WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Peiyan Yao

Case No. D2013-0660

1. The Parties

Complainant is Six Continents Hotels, Inc. of Atlanta, Georgia, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Peiyan Yao of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <hotelindigoshanghai.com> (“The Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with The Domain Name. On April 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for The Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same date.

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(a) and 4(a), the Center formally notified Respondent of the Complaint with the amendment to the Complaint, and the proceedings commenced on April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. Respondent sent an email communication on April 22, 2013. Complainant sent an email communication on April 30, 2013. No request for suspension was made. On May 10, 2013, the Center informed the Parties of the commencement of the Panel appointment process.

The Center appointed Isabel Davies as the sole panelist in this matter on May 17, 2013. 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 is one of a number of companies collectively known as InterContinental Hotels Group (“IHG”), the world’s largest hotel group by number of rooms. Companies within IHG own, manage, lease or franchise, through various subsidiaries, more than 4,150 hotels across nearly 100 countries, serving more than 160 million guest stays annually. IHG owns a portfolio of well-recognized and respected hotel brands including “Hotel Indigo”, “InterContinental Hotels & Resorts”, “Holiday Inn Hotels and Resorts”, “Holiday Inn Express”, “Crowne Plaza Hotels & Resorts”, “Staybridge Suites”, “Candlewood Suites” and “HUALUXE Hotels & Resorts”.

Complainant is the registrant of the domain name <hotelindigo.com>, which was created on February 26, 2003. Complainant operates a website for its hotels that use the HOTEL INDIGO Trademark.

Complainant (or its affiliates) own at least 120 registrations in at least 57 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOTEL INDIGO (the “HOTEL INDIGO Trademark”) – including five registrations in China for a logo for HOTEL INDIGO dating back to 2004 and for HOTEL INDIGO in Chinese script dating back to 2009. A complete list of these registrations is set out at Annex 10 of the Complaint.

The Domain Name was created on July 18, 2012.

Complainant has prevailed in numerous proceedings under the Policy, which resulted in decisions ordering the transfer of 1,519 domain names to Complainant (and its affiliated IHG entity, Inter-Continental Hotels Corporation), including 15 domain names containing Complainant’s HOTEL INDIGO Trademark. Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009‑1661; as well as numerous other decisions under the Policy, including Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-1960 (transfer of nine domain names containing Complainant’s HOTEL INDIGO Trademark).

A second Respondent has been added in the amendment to the Complaint and the Panel will refer to them collectively as Respondents when referring to them collectively and first and second Respondent when referring to them individually. As the Complaint has not been amended as a whole but merely by an amendment adding second Respondent the Panel will refer to the submissions in the Complaint as originally filed.

5. Parties’ Contentions

A. Complainant

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1)).

Complainant states that the “Hotel Indigo” hotel brand is an upscale boutique brand that delivers a refreshing and inviting guest experience that is truly reflective of the local community. Each “Hotel Indigo” property is unique and designed to reflect the local culture, featuring locally inspired murals and a renewal program where the images, music, scent and menu items change throughout the year. “Hotel Indigo” delivers a vibrant, engaging and genuine boutique experience that gives guests the confidence to step out and explore the local neighborhood.

Complainant states that the first “Hotel Indigo” hotel was opened in Atlanta, Georgia (USA) in October 2004, and expanded to Europe in 2008, Latin American in 2009 and Shanghai on the Bund (China) in 2010. In 2010, Complainant announced hotels planned for Hong Kong, China, Bangkok, Thailand, Madrid, Spain, Liverpool, United Kingdom of Great Britain and Northern Ireland and Glasgow, United Kingdom. The “Hotel Indigo” hotel brand offers 5,661 hotel rooms in 50 hotels worldwide including Shanghai, China, which it markets online.

Complainant states that it (or its affiliates) own at least 120 registrations in at least 57 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOTEL INDIGO – including five registrations in China, four in Hong Kong, China, and four in Taiwan, China.

