WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-Continental Hotels Corporation v. Whois Agent, Whois Privacy Protection Service, Inc. / Fred Adams
Case No. D2016-0715
1. The Parties
The Complainant is Inter-Continental Hotels Corporation of Atlanta, Georgia, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Fred Adams of Toronto, Canada.
2. The Domain Name and Registrar
The disputed domain name <intercontinental-hotel.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 Complainant on April 25, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2016.
The Center appointed Alfred Meijboom as the sole panelist in this matter on May 27, 2016. 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 a member of InterContinental Hotels Group, a world leading hotel company that owns, manages, leases or franchises, through various subsidiaries, more than 5,000 hotels in nearly 100 countries and territories around the world. The INTERCONTINENTAL brand was founded in 1948 and is currently used in connection with 184 hotels worldwide, which collectively offer 62,040 hotel room. The Complainant or its affiliates own at least 287 trademark registrations in at least 176 countries or geographic regions worldwide for trademarks that consist of or contain the trademark INTERCONTINENTAL, including United States Registration No. 890,271 of April 28, 1970 for hotel services (the "Trademark")
The Respondent registered the disputed domain name on January 4, 2016.
5. Parties' Contentions
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Trademark as the only differences with the Trademark are the addition of a hyphen and the word "hotel" to the disputed domain name. These are minor differences which are irrelevant for purposes of determining confusing similarity under the Policy.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never authorized the Respondent to register or use the Trademark in any way. The Complainant further claims that the Respondent used the disputed domain in connection with an employment and phishing scam, which does not constitute use of the disputed domain name in connection with a bona fide offering of goods and services or a noncommercial or fair use. In addition, given the Complainant's use of the Trademark for 68 years, as well as its numerous registrations worldwide, the Complainant alleges that it is impossible that the Respondent is commonly known by this trademark.
Finally, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Complaint alleged that the Respondent must have been aware of the Complainant's Trademark when it registered the disputed domain name. Furthermore, the Complainant argued that the Respondent used the disputed domain name in connection with an employment and phishing scam, which constitutes use in bad faith. Furthermore, the amended Complaint alleges that the Respondent transferred the disputed domain name after the Complaint was filed in violation of paragraph 8(a) of the Policy which constitutes cyberflight and, therefore, is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that generic Top-Level Domains ("gTLDs") may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD ".com".
The Panel finds that the disputed domain name is confusingly similar if not identical to the Trademark. The Respondent has taken the Trademark in its entirety and merely added a hyphen and the descriptive word "hotel" to the Trademark, which does not distinguish the disputed domain name from the Trademark. The addition of a hyphen is inconsequential to a finding against confusing similarity (e.g., Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc., WIPO Case No. D2002-1159), while the addition of the word "hotel" is insufficient to differentiate the disputed domain name and the Trademark, and actually enhances the connection given the hotel services for which the Trademark is registered and used, and the nature of the Complainant's business (Compagnie Gervais Danone, The Dannon Company Inc. v. Lianhua Tang, WIPO Case No. D2015-0002).
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various undisputed allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, that the Respondent has not been commonly known by the disputed domain name, that the disputed domain name was used for an employment and phishing scam with the intention of defrauding Internet users into providing certain information to the detriment of such Internet users who may have been confused to believe that the Respondent's communications through an email address using the disputed domain name were the Complainant's.
The Complainant has provided an example of the fraudulent mailings Respondent has sent using an email address under the disputed domain name. Fraudulent commercial use of the disputed domain name in this way qualifies neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use. As such, the Panel is satisfied that the Complainant has undisputedly shown that the Respondent was involved in employment and phishing scam activities via the disputed domain name, which in itself is sufficient to find that the Complainant has succeeded in making a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (e.g., Société Française du Radiotéléphone-SFR contre Madeleine Corvaisier, WIPO Case No. D2011-0225; Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Trademark is well-known for hotel related services, had already been registered for many years by the time of the disputed domain name's registration and is not generic. In the Panel's view it is therefore obvious that at the time the Respondent registered the disputed domain name it must have had the Trademark in mind. Moreover, the Respondent added only the term "hotel" to the Trademark, which term would not be an obvious addition except to someone familiar with the Complainant, the Trademark and its use. The Panel is therefore satisfied that the Respondent registered the disputed domain name with the Complainant in mind.
To the Panel's mind it is further obvious that the undisputed use which the Respondent made of the disputed domain name as part of an employment and phishing scam and passing off itself as the Complainant, apparently so as to obtain certain information from Internet users as a result of the intentionally created confusion between the disputed domain name and the Trademark, constitutes use of the disputed domain name in bad faith (e.g., Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc. v. infosheraton, WIPO Case No. D2010-2195).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <intercontinental-hotel.com> be transferred to the Complainant.
Date: June 7, 2016