WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings

Case No. D2017-1072

1. The Parties

The Complainants are InterContinental Hotels Group PLC, Six Continents Hotels, Inc., and Six Continents Limited of Atlanta, Georgia, United States of America (“United States”) represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States (the “Complainant”).

The Respondent is Domain Admin, Whois Privacy Corp. of New Providence, Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Bolivia (Plurinational State of).

2. The Domain Name and Registrar

The disputed domain name <ihghotels.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 2017, 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 June 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 8, 2017.

The Center verified that the Complaint together with the amended 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 June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2017.

The Center appointed David Taylor as the sole panelist in this matter on July 28, 2017. 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 the owner of at least 143 trade mark registrations in the terms IHG, used in connection with hotel and resort services, and has supplied evidence that it owns the following :

- United States Registration No. 4,921,698, IHG, registered on March 22, 2016, first used on April 15, 2003; and

- United States Registration No. 3,544,074, IHG, registered on December 9, 2008, first used on September 2007.

The Respondent Maddisyn Fernandes, Fernandes Privacy Holdings, was involved in at least nine other proceedings under the Policy involving third party trade marks. See, e.g., Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0607; TPI Holdings, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0239; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0196; LEGO Juris A/S v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0053.

The Domain Name was originally registered on May 15, 2004. The Respondent Domain Admin, Whois Privacy Corp. appears as registrant on or about October 28, 2014, according to the historical WhoIs records of the Domain Name. Also according to the historical WhoIs records of the Domain Name(as evidenced by the Complainant), the Respondent could potentially have acquired the Domain Name at any time after October 25, 2009. . It redirects to other websites, including the Complainant’s own website at “www.ihg.com”. The evidence on file also shows that the Domain Name was being used to resolve to a parking page containing sponsored links referring to the Complainant’s services (e.g., “hotel search”, “book a reservation”). At the time of writing of this decision, the Domain Name is resolving to a third party website that provides hotel booking services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is one of a number of companies collectively known as InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups by number of rooms. IHG owns a portfolio of well-known hotel brands including INTERCONTINENTAL HOTELS & RESORTS, CROWNE PLAZA HOTELS & RESORTS, HOLIDAY INN HOTELS AND RESORTS, HOLIDAY INN EXPRESS, HOTEL INDIGO, STAYBRIDGE SUITES, CANDLEWOOD SUITES, HUALUXE HOTELS, and EVEN HOTELS, among others. The Complainant is the registrant of the domain name <ihg.com>, created on May 4, 1998, which is being used in connection with the Complainant’s primary website.

The Complainant submits that the Domain Name is confusingly similar to its IHG trade mark. The Complainant contends that the Domain Name wholly incorporates the IHG mark combined with the generic word “hotels”, which does nothing to dispel the confusing similarity with the Complainant’s trade mark. If anything, the Complainant argues that the term “hotels” enhances the confusing similarity with the Complainant’s trade mark because it is merely descriptive of the Complainant’s services. The Complainant asserts that the IHG trade mark is the dominant portion of the Domain Name and that the “overall impression of the designation” of the Domain Name is one of “being connected to the trade mark of the Complainant”.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is in no way affiliated with the Complainant. The Complainant argues that the Respondent is not licensed nor authorised by the Complainant to use its IHG trade marks. The Complainant further alleges that the Respondent has not used, or made any demonstrable preparation to use, the Domain Name in connection with a bona fide offering of goods or services, as it is merely redirecting Internet users to other websites, including the Complainant’s own website. The Complainant contends that there is no evidence indicating that the Respondent has any rights or legitimate interests in the Domain Name other than the fact that it was registered by the Respondent. The Complainant also submits that the Respondent has never been commonly known by the Domain Name, nor has it acquired any trade mark or service mark rights in the Domain Name. The Complainant further states that the Respondent is not making any legitimate noncommercial use or fair use for the Domain Name, without intent for commercial gain, to mislead and divert consumers, or to tarnish the trade mark or service mark.

The Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Domain Name was acquired by the Respondent on or about October 28, 2014, while the IHG mark had already been registered by the Complainant for almost six years and had been used for more than eleven years, as shown by the historical WhoIs records of the Domain Name. The Complainant therefore contends that the Respondent had constructive knowledge of the IHG mark and therefore registered the Domain Name in bad faith. The Complainant further submits that given the global reach and popularity of the Complainant’s hotel services under the IHG trade mark, as well as the similarity with the Complainant’s own domain name <ihg.com>, it is inconceivable that the Respondent would have chosen the Domain Name without knowledge of the Complainant’s business activities and its rights.

The Complainant also submits that the Respondent’s use of the Domain Name is in bad faith as it is being used to redirect to other websites, including the Complainant’s own website. The Complainant contends that the Respondent is attempting to disrupt the Complainant’s relationship with its customers or potential customers or to attract Internet users for potential financial gain. The Complainant points out that the Respondent’s behavior of redirecting users to the Complainant’s website only serves to increase customer confusion that the Domain Name is licensed or controlled by the Complainant. The Complainant holds that the Domain Name is “so obviously connected” with the Complainant that the Respondent’s actions suggest “opportunistic bad faith”. In light of the Complainant’s trade marks’ long history and its significant international presence and brand recognition, the Complainant argues that the Respondent most likely knew of the Complainant’s trade mark and sought to obtain a commercial benefit by attracting Internet users based on that confusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided proper evidence that it has registered trade mark rights in IHG in connection with hotel and resort services. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s IHG trade mark in its entirety with the addition of the descriptive term “hotels”. Prior panels deciding under the same Policy have held that when a domain name wholly incorporates a complainant’s trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The addition of the term “hotels” does not diminish the confusing similarity with the Complainant’s trade marks but rather reinforces it as the term is descriptive of the goods and services for which the Complainant’s trade marks have been registered. See Craigslist, Inc. v. Domains By Proxy, LLC / Pankaj Dhingra, WIPO Case No. D2016-1966 (“The addition of the generic term that describes the Complainant's use of that mark reinforces the confusing similarity between the disputed domain name and the Complainant's trademark”.)

The “.com” Top-Level Domain is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out the following list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

“(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 trade mark 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 trade mark or service mark at issue.”

A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has alleged that the Respondent is not in any way affiliated with the Complainant and it has not authorised the Respondent to make any use of its IHG trade mark.

The Respondent’s use of the Domain Name to redirect to third party websites and to the Complainant’s own website cannot be considered a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy, as the Respondent is unduly taking advantage of the Complainant’s rights. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy. Neither can the Respondent’s use of the Domain Name be considered a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy, as the Respondent is clearly seeking to obtain financial gain derived from the Complainant’s rights by redirecting Internet users to other websites.

Furthermore, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”) and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(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 trade mark 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 trade mark 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant has trade mark rights in the acronym IHG in connection with hotel and resort services that predate the date of acquisition of the Domain Name. The Complainant’s IHG trade mark has also acquired considerable goodwill and renown worldwide in connection with hotel services. Given the nature of the Domain Name, which identically reproduces the Complainant’s IHG trade mark in conjunction with the term “hotels” which is descriptive of the services for which the Complainant’s trade marks have been registered, the Panel is convinced that, on balance, the Respondent had the Complainant in mind at the time of registration of the Domain Name and deliberately registered it to take advantage of the Complainant’s rights, as shown by the Respondent’s subsequent use of the Domain Name. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.

The Panel further finds that the Respondent’s use of the Domain Name to redirect Internet users to other websites, including the Complainant’s own website, constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. See Mandarin Oriental Services B.V. v. Domain Administrator, Matama, WIPO Case No. D2017-0615 (“Redirecting the disputed domain name to the Complainant’s own website implies also bad faith: Such behavior includes the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant (see MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231), and may increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant (see PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888”).

The Panel draws an adverse inference from the Respondent’s use of a privacy protection service to conceal its identity. Whilst privacy shields may be legitimate in certain cases, it is difficult to see why the Respondent in this case needs to protect its identity “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trade marks against infringement, dilution and cybersquatting”. See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.

Finally, the Panel also draws an adverse inference from the Respondent’s history of abusive domain name registrations and failure to take part in the present proceedings.

The Panel finds that the Domain Name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <ihghotels.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: August 11, 2017