Complainant avers that The Domain Name is confusingly similar to Complainant’s HOTEL INDIGO Trademark. It states that the relevant comparison to be made is with the second-level portion of The Domain Name only (i.e., “hotelindigoshanghai”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. It states that The Domain Name contains Complainant’s HOTEL INDIGO Trademark in its entirety plus the geographic identifier “Shanghai,” the largest city by population in China.

Complainant avers that confusing similarity is especially applicable under the Policy where the geographic identifier in The Domain Name is a city in which Complainant conducts business, as is the case here.

Accordingly, Complainant contends that The Domain Name is confusingly similar to Complainant’s HOTEL INDIGO Trademark.

(ii) Respondents have no rights or legitimate interests in respect of The Domain Name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2)).

Complainant states that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondents to register or use the HOTEL INDIGO Trademark in any manner.

Complainant states that upon information and belief, Respondents have never used, or made preparations to use, The Domain Name or any name corresponding to The Domain Name in connection with a bona fide offering of goods or services and, therefore, Respondents have no rights or legitimate interests in The Domain Name under paragraph 4(c)(i) of the Policy. Complainant states that Respondents are using The Domain Name in connection with a website that offers hotel reservations and says, “We’re a tour company which [is] located very close to Hotel Indigo Shanghai.” Respondents’ website repeatedly uses the phrase “Hotel Indigo Shanghai” or “Shanghai Hotel Indigo,” often in a boldface font nine times on the home page. They state that Respondents are using Complainant’s HOTEL INDIGO Trademark in The Domain Name and on its web page in an effort to attract Internet visitors seeking Complainant’s services.

Complainant avers that although Respondents’ purported offering of “tour company” services may not be identical to Complainant’s hotel services, the distinction is one without a difference given that the website is offering to accept hotel reservations. Further, The Domain Name suggests that any linked content is that of Complainant and, therefore, members of the public seeking Complainant’s services are likely to be misled into entering Respondents’ site – a use that is not bona fide.

Complainant states that to their knowledge, Respondents have never been commonly known by The Domain Name and have never acquired any trademark or service mark rights in The Domain Name and, therefore, Respondents have no rights or legitimate interests in The Domain Name under paragraph 4(c)(ii) of the Policy. Neither Respondent/registrant of The Domain Name is “Hotel Indigo” or “Hotel Indigo Shanghai” or any variation thereof. In addition, given Complainant’s established use of the HOTEL INDIGO Trademark for nearly 10 years, it is exceedingly unlikely that either Respondent is commonly known by this trademark.

Complainant states that Respondents are not making a legitimate noncommercial or fair use of The Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s HOTEL INDIGO Trademark, and, therefore, has no rights or legitimate interests in The Domain Name under paragraph 4(c)(iii) of the Policy. Rather, Respondents have made an illegitimate, commercial, unfair use of The Domain Name, with intent for commercial gain misleadingly to divert consumers. Specifically, Respondents are using The Domain Name in connection with a website that offers hotel reservations and says, “We’re a tour company which [is] located very close to Hotel Indigo Shanghai.” Respondents’ website repeatedly uses the phrase “Hotel Indigo Shanghai” or “Shanghai Hotel Indigo,” often in a boldface font – including at least nine times on the home page. Such use of Complainant’s HOTEL INDIGO Trademark can serve no purpose other than to mislead consumers looking for Complainant’s hotel services.

Finally, Complainant avers that Respondents’ use of The Domain Name clearly is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondents are offering for sale “tour company” services and hotel reservations on its website. Such activity does not amount to a fan site, criticism or other activity that may be considered noncommercial or fair.

Accordingly, Complainant avers that Respondents have no rights or legitimate interests in respect of The Domain Name.

(iii) The Domain Name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).

Complainant contends that by using Complainant’s HOTEL INDIGO Trademark in The Domain Name and repeatedly on its website, Respondents have intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the HOTEL INDIGO Trademark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website, in violation of paragraph 4(b)(iv) of the Policy.

Although Respondents are purportedly selling “tour company” services, such services are directly competitive with Complainant’s hotel services, and, notably, Respondents are offering hotel reservations on their website.

