WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-Continental Hotels Corporation v. Cheap-Hotel-Room, Inc.
Case No. D2004-1041
1. The Parties
The Complainant is Inter-Continental Hotels Corporation, Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC, Atlanta, Georgia, United States of America.
The Respondent is Cheap-Hotel-Room, Inc., Salem, New Hampshire, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <wwwichotelsgroup.com> and <wwwintercontinental.com>, are registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2003. On December 30, 2003, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain names at issue. On the same day, Go Daddy Software, Inc. 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 this proceeding began on January 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 13, 2004.
The Center appointed Dennis A. Foster as the sole panelist in this matter on February 27, 2004. 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.
This Decision is due by March 12, 2004.
4. Factual Background
The Complainant operates a chain of international hotels under the name INTERCONTINENTAL. The Complainant also is the owner of numerous INTERCONTINENTAL trade and service marks registered in the United States and various other countries (Complaint Exhibit C). The Complainant is furthermore the owner of Internet domain names that include <intercontinental.com>, <inter-continental.com> and <ichotelsgroup.com> (Complaint Exhibit E). The Complainantís <ichotelsgroup.com> web site has been operating since January 2003.
The Respondent registered the disputed domain names <wwwintercontinental.com> and <wwwichotelsgroup.com> on June 26, 2003 (Complaint Exhibit A).
5. Partiesí Contentions
- The domain names <wwwintercontinental.com> and <wwwichotelsgroup.com> are identical and confusingly similar to Complainantís INTERCONTINENTAL and ICHOTELSGROUP trademarks.
- The Complainant is the owner of several registered trademarks and service marks for its INTERCONTINENTAL brand, including a number of registrations in the United States of America.
- Complainantís right to use the INTERCONTINENTAL marks registered in the United States under nos. 1,724,111; 1,635,689; 890,271 and 877,549 has become incontestable under U.S. law.
- Moreover, Complainant owns more than 200 registrations for its INTERCONTINENTAL marks worldwide (Complaint Exhibit D).
- In addition to the foregoing registrations in the United States and throughout the world for the mark INTERCONTINENTAL, Complainant has accrued trademark rights by virtue of its long and continuous use of the marks INTERCONTINENTAL and IC HOTELS GROUP, the abbreviated version of the trademark of the hotel company bearing the Intercontinental name. Complainant or its predecessor in interest has used its INTERCONTINENTAL mark in commerce in the United States since at least as early as 1948, and the IC HOTELS GROUP mark since at least as early as 2003.
- Complainant owns, manages and franchises the INTERCONTINENTAL hotel brand globally. Currently, there are approximately one hundred forty (140) INTERCONTINENTAL and ICHOTELSGROUP marks. The marks have developed significant goodwill in the minds of consumers throughout the world.
- Complainant owns more than two hundred (200) domain names incorporating its marks, including <intercontinental.com>, and <ichotelsgroup.com> (Exhibit E). At Complainantís "www.intercontinental.com" and "www.ichotelsgroup.com" websites, Internet users can make reservations for any of Complainantís worldwide INTERCONTINENTAL brand hotels and any of the more than 3,300 hotels in the InterContinental Hotels Group family of brands, including HOLIDAY INN. These websites have been operating since July and January 2003, respectively. Complainant estimates that its websites receive an average of more than three hundred seventy thousand (370,000) visits per month.
- Likewise, by registering domain names that consist of the "www" prefix followed by Complainantís mark, Respondent is "typo squatting" on Complainantís famous trademarks. Respondent has registered these domain names in an effort to divert traffic when a consumer inadvertently fails to type the "dot" or period between the common third-level domain "www" and the second-level domain comprising Complainantís marks. The "www" prefix has no distinguishable characteristics, and thus the disputed domain names are identical or confusingly similar to Complainantís well-known marks.
- The Respondent has no rights or legitimate interests in the disputed domain names <wwwintercontinental.com> and <wwwichotelsgroup.com>. Respondent is not affiliated with Complainant, is not a licensee of Complainantís trademarks as a domain name or otherwise.
- The Respondent has never used, or made preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Respondent is using the disputed domain names to divert traffic to websites that offer hotel reservation services in competition with Complainant, which is not a bona fide offering of goods or services.
- Respondent is not, and has never been, commonly known by the disputed domain names. Respondent has registered the disputed domain names under the name <cheap-hotel-room.com>.
