WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-Continental Hotels Corporation v. James, dsgn factory
Case No. D2011-2046
1. The Parties
The Complainant is Inter-Continental Hotels Corporation of Atlanta, Georgia, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is James, dsgn factory of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <intercontinentallondonhotel.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 21, 2011, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On November 23, 2011, UK2 Group Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 25, 2011, the Center transmitted by email to UK2 Group Ltd a further request for clarification regarding the identity of the Registrar of the disputed domain name. On November 25, 2011, UK2 Group Ltd transmitted by email to the Center its response confirming that all domain names registered through the ICANN accreditation for UK2 Group Ltd are customers of the brand Resell.biz.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 20, 2011.
The Center appointed David Stone as the sole panelist in this matter on January 4, 2012. 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 in the hotel industry as part of the InterContinental Hotels Group (“IHG”), which is comprised of a number of companies making up the world’s largest hotel group by number of rooms. IHG owns a portfolio of well-recognized and respected hotel brands, and manages, leases or franchises, through various subsidiaries, over 4,500 hotels and 666,000 guest rooms. The trade mark INTERCONTINENTAL has been used since 1948 in relation to hotels by the Complainant and its related entities.
The Complainant, or its affiliates, owns over 370 trade mark registrations around the world that contain or consist of the mark INTERCONTINENTAL, including with respect to hotel services.
The disputed domain name was registered on August 3, 2011.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its registered trade mark INTERCONTINENTAL because it consists of the Complainant’s well-known mark with the addition of the generic word “hotel” and the geographic identifier “london”.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, nor has it acquired any trade mark rights for the mark INTERCONTINENTAL. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorised the Respondent to register or use the INTERCONTINENTAL trade mark in any manner, nor has the Respondent ever used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent has made an illegitimate, commercial, unfair use of the disputed domain name with the intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s INTERCONTINENTAL trade mark. The Complainant asserts that the Respondent is using the disputed domain name in connection with a web site that falsely appears to be associated with the Complainant.
Further, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet traffic to its web site, by creating a likelihood of confusion with the INTERCONTINENTAL trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the mark INTERCONTINENTAL in the Americas, Europe, the Middle East, Africa and Asia Pacific. From the evidence supplied, the Panel finds that INTERCONTINENTAL is a well-known mark, at least in relation to hotels.
The words “hotel” and “london” are used within the disputed domain name. Previous UDRP panels have held that adding descriptive and/or geographic terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022). Indeed, in a case such as this the addition of “hotel” and “london” to INTERCONTINENTAL serves to increase the confusing similarity.
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three (non-exhaustive) circumstances are identified:
(i) before any notice to you 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 (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 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.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise the right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy.
Four (non-exhaustive) circumstances are identified where the respondent’s intention in registering and using a domain name may provide evidence of bad faith. These circumstances are the following:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Complainant refers to the last circumstance.
Given the established well-known identity of the INTERCONTINENTAL trade mark, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain name was registered. The Respondent’s web site appears to be an attempt to clone part of the Complainant’s web site. The header of the web site at the disputed domain name is a clone of that used throughout the Complainant’s web site. On checking the Respondent’s web site, the Panelist found that the only working function appears to be the “contact us” tab, allowing the user to input his or her name, e-mail address and some further information. Given the appearance of the “vacancy” advertisement on each page, the Panelist deems it likely that the “contact us” tab is the medium through which potential employees would submit their personal details.
Applying the comments of the panelist in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, the Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <intercontinentallondonhotel.com> be transferred to the Complainant.
Dated: January 16, 2012