Complainant states that by using The Domain Name to sell hotel services in Shanghai, China, Respondents intentionally use The Domain Name aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by The Domain Name makes potential customers choose other services than Complainant’s, disrupting Complainant’s business.

Complainant states that there can be no doubt that Respondents knew of Complainant’s HOTEL INDIGO Trademark when The Domain Name was registered, leading to evidence of bad faith. The HOTEL INDIGO Trademark is a well-known, internationally recognized mark registered in many countries or geographic regions worldwide – and Respondents’ use of The Domain Name is obviously intended to impersonate Complainant. Further, it states that Respondents acknowledge Complainant as shown by Respondents’ own statements on their website:

“We’re a tour company which [is] located very close to Hotel Indigo Shanghai. Therefore, most of our guests are recommended to stay in this hotel and feed us back with tons of positive reviews. It will be a smart idea if you choose to stay at this hotel.”

Indeed, they state that by its numerous references to Complainant’s “Hotel Indigo” hotel in Shanghai, China, Respondents clearly confuse Internet users as to whether their website is somehow associated with Complainant (which they are not).

Complainant also contends that a further indication of bad faith under the Policy is the fact that all of Complainant’s trademarks pre-date Respondents’ registration of The Domain Name.

Accordingly, The Domain Name was registered and is being used in bad faith.

B. Respondents

Respondents have not filed a reply. However the second Respondent wrote to the Center saying:

“I’m the owner of HOTELINDIGOSHANGHAI.COM

My apologize if this domain may bring you and complaint any troubles. I didn’t use any of hotel trademarks, and also telling people that we’re not the hotel itself. The photos on the website are all from open sources on the other websites. The website didn’t hurt hotel name either. When i registered this domain, i didn’t get any notice that i can’t registered it. But anyway, if the complaint requires, i could close the site.

Regards

Michael (PEIYAN YAO)”

Complainant wrote with a view to seeking the transfer of The Domain Name but no resolution resulted.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:

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

(ii) Respondents have no rights or legitimate interests in respect of The Domain Name;

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

Each of these elements will be addressed below.

Complainant must establish these elements even if Respondents do not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under the Rules, including Respondents’ failure to file a Response.

In the absence of a formal Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer The Domain Name.

(i) Identical or Confusingly Similar

The Panel accepts that Complainant’s “Hotel Indigo” hotel brand is an upscale boutique brand. And that Complainant’s first “Hotel Indigo” hotel was opened in Atlanta, Georgia (USA) in October 2004, and expanded to Europe in 2008, Latin American in 2009 and Shanghai on the Bund (China) in 2010. In 2010, Complainant announced hotels planned for Hong Kong, China, Bangkok, Thailand, Madrid, Spain, Liverpool, United Kingdom, and Glasgow, United Kingdom.

The Panel also accepts that Complainant’s “Hotel Indigo” hotel brand offers 5,661 hotel rooms in 50 hotels worldwide, with another 47 hotels in the pipeline and that Complainant offers a hotel under the HOTEL INDIGO Trademark in Shanghai, which it markets online at “www.ihg.com/hotelindigo/hotels/us/en/shanghai/shgnb/hoteldetail”.

Further, the Panel accepts that Complainant (or its affiliates) own at least 120 registrations in at least 57 countries or geographic regions worldwide for trademarks that consist of or contain the HOTEL INDIGO Trademark – including five registrations in China which include HOTEL INDIGO in Chinese script and a logo mark including the words “hotel indigo” dating from 2004 and 2009 respectively, four in Hong Kong, China, and four in Taiwan, China.

It is accepted also that previous panels under the Policy have found that Complainant has rights in and to the HOTEL INDIGO Trademark. See, e.g., Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 (in ordering the transfer of 15 domain names containing Complainant’s HOTEL INDIGO Trademark, the panel wrote:

“Although ‘indigo’ has an ordinary dictionary meaning, this word is not widely used in commerce, and the Panel finds that it is a distinctive part of the Complainant’s HOTEL INDIGO trade marks. Accordingly, the disputed domain names commencing with ‘indigo’ and coupled with a geographic or generic term, are confusingly similar to the Complainant’s trade marks”). See also Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-1960 (transfer of nine domain names containing Complainant’s HOTEL INDIGO Trademark).

