WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Continents PLC & Six Continents Hotels, Inc. v. Immobliare Incorporated
Case No. D2002-0811
1. The Parties
The Complainants are Six Continents PLC, of London, United Kingdom and Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America, represented by Robin Blecker & Daley of the United States of America.
The Respondent is Immobliare Incorporated, of Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sixcontinentshotelsonline.com> (the "Domain Name") is registered with GKG.net, Inc, formerly GK Group LLC of Texas 77845, United States of America
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2002. On August 29, 2002, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On September 3, 2002, the Center received the Complaint in hardcopy along with the required fee. On August 30, 2002, the Center transmitted by email to GKG.net, Inc, a request for registrar verification in connection with the domain name at issue, the Registrar confirmed that it is the registrar of the Domain Name.
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 4, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 25, 2002.
The Center appointed Paul C. Van Slyke as the sole panelist in this matter on October 3, 2002. 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
This case involves two related Complainants. Six Continents Hotels, Inc., formerly Bass Hotels and Resorts, Inc., is a wholly owned subsidiary of Six Continents PLC, formerly known as Bass PLC. The Complainants own, operate, and franchise more than 3200 hotels and over 510,000 guest rooms in nearly 100 countries and territories. The properties controlled by Complainants involve some of the most recognized brands in the lodging industry and include Crowne Plaza, Holiday Inn, and Inter-Continental.
On July 30, 2001, Complainants publicly announced they were changing their corporate names from the Bass entities to the current names that utilize the Six Continents term. Since the announcement, Complainants have extensively used the new names and the Six Continents and Six Continents Hotels marks throughout the United States in a variety of channels, including television, newspapers, brochures, magazines, radio, and the Internet. Additionally, Complainants operate various websites devoted to the companies, their brands, hotels and services. The Complainantsí official domain names include <sixcontinentshotels.com>, registered on October 13, 2000, and <sixcontinents.com>, registered on July 16, 1999.
Respondent is Immobliare Inc. It appears Respondent is under the control of a Mr. Anthony Incorvia. The Domain name was initially registered on August 19, 2001, to Incorvia Domains and Mr. Incorvia, but since the initial registration, the contact information has been changed at least four times with four separate entities being listed as the registrant. All of the various registrants and administrative contacts can in some way be traced back to Mr. Incorvia.
The Domain Name was registered on August 19, 2001, and currently displays a blank page to users attempting to reach the site.
5. Partiesí Contentions
Complainants note that they have a federal registration on the Principal Register for the mark SIX CONTINENTS CLUB that predates the registration of the Domain name. The Complainants further assert that they have acquired common law rights thorough use in the marks SIX CONTINENTS and SIX CONTINENTS HOTELS, such use also occurring before the Domain Name was registered.
Complainants contend that the <sixcontinentshotelsonline.com> domain name is substantially similar to Complainantsí trademarks SIX CONTINENTS and SIX CONTINENTS HOTELS and the only difference is the addition of the generic "online" term.
Complainants assert that Respondent has no legitimate rights in the Domain Name demonstrated by the fact that Respondent has failed to develop any web site content in the time period since registration. The Complainants further point to the fact that Respondent registered the Domain Name approximately one month after the Complainantsí public announcement of their corporate name change and offered to sell the Domain Name to Complainants on the very same day it was registered. Complainants also assert that there is no evidence that the Respondent has made or is making any legitimate non-commercial or fair use of the Domain Name.
Complainants argue that Respondent has registered and is using the Domain Name in bad faith by purposely registering, then offering to sell the Domain Name for valuable consideration well in excess of any out-of-pocket costs. Additionally, Complainant alleges that Respondent is creating initial interest confusion for those Internet users trying to find Complainantsí authorized web sites. Complainant asserts that Internet users will be discouraged from further web searching after reaching Respondentís blank page. Finally, Complainant contents that repeated use of false and inaccurate contact information is further evidence of bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statement and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Even though Respondent has failed to file a Response or to contest any assertion made by Complainants, the Complainants still have the burden of proving the essential elements of the claim. The Panel will review the evidence to ensure that the Complainants have met their burden. Specifically, paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interest in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Policy and Rules state that a Complainant must show that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A mark need not be registered with the United States Patent and Trademark Office, as rights can be acquired based on common law usage. In the present case, Complainants assert that they have rights in the registered mark SIX CONTINENTS CLUB as well as rights in the SIX CONTINENTS and SIX CONTINENTS HOTELS marks derived from common law usage.
