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Six Continents Hotels Inc. v. Inoxis Africa Ltd., also known as Holidex Reservation Network [2004] GENDND 1224 (9 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels Inc. v. Inoxis Africa Ltd., also known as Holidex Reservation Network

Case No. D2004-0516

1. The Parties

Complainant is Six Continents Hotels Inc., of Atlanta, Georgia, United States of America, represented by Needle & Rosenberg, PC, United States of America.

Respondent is Inoxis Africa Ltd., also known as Holidex Reservation Network of Nairobi, Kenya, which represents itself in these proceedings.

2. The Domain Name and Registrar

The disputed domain name <holidex.com> (the “Domain Name”) is registered with Go Daddy Software, Inc. (“Go Daddy”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004, naming Inoxis Africa Ltd. as Respondent.

On July 14, 2004, the Center requested verification from Go Daddy in connection with the Domain Name.

On July 14, 2004, Go Daddy transmitted to the Center its verification response stating that “Inoxis Africa Ltd.” is the registrant.

On July 19, 2004, the Center requested clarification from Go Daddy as to the registrant’s identity, in light of the fact that Go Daddy’s whois database identified the registrant as “Holidex Registration Network”.

On July 19, 2004, Go Daddy confirmed that “Holidex Registration Network” is listed as the registrant.

On July 20, 2004, the Center requested that Complainant file an Amendment to the Complaint identifying the Respondent as “Holidex Reservation Network”.

On July 23, 2004, Complainant filed an Amendment to the Complaint naming “Holidex Reservation Network” as a pseudonym for “Inoxis Africa Ltd.” Complainant took the opportunity of making the requested amendment to file supplemental submissions.

The Center verified that the Complaint (as amended) 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 Respondent of the Complaint, and the proceedings commenced on July 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2004.

The Response was filed with the Center on August 17, 2004.

On August 20, 2004, both Complainant and Respondent filed supplemental materials.

On August 26, 2004, the Center appointed Robert A. Fashler as the sole panelist in this matter . 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 asserts and Respondent does not deny that:

(a) Complainant is a leading global hotel company which, directly or through its affiliates, owns, manages, leases or franchises the following hotel brands around the world: HOLIDAY INN, HOLIDAY INN EXPRESS, CROWNE PLAZA, STAYBRIDGE SUITES, CANDLEWOOD SUITES, and INTERCONTINENTAL;

(b) Complainant directly or indirectly operates, manages or franchises more than 3,500 hotels in nearly 100 countries, and receives more than 150 million guests at Complainant’s hotels each year;

(c) Complainant or its predecessor-in-title established the HOLIDEX global reservation system (the “HOLIDEX System”) in 1965, to provide a central system for receiving, processing and storing reservation and other information for its hotels around the world;

(d) Complainant, or its predecessors-in-title, has used the trademark HOLIDEX (the “HOLIDEX Mark”) in commerce since at least as early as 1965;

(e) Complainant, or its predecessor-in-title, has obtained numerous trademark registrations for the HOLIDEX Mark and additional trademarks that feature the word HOLIDEX throughout the world, including:

United States Registrations

(collectively, the “US Registrations”); and

Kenyan Registration

(the “Kenyan Registration”)

(f) Complainant has accrued trademark rights in the HOLIDEX Mark, by virtue of its long and continuous use of that trademark (presumably, Complainant is making reference to “common law” rights, but does not say in which countries those rights are supposed to exist);

(g) the U.S. Registrations are now incontestable under 15 U.S.C. §1065 and §1115;

(h) the Kenyan Registration has been maintained since it was registered in 1981 (however, as discussed in greater detail below, the only evidence filed by Complainant in relation to that registration shows that it does not own the Kenyan Registration);

(i) one of Complainant’s franchisees operates a HOLIDAY INN hotel under licence from Complainant in Nairobi, Kenya, and the hotel is part of Complainant’s HOLIDEX System. The Panel notes that Complainant does not say how long this hotel has been in operation and whether the HOLIDEX Mark is used in association with that hotel.

Complainant evidences its international trademark registrations by reference to Exhibit “D” of the Complaint, which is a chart identifying various trademarks. The chart also sets out related particulars, including the owner of each registration. The list of trademarks set out in Exhibit “D” of the Complaint is not entirely consistent with Complainant’s assertion that it is the owner of all the registrations identified in the Exhibit. Rather, Exhibit “D” identifies three owners of the HOLIDEX Mark in addition to Complainant and its predecessor-in-title, Bass Hotels & Resorts, Inc., namely, Holiday Inns Inc., Holiday Hospitality Corporation, and General Data Corp. One of those entities, Holiday Hospitality Corporation, is shown as the owner of the Kenyan registration. Complainant does not explain these discrepancies.

