WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents Hotels Inc. v. Registrant : St Kitts Registry
Case No. D2007-0758
1. The Parties
The Complainant is Six Continents Hotels Inc., Atlanta, Georgia, United States of America, represented by The Gigalaw Firm, LLC, United States of America.
The Respondent is Registrant : St Kitts Registry, of Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <prorityclub.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2007, naming the Respondent as “Registrant : Whois Data Shield”. On May 24, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 8, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Registrant : St Kitts Registry is listed as the registrant and providing the contact details. The Center accordingly conveyed the disclosed registrant details to the Complainant and the Complainant filed an amendment to the Complaint on June 13, 2007. The Center verified that the Complaint together with the amendment to 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”).
The amendment to the Complaint was a change in the named Respondent. The initial registrant indicated in the Whois database was “Registrant : Whois Data Shield”, an entry used to mask Whois data. It was changed to the registrant named as Respondent hereinabove. The record shows that the name of the registrant was last amended more than two weeks after the Complaint was filed. The Panel is proceeding, therefore, against the entity currently (i.e., in the amended Complaint) identified as registrant, acknowledging that reasonable steps were taken by the Complainant to follow a “moving target”.
The Panel also notes that notification of the complaint was sent by the Center to the initial Whois-identified contact and to the “new” registrant. It can be assumed that both entities are aware of this proceeding. Neither one has chosen to file a response.
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 June 19, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2007.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 14, 2007. 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 is one of a number of companies collectively known as the InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups. Companies within IHG own manage a loyalty program known as Priority Club Rewards. The Complainant or its affiliates own at least 146 registrations in at least 115 countries or geographic regions worldwide for trademarks that consist of or contain the mark PRIORITY CLUB. The Complainant is also the registrant of at least 56 domain names that consist of or contain the mark PRIORITY CLUB or variations thereof.
5. Parties’ Contentions
The Respondent is the registrant of, and is using, the disputed domain name, which contains a typographical misspelling of the Complainant’s PRIORITY CLUB trademark. As was held in previous panel decisions under the Policy, a domain name containing a typographical misspelling of a complainant’s trademark, to create a word that does not exist in the English dictionary and does not change the overall impression of the mark (as here) is confusingly similar to the complainant’s trademark. Accordingly, the Domain Name is confusingly similar to Complainant’s PRIORITY CLUB mark.
The Respondent has no rights or legitimate interests in and is not commonly known under the domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the PRIORITY CLUB. The Respondent has not used, nor made preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name in connection with a website that offers hospitality services in competition with Complainant. The Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain. The Respondent is using the Domain Name misleadingly to divert consumers or to tarnish Complainant’s PRIORITY CLUB mark.
The Respondent has registered and used the Domain Name in bad faith, primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. The Respondent is using the Domain Name in connection with a website that offers services competitive with those offered by Complainant, namely, hotel rooms. This usage clearly indicates that Respondent intentionally uses the domain name. In addition, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Priority Club Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy. There is no doubt that Respondent knew of Complainant’s Priority Club Trademarks when the Respondent registered the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, 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 (see below, section A);
ii. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
iii. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
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. Moreover, 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 therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
The record shows that the Complainant ownes several registrations of the PRIORITY CLUB trademark. The Panel recognizes that the Complainant has rights in the mark PRIORITY CLUB for the purpose of this administrative proceeding.
It is also clear that the Domain Name is confusingly similar with the Complainant’s trademark. This is a typical case of “typo-piracy” or typosquatting. Several panel decisions under the Policy have recognized this phenomenon, since World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256. As the three-member panel noted in Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517:
“Typosquatting” involves the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark. See, e.g., Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the complainant’s commercial website and divert them to the respondent’s website. See Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
The Panel thus finds for the Complainant on this first element.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
“(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
“(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence of any of the above. The Complainant positively asserts the opposite.
In view of the use of the disputed domain name (see finding under the third element), and in the absence of a rebuttal by the Respondent, the Panel thus finds for the Complainant on this second point.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product on the Respondent’s website or location.
The evidence of bad faith under Paragraph 4(b)(iv) is manifestly present. The webpage to which the domain name resolves identifies providers of services that compete with those of the Complainant. The typosquatting combined with those references to competitors (other hotels) leaves little room to doubt that the registrant knew the Complainant’s PRIORITY CLUB mark.
The Panel finds for the Complainant on the third element.
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 <prorityclub.com> be transferred to the Complainant.
Daniel J. Gervais
Dated August 20, 2007