brands in the world.

The Domain Names in dispute are misspellings of one or the other of Complainantís trademarks and are confusingly similar to one or the other or both of the Complainantís trademarks. Six Continent Hotels, Inc. v Party Night, Inc., WIPO Case No. D2003-0176. (Annex 11)

The Complainant has proven that the Domain Names registered by the Respondent are confusingly similar to the extensively used and widely recognized registered trademarks of the Complainant.

B. Rights or Legitimate Interests

Based upon Complainantís numerous trademark and service mark registrations for and the goodwill and notoriety associated with the HOLIDAY INN mark and HOLIDAY INN EXPRESS mark, it is impossible to conceive of any circumstance in which the Respondent could legitimately use the Domain Names in dispute without creating a false impression of association with the Complainant. Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132. (Annex 13)

The Respondent had the opportunity to file a Response putting forth evidence under paragraph 4(a) of the Policy entitled "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint." The Respondent chose not to file a Response to the Complaint. The Respondent did not register or use the confusingly similar Domain Names until many years after registration of Complainantís well known trademarks and use of the Domain Names in dispute by the Respondent was not in connection with a bona fide offering of goods or services. There is no evidence that the Respondent was or is commonly known by the Domain Names in dispute.

The Respondent has been and is trading on the Complainantís trademarks and goodwill associated therewith by registering and using these Domain Names in dispute containing misspellings of Complainant's trademarks to lure consumers seeking web sites of the Complainant to the Respondentís sites. Northwest Airlines, Inc. v. Amjad Kausar National Arbitration Forum Case No. FA0209000124851. (Annex 14) Such misuse of Complainantís trademarks support a finding of an illegitimate interest.

The Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the Domain Names in dispute.

C. Registered and Used in Bad Faith

The Respondent registered the Domain Names in dispute, which are confusingly similar with the Complainantís well-known trademarks, many years after the Complainantís trademarks were registered and widely used and well known in many countries throughout the world. The Respondent has also associated its sites with numerous banner and pop-up advertisements from which it derives substantial revenue while trading on the Complainantís image and goodwill.

The Respondent's participation in an affiliate program based upon redirection of the Domain Names to these sites constitutes additional commercial gain. Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018. (Annex 15) In addition, using a domain name to lure Internet users to gambling web sites constitutes bad faith under the Policy. Telstra Corporation Ltd. v. David Whittle, WIPO Case No. D2001-0434. (Annex 23) The practice of providing false contact details in the whois records of the Domain Names is also evidence of use of the domain names in dispute in bad faith. Sterling Jewelers, Inc. v. InterMos and Cosmos1. (Annex10) WIPO Case No. D2002-0899.

The Panel finds that the Complainant has proven that the Respondent has registered and used the Domain Names in dispute in bad faith.

 

7. Decision

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 <hoildayinnexpress.com> and <holidainn.com>and<holidynn.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: November 5, 2003