WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-Continental Hotels Corporation v. NOOR Advanced Technologies
Case No. D2011-1140
1. The Parties
The Complainant is Inter-Continental Hotels Corporation, of Atlanta, Georgia, United States of America, represented by The GigaLaw Firm, of Atlanta, Georgia, United States of America.
The Respondent is NOOR Advanced Technologies, of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <continentalhurghada.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2011. On July 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 8, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. On July 17 and 19, 2011, the Center received email communications from the Respondent. Accordingly, the Center notified the parties about the commencement of the panel appointment process on August 2, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 9, 2011. 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 facts relevant to the findings and decision in this case are that:
The Complainant provides accommodation and hotel services around the globe under the registered trade mark INTERCONTINENTAL.
The Complainant operates a hotel under the name INTERCONTINENTAL in Hurghada, Egypt.
The disputed domain name was registered on November 23, 2009.
There has been no commercial or other relationship between the parties.
At the time the Complaint was filed, a website corresponding with the disputed domain name promoted the services of a hotel in Hurghada named “Continental Resort Hurghada”.
The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant asserts trade mark rights in INTERCONTINENTAL and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. In particular, it is alleged that until 2009 the hotel, now operated under the name “Continental Resort Hurghada”, was part of the Complainant’s group of hotels and traded under the name “InterContinental Hurghada Resort & Casino”.
The Respondent made certain enquiries of the Center and asserted its good faith intentions in emails which may or may not be properly regarded as a Response to the Complaint but, for the reasons which follow, the determination of that issue has no ultimate bearing on the Decision and the Panel makes no findings in that regard.
All that need be recorded here is that the Respondent asserted it’s bona fide on the basis that it had merely registered the disputed domain name as an agent and service provider for another party who was responsible for the website content associated with the domain name and referred to herein.
The Center pointed out that Respondent was the registrant of the disputed domain name according to publicly available WhoIs information and that it was with the Panel to draw any different inferences or conclusions. Again, for reasons which follow, it is unnecessary for the Panel to decide whether another party might be the author of the website content and the Panel treats the named Respondent as the proper party in these administrative proceedings.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Panel finds that it has trade mark rights in the term INTERCONTINENTAL acquired through registration2.
The remaining question is whether the disputed domain name <continentalhurghada.com> is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.3 Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a complainant’s trade mark does little or nothing to avoid confusion. In particular, former panelists have decided that the addition of a geographical placename to a complainant’s trade mark will generally be of no source distinguishing value and will not obviate a finding of confusingly similarity4.
This Panel endorses those general principles and determines that the essential comparison in this case is that of the terms “intercontinental” and “continental”5.
The Complainant relies on both its reknown and on the website content at the place to which the disputed domain name resolves in support of its assertion that there is confusing similarity but this Panel is content that neither of those factors are of dispositive relevance in the assessment of confusing similarity under paragraph 4(a)(i) of the Policy6, in circumstances such the present in which the disputed domain name incorporates only the second part of the term “inter continental”.
This Panel does not find the terms “continental” and “intercontinental” to be confusingly similar. The word “continental” is not simply an attenuated form of the Complainant’s trade mark. It has an ordinary and commonly understood word in the English language. It might be used in a variety of contexts and by a number of traders7. Although there is a connection at one level between the words “continental” and “intercontinental” insofar as it is grammatically and semantically appropriate to choose to use the prefix “inter” before the word “continental”, that is insufficient in the opinion of this Panel to render the terms confusingly similar for the purposes of the Policy.
It is not apparent to this Panel that the Complainant’s INTERCONTINENTAL trade mark is distinguishable as such within the disputed domain name, and there appears to be little evidence of record to indicate the “continental” component of Complainant’s INTERCONTINENTAL trade mark has acquired renown as a mark on its own terms.
The Panel finds in these Policy proceedings that the disputed domain name <continentalhurghada.com> is not confusingly similar to the Complainant’s INTERCONTINENTAL trade mark and so finds that the Complainant has not established the first limb of the Policy.
B. Rights or Legitimate Interests
No findings required8.
C. Registered and Used in Bad Faith
No findings required.
Having failed to establish at least one of the three elements required under the Policy for the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Dated: August 22, 2011
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See, by way of one example only, United States Trademark Registration No. 890,271 for the word mark INTERCONTINENTAL issued April 28, 1970.
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
5 Although it might be argued by some that the compared terms should be INTERCONTINENTAL and CONTINENTAL HURGHADA, the Panel rejects that approach since it presupposes the Complainant’s reputation. Reputation is not properly to be considered under paragraph 4(a)(i) of the Policy: see Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253, holding that “The question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in question might enjoy, the domain name and the trademark have confusing similarity.” Equally, any bad faith which might exist or might be inferred from the evidence based on the Complainant’s prior trading activities in Egypt are irrelevant to determination of this aspect of the policy.
6 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at 1.2 which asks: What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this? : https://www.wipo.int/amc/en/domains/search/overview2.0/1.2
7 As is evident by a simple Google search which reveals use of the term by companies providing goods and services as disparate as airline transportation, soups and hot beverages, and rubber tyres.
8 See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006)