WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hilton Worlwide; Hilton Hotels Corporation; HLT Domestic IP LLC; HLT International IP LLC v. WhoIs Privacy Service Pty ltd., Customer ID: 17451672649672/ Yorkshire Enterprises Limited, Yorkshire Enterprises
Case No. D2010-1066
1. The Parties
The Complainants are Hilton Worlwide; Hilton Hotels Corporation; HLT Domestic IP LLC; and HLT International IP LLC, of Virginia, United States of America, represented by The GigaLaw Firm, United States of America.
The Respondents are Whois Privacy Service Pty ltd., Customer ID: 17451672649672 of Australia, and Yorkshire Enterprises Limited, Yorkshire Enterprises, of Antigua.
2. The Domain Names and Registrar
The disputed domain names are <embassysuitesdenver.com>, <hiltonhawainvillage.com> and <hiltonhonros.com> and are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2010. On June 29, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the <embassysuitesdenver.com> domain name. On June 30, 2010, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 30, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on July 3, 2010, including the registrar disclosed Respondent name and also requesting the addition of the following domain names: <dobletreehotel.com>, <hiltonhawainvillage.com>, <hiltonhonros.com> and <hiltonhh.com>. On July 5, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the <dobletreehotel.com>, <hiltonhawainvillage.com>, <hiltonhonros.com> and <hiltonhh.com> domain names. On July 6, 2010, Fabulous.com transmitted by email to the Center its verification response concerning the <hiltonhawainvillage.com> and <hiltonhonros.com> domain names and confirming that the Respondent is listed as the registrant and providing the contact details. On July 6, 2010, Fabulous.com sent the Center an email informing that it was not the current registrar for the <dobletreehotel.com> and <hiltonhh.com> domain names. On July 6, 2010, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the <dobletreehotel.com> and <hiltonhh.com> domain names. On July 14, 2010 Power Brand Center transmitted by email to the Center its verification response disclosing registrant and contact information for these disputed domain names which differed from the named Respondent of the domain names <embassysuitesdenver.com>, <hiltonhawainvillage.com> and <hiltonhonros.com>. On July 14, 2010, the Center transmitted this information to the Complainants and informed that the domain names included in the amendment to the Complaint were not all registered by the same domain-name holder. On July 19, 2010 the Complainants requested the Center to exclude the domain names <dobletreehotel.com> and <hiltonhh.com> from the proceeding.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on July 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 11, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 18, 2010. 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 Complainants are global lodging leaders, operating numerous hotels under famous brands such as “Hilton” “Waldorf Astoria”, “Conrad”, Embassy Suites”, etc.
The Complainants have registered numerous trademarks worldwide consisting of or containing the marks HILTON, EMBASSY SUITES and HHONORS in connection with hospitality services.
The disputed domain name <embassysuitesdenver.com> was created on October 6, 2004, <hiltonhawainvillage.com> was created on October 21, 2008 and <hiltonhonros.com> was created on December 17, 2007.
On July 7, 2010 the Respondent Yorkshire Enterprises Limited sent to the Center an email offering to transfer the domain name <embassysuitesdenver.com> to the Complainants.
The Panel accessed the web sites placed at <embassysuitesdenver.com>, <hiltonhawainvillage.com> and <hiltonhonros.com> domain names on August 30, 2010 and there were pay per click advertisements for hotels and lodging services.
5. The Proper Parties
A. The Complainants
In the present case it is possible to proceed with more than one complainant due to the fact that the Complainants are members of the same corporate group and have a common legal interest in these proceedings (see CompuCredit Corp., CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Yezucan Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638).
B. The Respondents
Multiple respondent names may also be permitted in circumstances where a privacy service is employed, such as the present case (see The iFranchise Group v. Jay Bean/MDNH/Moniker Privacy Services , WIPO Case No. D2007-1438).
A registrant that chooses to register through a privacy service and the registrar that provides such anonymous registration should be able to support its consequences. As stated in a previous WIPO UDRP decision, “If ‘PrivacyProtect.org’ wished to disassociate itself from the registration of this domain name it should have done so earlier” (F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854).
6. Parties’ Contentions
The Complainants make the following contentions:
(i) The Complainants` trademarks EMBASSYSUITES, HILTON and HHONORS are well known in the hotel business.
(ii) The disputes domain names are confusingly similar to the Complainants’ trademarks. According to former UDRP decisions neither the beginning of the URL (http://www.) nor the Top Level Domain (.com) have any source-indicating significance. The disputed domain names wholly incorporate the Complainants` registered trademarks. The addition of a geographic name (e.g. “denver”, “hawain”) and the misspelling of the Complainants’ trademark “HHONORS” are not enough to distinguish the domain names from the Complainants’ trademarks.