The Domain Name is, in the view of the Panel, confusingly similar to Complainant’s HOTEL INDIGO Trademark. The relevant comparison to be made is with the second-level portion of The Domain Name only (i.e., “hotelindigoshanghai”), as it is well-established that the generic top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”). See also Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only, as it is well-established that the top-level domain names should be disregarded for this purpose”); and Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WIPO Case No. D2008-0745 (“[i]t has been held that gTLDs, such as ‘.info’ and ‘.com’, can be ignored for the purpose of comparison of the trade mark with the domain name”).

The Domain Name contains Complainant’s HOTEL INDIGO Trademark in its entirety plus the geographic identifier “Shanghai,” the largest city by population in China.

The Panel accepts that many previous panels under the Policy (including panels in proceedings initiated by Complainant with respect to domain names containing the HOTEL INDIGO Trademark) have found that geographic identifiers in a domain name “increase the likelihood of confusion between the domain names and the marks.” Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004‑0246. See also Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005‑0755 (use of a geographic identifier in a domain name “increases the likelihood of consumer confusion”); Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388 (the addition of a geographic identifier “indeed compounds the likelihood of confusion”); Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384 (the addition of a geographic identifier “actually affirms the extent to which that domain name is confusingly similar to the Complainant’s Mark”); and Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 (“domain names commencing with ‘indigo’ and coupled with a geographic or generic term, are confusingly similar to the Complainant’s trade marks”).

Confusing similarity is especially applicable under the Policy where the geographic identifier in the disputed domain name is a city in which the complainant conducts business, as is the case here. Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease, WIPO Case No. D2008-1309 (transfer of <holidayinnphiphi.com>) (“[t]his Panel further accepts the Complainant’s submission that the combination of its trademark with the name of the Phi Phi Islands, where one of the Complainant’s hotels is located, would serve to add to such confusion rather than distinguish the mark and the domain name”); and Six Continents Hotels, Inc. v. CRWJ Company Ltd, WIPO Case No. D2012-1056 (in ordering transfer of domain name <southendholidayinn.com>, the panel wrote: “Complainant currently operates a hotel in Southend and Internet users would expect the Domain Name to refer to the Complainant’s hotel in Southend. A person viewing the Domain Name could easily be confused into thinking that it was registered by or otherwise connected with the Complainant.”).

The Panel finds confusing similarity on the basis of the logo mark. In addition the Panel accepts Complainants statement that HOTEL INDIGO has been registered in Chinese script as a trademark in China and accepts that The Domain Name is confusingly similar to those registrations. The Panel refers to the decision in Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934:

“Although the disputed domain name <danfosi.com> is visually different from the Complainant’s trade mark DANFOSS, it is nevertheless confusingly similar to the Complaint’s trade mark as the disputed domain name reproduces the Complainant’s trade mark DANFOSS phonetically in its entirety. Anyone who is conversant in the Chinese language is likely to conclude that DANFOSI probably refers to “丹佛斯” – the Chinese mark of DANFOSS. Comparing the disputed domain name and the Complainant’s mark, the Panel finds that they are confusingly similar.”

For the above reasons, the Panel accepts that The Domain Name is confusingly similar to Complainant’s registered trademarks.

(ii) Rights or Legitimate Interests

The Panel accepts that Respondents have no rights or legitimate interests in The Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondents to register or use the HOTEL INDIGO Trademark in any manner. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”); see also Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 (transferring domain name <marriottreward.com> where “[n]o evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner”).