The sequence of correspondence between Complainant, Respondent (and its predecessor in title), the Complaint, and subsequent changes to the Domain Name registration and the associated website located at “www.holidex.com” (the “Website”) is as follows:

(a) on January 26, 2001, American counsel for Complainant’s predecessor-in-title, Bass Hotels & Resorts, Inc. (“BHRI”), sent a cease-and-desist letter to Destination Kenya Marketing, the registrant of the Domain Name at that time (see Complaint Ex. K);

(b) on February 25, 2001, Bernard Metzger replied to BHRI’s letter on behalf of Destination Kenyan Marketing, stating that “Holidex Reservation Network” was registered as a Kenyan business name on May 26, 1998, under registration number 282353 (see Complaint Ex. L);

(c) on March 27, 2001, BHRI’s counsel responded to Mr. Metzger, stating that BHRI has priority over any use of the HOLIDEX Mark by Mr. Metzger (see Complaint Ex. M);

(d) on April 30, 2001, Mr. Metzger replied to BHRI, stating that “Holidex Reservation Network” is a fully operational business entity in Kenya, and conducts business activities under that name;

(e) in Mr. Metzger’s communication of April 30, 2001, he also stated that “Holidex Reservation Network” sells “holiday experiences” in Kenya only, is actively involved in promoting Kenya as a preferred destination, and is an Executive Member of the Kenya Tourism Foundation (see Complaint Ex. N);

(f) on July 30, 2001, Mr. Metzger wrote a letter to BHRI’s Kenyan counsel confirming various proposals discussed at a recent meeting between him and that counsel, including putting a disclaimer on the “www.holidex.com” website, providing a link to a website of BHRI’s choice, and using the “www.holidex.com” website to forward visitors to another site for a period of 12 months, thereby reducing Holidex Reservation Network’s loss of bookings and traffic (see Complaint Ex. O);

(g) on August 15, 2002, BHRI’s Kenyan counsel wrote a letter to Mr. Metzger referring to a June meeting at which Mr. Metzger stated that he was in the process of trying to sell his travel agency business and could not make a final decision regarding the Domain Name until he had finalized negotiations (see Complaint Ex. P);

(h) on May 17, 2004, Complainant sent a demand letter to Inoxis Africa Ltd. (see Complaint Ex. Q);

(i) on July 13, 2004, Complainant submitted the Complaint to the Center.

5. Parties’ Contentions

A. Complainant

Complainant asserts that:

(a) the HOLIDEX System is well-known throughout the world;

(b) in addition to its various trademark registrations, Complainant has acquired trademark rights in HOLIDEX by virtue of its long and continuous use of the HOLIDEX Mark;

(c) the HOLIDEX Mark enjoys significant goodwill and is famous as a consequence of continuous, widespread and exclusive promotion and use of the HOLIDEX Mark by Complainant and its predecessor-in-title;

(d) the Domain Name is virtually identical and confusingly similar to the HOLIDEX Mark;

e) Respondent has no rights or legitimate interests in the Domain Name because:

(i) Respondent is not affiliated with Complainant, is not a licensee of Complainant, and is not authorized by Complainant to use any of Complainant’s trademarks,

(ii) Respondent is not, and has never been, commonly known by the Domain Name, and it is highly unlikely that Respondent is commonly known by the HOLIDEX Mark,

(iii) HOLIDEX is an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant;

(f) Respondent registered and is using the Domain Name in bad faith because:

(i) Respondent was undoubtedly aware of the fame and worldwide reputation of the HOLIDEX Mark when it registered the Domain Name,

(ii) Respondent had first-hand knowledge of the HOLIDEX Mark when it registered the Domain Name because Respondent or affiliated entities also own travel-related websites that book rooms for Complainant’s hotels, including websites using the domains <inoxis.com> and <kenyadirectory.com>,

(iii) Complainant’s numerous HOLIDEX trademark registrations in the United States, Kenya, and the rest of the world constitute constructive notice to the world of the existence and validity of its rights in the HOLIDEX Mark,

(iv) Respondent is holding the Domain Name to prevent Complainant from reflecting its HOLIDEX Mark in a corresponding domain name, and to disrupt and divert Complainant’s business,

(v) Respondent is likely in the travel business or is related to an entity in the travel business, and therefor was likely aware of the HOLIDEX Mark when it registered the Domain Name;

(g) Respondent has sought to disguise its identity;

(h) Complainant asserts that Respondent is related to or is an alter ego for a previous registrant of the Domain Name, one Bernard Metzger (“Metzger”), because:

(i) the current mailing address for the Domain Name in the Go Daddy Whois record is identical to the contact information that was listed in Whois when Metzger owned the Domain Name,

