WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Six Contentinents Hotels, Inc. v. Frequent Flyer Depot
Case No. D2003-0550
1. The Parties
The Complainant is Six Contentinents Hotels, Inc, Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC, United States of America.
The Respondent is Frequent Flyer Depot, Austin, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <holidayinnpriorityclub.com> and <holidayinnrewards.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2003. On July 14, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On July 14, 2003, Intercosmos Media Group d/b/a directNIC.com 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 the proceedings commenced on July 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 7, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on August 15, 2003. 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
Complainant, itself, or through an affiliate, is the franchisor of the well-known Holiday Inn, Holiday Inn Express, and Crowne Plaza hotel brands. In addition to franchised hotels, Complainant owns and operates numerous Holiday Inn, Holiday Inn Express, and Crowne Plaza hotels worldwide. An affiliate of Complainant also owns, manages, and franchises the Intercontinental hotel brand globally.
Complainant owns one thousand, two hundred thirty-seven (1,237) registrations for its numerous Holiday Inn Hotels service marks in one hundred eighty-two (182) countries throughout the world. Complainant owns the following eighteen (18) registrations for its marks incorporating Holiday Inn in the United States alone (listed by United States Registration Number): 0592539; 0592541; 0708521; 0864359; 1059639; 1243330; 1261925; 1275560; 1281008; 1281951; 1301022; 1555275; 1651851; 1806858; 2034107; 2207318; 2370049; and 2640061. The words "HOLIDAY INN" are components of each referenced mark. Fourteen of the above-listed registrations are now incontestable pursuant to United States law. Complainant also has a registered United States trademark in "PRIORITY CLUB," under which it provides the service of linking to affiliate sites.
5. Partiesí Contentions
Complainant claims that it has used the mark "HOLIDAY INN" since 1952, and has spent more than $1 billion promoting the mark. There are over 2,900 Holiday Inn establishments in over 70 countries. Complainant claims that Holiday Inn is the most-widely-used hotel chain and is also located in the most countries around the world.
Complainant has registered and maintains over 1,100 domain names to promote and/or protect its marks. Complainant has provided information and registration services at "www.holiday-inn.com" since 1995. That and related websites run by Complainant receive tremendous web traffic.
Complainant alleges that both of the domain names subject to this proceeding are identical or confusingly similar to its marks. The Domain Name <holidayinnrewards.com> includes Complainantís famous HOLIDAY INN mark with the additional, descriptive term "rewards." The Domain Name <holidayinnpriorityclub.com> is identical and/or confusingly similar to Complainantís marks, incorporating two of Complainantís registered marks in their entireties, HOLIDAY INN and PRIORITY CLUB.
Complainant also alleges that Respondent has no rights or legitimate interests to the words "holiday inn" or "priority club." Respondent does not and is not preparing to offer goods or services under those marks. Respondent does not operate a free-speech, comment or criticism website.
The fact that Respondent brokers Holiday Inn Priority Club points via its web site does not give Respondent any rights or legitimate interest to use the famous HOLIDAY INN and PRIORITY CLUB marks in domain names. Respondent relies on Nokia Corporation v. Nick Holmes t/a Etype Media, WIPO Case No. D2002-0001, in which the Panel decided that
"A licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark."
Complainant also claims that Respondentís use of Complainantís famous Holiday Inn and Priority Club marks in its Domain Names is not a "nominative" or "referential" use of the marks, because internet users are likely to mistakenly believe that Respondentís web sites are sponsored by, affiliated with, or otherwise endorsed by Complainant, when they are not. As one Panelist stated:
Respondentís use of the mark in the disputed domain names suggests to Internet users that Complainant sponsors or endorses Respondentís hotel reservation services. . . . Respondent may be able to offer Complainantís hotel rooms on its website as part of its range of hotel room offerings, but it cannot use Complainantís mark as its domain name, that is, as the entryway to its business. The latter use suggests ownership, sponsorship or authorization by Complainant.
Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214.