- The Respondent is not making a legitimate, non-commercial or fair use of the disputed domain names. To the contrary, the Respondent is making a commercial use of the disputed domain names with the intent for commercial gain by misleading consumers looking for the Complainantís own website.
- The disputed domain names were registered and are being used in bad faith. Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service at its website.
- Via the disputed domain names, Respondent provides hotel reservation services for hotels around the world. Once a consumer types either of the disputed domain names into the web address locater, the user is redirected to Respondentís website at "www.cheap-hotel-room.com". There, the user can reserve hotel rooms at any number of different hotel brands, the majority or which are not affiliated or associated with Complainant, but are competitors of Complainant (Exhibit F).
- Similarly, Respondent is attempting to attract members of the public looking for InterContinental brand hotel rooms, and then providing links to websites featuring the hotel rooms of Complainantís competitors.
- Respondent has registered and is using the disputed domain names in bad faith, in an effort to intentionally attract for commercial gain Internet users to the Respondentís website or other online locations, by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation or endorsement of the Respondentís website or location, or a product or service on the Respondentís website or location, in violation of the Policy.
- The disputed domain names should be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has exhibited copies of a number of United States Patent and Trademark Office registrations for its mark INTERCONTINENTAL HOTELS and variations on this name. Among these are service mark registration no. 1,724,111 registered on October 13, 1992, for INTER.CONTINENTAL HOTELS in international class 35 for conference and management services; and service mark no. 1,635,689 dated February 19, 1991, for INTER-CONTINENTAL also in international class 35 (Complaint Exhibit C). The Panel finds the disputed domain name, <wwwintercontinental.com>, is identical to the Complainantís INTERCONTINENTAL trademark. It is well-settled under the Policy that neither the top level indicator ".com" nor the world-wide web indicator "www" should be taken into account when analyzing for identity or confusing similarity (Here the Panel is following the authority the Complainant has cited, i.e., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, July 13, 2000; and Edmunds.com, Inc. v. WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937, August 31, 2001).
On the other hand, the Complainant also contends it has service mark rights in the name IC Hotels Group. Complainant contends it has used this name as a service mark since January 2003, at the website "www.ichotelsgroup.com". The Panel finds that the Complainantís service mark rights in the name INTERCONTINENTAL HOTELS do not of themselves give the Complainant service mark rights in the name IC Hotels Group or the disputed domain name <wwwichotelsgroup.com>. And given the brevity of time the Complainant contends it has been using the name IC Hotels Group on the Internet since January 2003, and given further that the name appears to be primarily a trade name rather than a service mark, the Panel is unwilling to find that the Complainant has acquired common law trademark or service mark rights in the name. (see e.g., Lukas Bank S.A. v. Express Ventures Ltd., WIPO Case No. D2000-0328, August 3, 2000, where the panel found that a trade name as such is not sufficient to establish mark rights.)
The Panel thus finds the Complainant has not carried its burden of proof under 4(a)(i) of the Policy for the disputed domain name <wwwichotelsgroup.com>. Since the Complainant must prevail at each step of proof under paragraph 4(a)(i-iii) of the Policy for each contested domain name, the Panel need not consider the disputed domain name <wwwichotelsgroup.com> for the remainder of this Decision.
B. Rights or Legitimate Interests
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name <wwwintercontinental.com> because the "Respondent is not affiliated with Complainant, is not a licensee of Complainant, and is not authorized by Complainant to use any of Complainantís trademarks as a domain name or otherwise." The Complainant contends, further, that the Respondent is using the disputed domain name to refer the public to hotels that compete with the Complainant. The Respondent is in default in this proceeding and thus has not come forward to attempt to demonstrate rights or legitimate interests in the disputed domain name. The Panel thus finds the Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent uses the disputed domain name <wwwintercontinental.com> to connect to another web site of Respondentís, "www.cheap-hotel-room.com". At this latter site, the Respondent directs clients to hotels other than the Complainantís (Complaint Attachment F). The Complainant contends this is proof the Respondent is in violation of the Policy at paragraph 4(b)(iv): the Respondent is using the Complainantís trademark to attract the public to Respondentís websites for commercial gain (Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132, January 24, 2003). The Panel finds this is true, and that the Complainant has carried its burden of proof under the Policy (paragraph 4(a)(iii) to show that the Respondent registered and is using the disputed domain name in bad faith.
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 <wwwichotelsgroup.com> remain registered to the Respondent. But the domain name <wwwintercontinental.com> is ordered transferred to the Complainant.
Dennis A. Foster
Dated: March 12, 2004