(ii) Whois information for the Domain Name lists the registrant Inoxis Africa Ltd., a Kenyan corporation, as having the same address,

(iii) Whois information for <inoxis.com> lists Metzger as the registrant, with the same address,

(iv) the <inoxis.com> website is an African and Kenyan-focused travel website featuring hotels, safari packages, rental cars, etc.,

(v) the <inoxis.com> website contains a link to a website at “www.kenyadirectory.com”, a Kenya-focused travel website, and Whois information for <kenyadirectory.com> lists Metzger as the registrant,

(vi) the whois records for <holidex.com> and <kenyadirectory.com> list the identical domain name servers, namely NS1.RAPIDNS.COM and NS2.RAPIDNS.COM,

(viii) an Internet search for “Inoxis Africa” on the Google search engine revealed one website: “www.africaexcursionsafaris.com”, which is a search site for African and Kenyan vacation activities;

(i) Complainant asserts that if Respondent is related to or the alter ego of Metzger, then Respondent had actual knowledge of Complainant’s rights in the HOLIDEX Mark because:

(i) On January 26, 2001, BHRI, Complainant’s predecessor-in-title, sent a letter to the then-current registrant of the Domain Name demanding that the registrant cease using the Domain Name,

(ii) Metzger responded on February 25, 2001, on behalf of the former registrant and correspondence between Metzger and Counsel representing BHRI and Complainant continued up to August 2002, at which time Metzger indicated he was trying to sell his travel agency and could not make a final decision about the Domain Name until his business plans were finalized,

(iii) Complainant heard nothing from Metzger, and the Domain Name was transferred to Respondent in March 2004.

B. Respondent

Respondent asserts:

(a) the business name Holidex Reservation Network was registered by Respondent’s predecessor-in-title, on May 26, 1998, in the Republic of Kenya, pursuant to the Registration of Business Names Act (Cap. 499, Section 14), under Registration No. 282353;

(b) Holidex Reservation Network is a fully-operational business in Kenya;

(c) Holidex Research Network is currently owned by Inoxis Africa Ltd., but continues to do business under the name Holidex Reservation Network;

(d) Inoxis Africa Ltd. and Holidex Reservation Network are actively involved in promoting Kenya as a preferred destination and both are Executive Members of the Kenya Tourist Foundation;

(e) the Domain Name was registered, and the “www.holidex.com” website was online and fully operational, long before BHRI’s counsel first contacted the registrant on January 26, 2001;

(f) on July 30, 2001, Holiday Reservation Network offered to resolve the matter involving the Domain Name amicably and in a timely fashion, but BHRI rejected this offer without valid reason;

(g) Complainant is trying to deceive the Center by stating that it recently learned that Inoxis Africa Ltd. registered the Domain Name, since Complainant had corresponded with Holidex Reservation Network beginning in January 2001 regarding the Domain Name;

(h) Complainant is acting in bad faith by trying to frustrate a small African business when it knows:

(i) Respondent’s business name Holidex Reservation Network was registered in Kenya in 1998, and

(ii) the Domain Name and the “www.holidex.com” website were online and operational long before Complainant or its predecessor approached Hotel Reservation Network.

C. Supplementary Submissions

Both parties submitted supplemental submissions. All supplemental submissions were received outside the deadlines established by the Rules. Neither Complainant nor Respondent have disclosed any exceptional circumstances that would justify consideration of the late-filed submissions. Accordingly, the Panel has not considered the supplemental materials filed by Complainant or Respondent.

6. Discussion and Findings

To succeed in its Complaint, Complainant must prove all of the elements set out in Paragraph 4(a) of the Policy, namely:

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

(b) Respondent has no rights or legitimate interests in the Domain Name; and

(c) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Domain Name consists of the HOLIDEX Mark in its entirety, plus the top level domain “.com”.

Complainant asserts it has rights in the HOLIDEX Mark, arising from various registrations around the world and from its widespread use of the HOLIDEX Mark.

Complainant’s evidence regarding its trademark registrations is meager. Complainant does not provide copies (certified or otherwise) of any registration certificates and does not provide any documentary evidence regarding the registration and maintenance of the U.S. Registrations or the Kenyan Registration.

Exhibit “D” of the Complaint purports to be a list of Complainant’s trademark registrations around the world. There is no explanation of this list’s provenance, authenticity or reliability. This list does not include any U.S. registrations, including those expressly relied on by Complainant in the Complaint. More important, the entry for Kenya lists an entity other than Complainant (that is, Holiday Hospitality Corporation) as the owner.