(iii) The Respondents have no rights or legitimate interests in the disputed domain names. The Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized the Respondents to use their trademarks (EMBASSY SUITES, HILTON and HHONORS). Also, the Respondents have never used or made preparations to use the disputed domain names in connection with a bona fide offering of goods and services. Moreover the Respondents are using the disputed domain names in connection with monetized parking pages that include links to websites that offer competitive services with those offered by the Complainants under the reproduced trademarks. The Respondents have never been commonly known by the disputed domain names and have never acquired any trademarks or service marks in the disputed domain names. The Respondents are making an illegitimate, commercial, and unfair use of the disputed domain names with intent for commercial gain misleadingly to divert consumers.
(iv) The disputed domain names have been registered and are being used in bad faith. The Respondents are using the disputed domain names in connection with monetized parking pages that include links to websites that offer competitive services with those offered by the Complainants under the reproduced trademarks. The Respondents have intentionally attempted to attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondents’ website or of a product or service on Respondents’ website. Also, considering Complainants’ established rights in the reproduced trademarks and the worldwide recognition of these brands, it is likely that the Respondents knew of the Complainants’ trademarks before the domain name registrations. In addition, the Respondents have engaged in a pattern of conduct disguised to prevent owners of trademarks from reflecting them in corresponding domain names. Furthermore, the Respondent Yorkshire Enterprises Limited has lost at least four other previous UDRP proceedings and also is the owner of 6,000 domain names, many of which are identical or confusingly similar to well known brands.
The Respondents did not reply to the Complainants’ contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
Annex 7 to the Complaint demonstrates registrations of EMBASSY SUITES and EMBASSY SUITES HOTELS trademarks in the United States of America ( “USA”) since 1983. Annex J to the amendment shows the Complainant’s registrations of “HILTON” trademarks in the USA since 1966 and Annex L informs of the Complainant’s registrations of HHONORS trademarks in the USA since 1993.
The Panel has no doubt that EMBASSY SUITES, HILTON and HHONORS are trademarks directly connected with the Complainants’ activities. The Panel also recognizes that the EMBASSY SUITES, HILTON and HHONORS trademarks have reached a well-known status in the field of lodging services worldwide.
The trademarks EMBASSY SUITES and HILTON are wholly encompassed within the disputed domain names, which also include the geographical expressions “denver” and “hawain” or the misspelled word ”honros”. The Panel concludes that the addition of these expressions is not sufficient to refute the similarity between the disputed domain names and the Complainants’ trademarks, required under paragraph 4(a)(i) of the Policy.
In a previous WIPO UDRP case F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question”
The expressions “denver” and “hawain” describe places where the complainants Embassy Suites and Hilton’hotels, respectively, operate. Previous UDRP decisions have demonstrated that geographical additions do not generally alter the overall impression of a domain name which includes a Complainant’s mark in its entirety,so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
The domain name <hiltonhonros.com> consists of a misspelling of the Complainants’ trademark HHONORS together with the full inclusion of the Complainant’s HILTON mark.,. This practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201)
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainants’ trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondents’ intent to use or to make preparations to use the domain names in connection with a bona fide offering of goods or services. Indeed, the Complainants filed screenshots of the web pages published at the disputed domain names showing pay per click pages filled with links to competitor’s websites.
The Complainants have not licensed or authorized the usage of its trademarks to the Respondents, and it does not appear from the present record that the Respondents are commonly known by the disputed domain names.
Consequently, the Panel is satisfied that the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the 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 its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
When the disputed domain names were registered the Complainants’ trademarks EMBASSY SUITES, HILTON and HHONORS were already well-known worldwide in the field of lodging services. Therefore, it is not feasible that the Respondents could have been unaware of the Complainants’ reputation and business.
Also, the disputed domain names are being used as a pay-per-click landing pages, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondents:
(i) create a likelihood of confusion with the Complainants’ trademarks;
(ii) obtain click-through revenue from this practice; and
(iii) deprive the Complainants from selling their services to prospective clients who are clearly looking for the Complainants and, at the same time, promote services offered by competitors.
In situations like this, former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. For reference on the subject, it is important to point out that “Respondent’s bad faith registration and use under paragraph 4(b)(iv) of the Policy. is further illustrated by the domain name’s resolution to a PPC parking page with links to websites selling products competing with Complainant’s. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith” Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Finally, the use of a privacy service and the Respondent’ Yorkshire Enterprises Limited precedents in WIPO UDRP cases also help to characterize a pattern of bad faith registration.
Accordingly, the Panel finds that the Complainants have proved that the disputed domain names were registered and are being used in bad faith, satisfying the third element of the Policy.
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, <embassysuitesdenver.com>, <hiltonhawainvillage.com> and <hiltonhonros.com> be transferred to the Complainants.
Dated: September 1, 2010