The Panel finds that by a preponderance of the evidence submitted via the Complaint that Complainant has acquired common law rights in both the SIX CONTINENTS and SIX CONTINENTS HOTELS. The fact that these marks have been used throughout the United States in the advertisement and marketing of the Complainantsí hotel services as well as the established Internet presence of Complainants at the <sixcontinentshotels.com> and <sixcontinents.com> web sites indicate that Complainants have used the marks in such ways as to acquire rights in the marks.
The Complainants must also prove that the disputed domain name is identical or confusingly similar to Complainantsí marks. It is well settled that the addition of the generic word "online" to a trademark does not make a domain name distinguishable from the trademark itself. See Compaq Info. Technologies Group LP v. Dealer Direct, Inc. d/b/a Inacom Info. Sys. (NAF Case No. 97062); TPI Holdings, Inc v. AFX Communications a/k/a AFX (WIPO Case No. D2000-1472). Thus in the present case, the simple addition of the term "online" does not defeat a claim of confusing similarity. Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainantsí marks pursuant to Policy paragraph 4(a).
B. Rights or Legitimate Interests
Complainants assert that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Prior panels have commonly found that an offer to sell or transfer a domain name is sufficient evidence that a respondent has no legitimate right to use the domain name. See e.g. Land OíLakes Inv. V Offbeat Media Inc., (NAF Case No. FA-96451); Colgate-Palmolive Co. v. Domains For Sale, (NAF Case No. FA-96248). Additionally, panels have also noted that passive holding or non-use of a domain name is evidence of a lack of legitimate rights in the domain name. See e.g. Paws, Inc. v. Garfieldonline.com, (NAF Case No. FA-097328); Victoriaís Secret v. This Domain Name For Sale, (NAF Case No. FA-96248).
Both issues are present in the instant case. The very same day Respondent registered the Domain Name, Respondent offered to sell it to Complainants for $5000. Respondent even went so far as to require a quick response because Respondent had another outstanding offer waiting. Yet, despite the supposed other offer, Respondent did not sell the Domain Name and has been content to leave the Domain Name undeveloped for over a year. Currently, the Domain Name displays a blank page.
Therefore, the Panel finds that the Complainants have sustained their burden of proving the Respondent lacks rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainants contend that Respondent registered and is using the Domain Name in bad faith. Policy paragraph 4(b) provides a listing of various instances where the conduct of Respondent would constitute evidence of registration or use in bad faith. However, this list is not exclusive and numerous other examples of bad faith behavior exist. The Panel may look at the "totality of circumstances" to determine if Respondentís conduct reaches the threshold of bad faith. See Cellular One Group v. Brien, (WIPO Case No. D2000-0028); Twentieth Century Fox Film Corp. v. Risser, (NAF Case No. FA-93761).
The analysis begins with the Policy list. Paragraph 4(b)(i) states that bad faith may be shown in cases where 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 for valuable consideration in excess of the out-of-pocket costs. In the present case, it appears that Respondent registered the Domain Name after learning of the Complainantsí name changes and then attempted to sell the Domain Name to Complainants. The fact that the offer to sale was made on the same day the Domain Name was registered only serves to emphasize that the Domain Name was registered solely to resell it to Complainants.
Finally, the Panel turns to the totality of circumstances analysis. Over the approximately 13 months, the Respondent has maintained the registration of the Domain Name at least four (4) major changes were made to the information contained in the whois database related to this Domain Name. The Respondent has changed the name of the registrant, administrative contacts, and email addresses. Complainant asserts and from the evidence it appears that Respondent made these changes in an effort to confuse, delay, and avoid the consequences of Respondentís actions. Additionally, Respondentís actions violate the requirements of the Registrar that all contact information be current, complete, and accurate. All in all, these attempts at subterfuge only add to the evidence that Respondentís registration of the Domain Name was in bad faith.
The Panel finds under the totality of the circumstances that Respondent registered and is using the Domain Name in bad faith. The Complainants have met their burden as to this prong.
Accordingly the Panel concludes that (a) that the Domain Name is confusingly similar to Complainantsí common law and federally registered trademarks, (b) that Respondent has no rights or legitimate interest in the Domain Name, and (c) that Respondent has registered and is using the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainants.
Paul C. Van Slyke
Date: October 17, 2002