While Complainant admits that a reseller or distributor may use the mark of a manufacturer or supplier in a domain name, Complainant relies on Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for the proposition that a reseller or distributor may only do so when it exclusively sells the manufacturerís or service providerís products or services at that website. That is not the case in this matter.
Finally, Complainant avers that the registration and use of the domain names by Respondent is in bad faith. Complainantís terms and conditions for Priority Club points specifically prohibit the transfer that Respondentís website appears to authorize. Complainant believes that Internet users will mistakenly believe that Respondentís website is authorized by or affiliated with Complainant and that the incorporation of Complainantís marks by Respondent was done to engender exactly such confusion.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) 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) the Respondent has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith.
Although Respondent did not provide any reply, the Panel will examine Complainantís allegations in light of the Policy and other applicable rules or laws. It is beyond dispute that Complainant has a mark that is termed "famous" under United States trademark law and that many of the variations on that mark are incontestable. The Panel finds that Complainant has marks in "HOLIDAY INN" and "PRIORITY CLUB."
A. Identical or Confusingly Similar
One of the two subject domain names (<holidayinnpriorityclub.com>) incorporates two of Complainantís marks and the other domain name (<holidayinnrewards.com>) incorporates Complainantís mark and a generic phrase. Both domain names are confusingly similar to Complainantís marks. The domain name <holidayinnpriorityclub.com> is identical to Complainantís marks.
B. Rights or Legitimate Interests
Respondent "brokers" Holiday Inn Priority Club points at the domain names. Complainant seeks to rule out any argument that Respondent has rights or legitimate interests in the domain names because it offers services, albeit against the terms of the program, related to Complainantís marks.
The Panel finds that even if Respondent were a licensee, dealer, agent or reseller of Holiday Inn Priority Club Points, it would not have a right to use the marks "Holiday Inn" or "Priority Club" in its domain names. See Nokia Corporation v Nokia Ringtones & Logos Hotline WIPO Case No. D2001-1101, (October 18, 2001) in which the administrative panel stated:
"The domain name <worldnokia.com> has been used by Respondent to offer logos, ringtones, software and other products and services to owners of mobile phones. Respondent has stated that the products offered by Respondent are only compatible with the Nokia mobile phone and that it was for this reason that the name "worldnokia" was used. As was held by the Panel in, inter alia, (Motorola Inc. v NewGate Internet Inc, WIPO Case No. D2000-0079; Stanley Works and Stanley Logistics Inc. v Camp Creek Co, WIPO Case No. D2000-0113; Mikimoto (America) Co. v Asanti Jewellers Ltd, Case No. AF-0126; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201) a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name <worldnokia.com> if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest.
There are circumstances under which this general proposition is not true. For example, a proceeding under the UDRP is not the proper forum to decide complicated contested factual issues such as whether Complainant provided Respondent with permission or consent to use its marks. Respondent might meet all of the elements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, to establish that it has made a bona fide prior use of the mark as a reseller or distributor pursuant to Paragraph 4(c)(i) of the Policy. Such issues are not before this Panel because Respondent failed to present a Reply.
The Panel finds that Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent have registered or 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) the Respondent 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) the Respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent have intentionally attempted to attract, for commercial gain, Internet users to his/her/its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on your website or location.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its domain names by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its domain names and its brokerage service.
The Panel looks to The Sportsmanís Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, for guidance on evidence of bad faith in such circumstances. The Panel finds that Respondent:
1) had constructive knowledge of Complainantís long standing marks at the moment of registration of the disputed domain names; and
2) used the disputed domain names for commercial gain.
The Panel has no doubt that Respondent knew of Complainantís "HOLIDAY INN" and "PRIORITY CLUB" when it registered the disputed domain names. Respondent holds itself out as a broker for points earned in the Holiday Inn Priority Club program.
Respondentís website indicates that it charges significant "brokerage" fees for the transfer of miles and points between users of services. It also sells advertising on its website. Respondent used the disputed domain names for commercial gain.
The Panel finds that the Respondent registered and used the domain names 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 names be transferred to the Complainant.
Dated: September 2, 2003