The Panel accepts that there is no evidence to suggest that Respondents have ever used, or made preparations to use, The Domain Name or any name corresponding to The Domain Name in connection with a bona fide offering of goods or services and, therefore, Respondents have no rights or legitimate interests in The Domain Name under paragraph 4(c)(i) of the Policy. The second Respondent is using The Domain Name in connection with a website that offers hotel reservations and says, “We’re a tour company which [is] located very close to Hotel Indigo Shanghai.” Respondents’ website repeatedly uses the phrase “Hotel Indigo Shanghai” or “Shanghai Hotel Indigo,” often in a boldface font – including at least nine times on the home page. The Panel accepts that Respondents are using Complainant’s HOTEL INDIGO Trademark in The Domain Name and on its web page in an effort to attract Internet visitors seeking Complainant’s services. It is accepted that previous panels have held that such use is not bona fide under the Policy. See, e.g., R. Terley Limited and Texstyle World Limited v. Stephanie Lock and StephEnt, WIPO Case No. D2001‑0947 (“[t]he legitimacy of Respondents’ offering of goods or services is not in dispute, however that cannot legitimise the use of a Domain Name that ought not to have been adopted”). Although second Respondent’s purported offering of “tour company” services may not be identical to Complainant’s hotel services, the Panel accepts that the distinction is one without a difference given that Respondent is offering to accept hotel reservations. Further, the “Respondent’s domain name[] ostensibly suggest[s] that any linked content is that of the Complainant” and, therefore, “[m]embers of the public seeking the Complainant’s services are likely to be misled into entering the Respondent’s site[]” – a use that is not bona fide. U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511.

The Panel accepts that there is no evidence to suggest that Respondents have ever been commonly known by The Domain Name and have never acquired any trademark or service mark rights in The Domain Name and, therefore, Respondents have no rights or legitimate interests in The Domain Name under paragraph 4(c)(ii) of the Policy. According to the WhoIs record at Annex 1 of the Complaint and the further information provided by the Registrar, the registrants of The Domain Name (originally “Domains By Proxy, LLC” and subsequently “Peiyan Yao” are not “Hotel Indigo” or “Hotel Indigo Shanghai” or any variation thereof. “This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy 4(c)(ii).” Alpha One Foundation, Inc. v Alexander Morozov, NAF Claim No. 0766380. In addition, given Complainant’s established use of the HOTEL INDIGO Trademark for nearly 10 years, the Panel accepts that it is exceedingly unlikely that Respondents are commonly known by this trademark. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).

The Panel accepts that neither the first or second Respondent is making a legitimate noncommercial or fair use of The Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s HOTEL INDIGO Trademark, and, therefore, has no rights or legitimate interests in The Domain Name under paragraph 4(c)(iii) of the Policy. It accepts that the second Respondent has made an illegitimate, commercial, unfair use of The Domain Name, with intent for commercial gain misleadingly to divert consumers. Specifically, the evidence shows that second Respondent is using The Domain Name in connection with a website that offers hotel reservations and says, “We’re a tour company which [is] located very close to Hotel Indigo Shanghai.” Second Respondent’s website repeatedly uses the phrase “Hotel Indigo Shanghai” or “Shanghai Hotel Indigo,” often in a boldface font – including at least nine times on the home page. Such use of Complainant’s HOTEL INDIGO Trademark can serve no purpose other than to mislead consumers looking for Complainant’s hotel services. As a previous UDRP panel wrote, “[Respondent’s use of a domain name confusingly similar to complainant’s trademark will only] divert customers from Complainant’s websites, which offered similar goods. … Such activity is misleading to consumers and amounts to a form of ‘bait and switch’ selling. It does not constitute a bona fide offering of goods or services that gives rise to a legitimate right or interest in the disputed domain name.” eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.

The Panel notes that when attempting to activate the “Search” facility on the website nothing happens and the Panel considers this to be detrimental to Complainant.

Finally, the Panel accepts that second Respondent’s use of The Domain Name clearly is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that second Respondent is offering for sale “tour company” services and hotel reservations on its website. Such activity does not amount to a fan site, criticism or other activity that may be considered non-commercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (respondent’s “website was clearly and obviously a site that was highly critical of Complainant”); and Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042 (“Providing reviews of the author Gary Jennings’ works is fair use of the Domain Name”).

Accordingly, the Panel accepts that Respondents have no rights or legitimate interests in respect of The Domain Name.

(iii) Registered and Used in Bad Faith

The Panel accepts that The Domain Name should be considered as having been registered and being used in bad faith by Respondents.

The Panel accepts that by using Complainant’s HOTEL INDIGO Trademark in The Domain Name and repeatedly on its website, second Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the HOTEL INDIGO Trademark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website, in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc., WIPO Case No. D2002‑1159.

It is also accepted that, although second Respondent is purportedly selling “tour company” services, such services are directly competitive with Complainant’s hotel services, and, notably, second Respondent is offering hotel reservations on its website. As a previous UDRP panel wrote (in a decision also involving a hotel in Shanghai, China):

“[T]he Respondent is using the disputed domain name to purportedly market the rooms in the Complainant hotel in Shanghai on his website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose his relationship with the Complainant on the website associated with the disputed domain name. The Respondent therefore does not have the right to use [Complainant’s] mark in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use.”

Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. M On, WIPO Case No. D2012-1009.

In addition, by using The Domain Name to sell hotel services in Shanghai, China, the Panel accepts that second Respondent “intentionally uses the domain name… aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant’s, disrupting Complainant’s business.” Six Continents Hotels, Inc. v. NA InterMos, WIPO Case No. D2006-1313. This constitutes bad faith in violation of the Policy. See also Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (“The Respondent’s website is clearly intended to attract members of the public who may be wishing to reserve HOLIDAY INN hotel rooms, and then to offer them other hotel rooms and services. This conduct falls squarely within paragraph 4(b)(vi) [sic] of the Policy and accordingly the Panel concludes that the Respondent registered and has been using the Domain Name in bad faith.”) (transfer of <holidayinnmichigan.com>).

It is clear to the Panel that Respondents knew of Complainant’s HOTEL INDIGO Trademark when The Domain Name was registered, leading to evidence of bad faith. As set forth above, the HOTEL INDIGO Trademark is a well-known, internationally recognized mark registered in many countries or geographic regions worldwide. Further, second Respondent acknowledges Complainant as shown by second Respondent’s own statements on its website:

See also Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. M On, WIPO Case No. D2012-1009 (“the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name”); Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; and Marriott International, Inc. v. Momm Amed Ia, NAF Claim No. 0095573.

By its numerous references to Complainant’s “Hotel Indigo” hotel in Shanghai, China, second Respondent clearly confuses Internet users as to whether its website is somehow associated with Complainant (which it is not) and this is accepted by the Panel. As a previous UDRP panel wrote:

“Respondent’s use of the disputed domain name <holidayinnfranchise.com> in conjunction with a web site that prominently displays Complainant’s Holiday Inn brand, with no explanation respecting Respondent’s relationship, or lack thereof, with Complainant, appears intended to pass Respondent, and its services, off as Complainant and its services, or to strongly suggest a business association or relationship between Respondent and Complainant, or an endorsement of Respondent and its goods and services by Complainant. These facts implicate paragraph 4(b)(iv) of the Policy, to wit, that Respondent is using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s “wwww.holidayinnfranchise.com” web site at the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site, and of the franchise products and services offered on Respondent’s web site.”

Six Continents Hotels, Inc. v. Paydues Inc., WIPO Case No. D2012-0756.

The Panel accepts that a further indication of bad faith under the Policy is the fact that all of Complainant’s trademarks pre-date Respondents’ registration of The Domain Name and refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 3.4.

Moreover, given Complainant’s established rights in the HOTEL INDIGO Trademark in many countries or geographic regions worldwide and the fact that The Domain Name is “so obviously connected with” Complainant, Respondents’ actions suggest “opportunistic bad faith” in violation of the Policy. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. In light of this long history of Complainant’s trademarks and Complainant’s significant international presence and brand recognition, “[i]t is likely that the Respondent knew of the Complainant’s mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion.” Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850. See also Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 (finding bad faith where “it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business”).

Accordingly, The Domain Name was registered and is being used in bad faith.

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 <hotelindigoshanghai.com> be transferred to Complainant.

Isabel Davies
Sole Panelist
Date: May 31, 2013