In addition to which Complainant and its predecessor-in-title BHRI, Exhibit “D” shows three different owners of the HOLIDEX Mark in certain countries, including Holiday Inns Inc., Holiday Hospitality Corporation, and General Data Corp.

There is a serious disconnection between the worldwide ownership of the HOLIDEX Mark as set out in Exhibit “D” and the assertions of ownership and use made by Complainant. Complainant provides no factual or legal basis on which the Panel can conclude that Complainant is the beneficiary of this diversity of ownership. Complainant does not provide any factual or legal basis from which the Panel can conclude that, in spite of the international division of ownership of the HOLIDEX Mark among four entities, the HOLIDEX Mark is nonetheless distinctive of Complainant in Kenya or any other country.

The only evidence regarding the Kenyan Registration (Exhibit “D” of the Complaint) identifies Holiday Hospitality Corporation as the owner. Without any evidence explaining this inconsistency, Panel has no evidentiary basis for accepting the assertion that Complainant holds the Kenyan Registration.

Complainant also asserts that the HOLIDEX Mark has acquired significant goodwill in the minds of consumers and is famous throughout the world as a consequence of long and continuous use. To the extent that these assertions relate to common-law rights, the Panel notes that not all countries recognize “common law” trademark rights, and that Complainant does not identify those specific countries in which it may have acquired common law rights. The Panel also notes that such rights might well be negatively impacted by the international division of ownership of the HOLIDEX Mark.

Complainant provides very little evidence supporting its claim that the HOLIDEX Mark is used extensively, has acquired significant goodwill, and is famous. Complainant does not even provide any samples showing the manner in which the HOLIDEX Mark is used and advertised. Complainant does tender in evidence a Declaration of Eric Pearson, the Senior Vice President, E-Commerce, of Complainant (Complaint, Exhibit “C”). The Declaration provides a great deal of evidence regarding HOLIDAY INN Hotels and trademarks that incorporate the words HOLIDAY INN, but it says nothing about the HOLIDEX Mark. This type of evidence would have been useful to support the assertions of use, goodwill and fame made by Complainant if it addressed the HOLIDEX Mark. In view of the foregoing, the Panel places minimal reliance on Complainant’s assertions of significant use, goodwill and fame of the HOLIDEX Mark.

Nonetheless, some of the international registrations identified in Exhibit “D” of the Complaint do show Complainant as owner and Respondent has not contradicted Complainant’s assertions and evidence about its trademark registrations. As well, the Domain Name is, to all intents and purposes, identical to the HOLIDEX Mark. The presence of the “.com” gTLD is of no significance when determining whether a domain name is identical or confusingly similar to a complainant’s trademark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc; WIPO Case No. D2000-0834; José de Jesús Velázquez Jiménez v. Mailbank.com Inc., WIPO Case No. D2001-0341; Japan Airlines Company Limited v. TransHost Associates, WIPO Case No. D2000-0573 (<jal.com> identical to “JAL” trademark).

Complainant has satisfied its burden in relation to Paragraph 4(a)(i) of the Policy. Nonetheless, the Panel points out that Complainant’s evidence is not sufficient to support a conclusion that the HOLIDEX Mark has been used extensively, has generated significant goodwill, is well known (let alone famous), or is distinctive.

B. Rights or Legitimate Interests

It is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name. For the most part, that evidence is known to and within the control of the respondent. Accordingly, the burden on a complainant with respect to this element must be relatively light. Nonetheless, a complainant must still produce some evidence tending to show that a respondent has no rights or legitimate interests in a domain name: see Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796. One way that a complainant might satisfy this burden is to conduct relevant searches and provide the search results together with the Complaint.

In this case, Complainant asserts that Respondent lacks rights and legitimate interests in the Domain Name because:

(a) Respondent is not affiliated with Complainant, is not a licensee of Complainant, and is not authorized by Complainant to use any of Complainant’s trademarks;

(b) on “information and belief”, Respondent is not, and has never been, commonly known by the Domain Name, and it is highly unlikely that Respondent is commonly known by the HOLIDEX Mark; and

(c) “holidex” is an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant.

Complainant’s first submission regarding this element of the Policy is that Complainant has not licensed or otherwise authorized Respondent to use any of Complainant’s trademarks. The Panel accepts that submission as true. However, in the Panel’s view, that is not sufficient to meet Complainant’s burden. The fact that a complainant has not licensed a respondent to register and use a domain name is implicit in most proceedings brought under the Policy.

The second submission made by Complainant (that is, that Respondent is not, and has never been, commonly known by the Domain Name or the word HOLIDEX) is also unsupported by any objective evidence. Respondent and its predecessor-in-title have asserted the exact opposite both in the proceeding and in communications with Complainant and its predecessor-in-title before this proceeding began. Even though it has received notice of those asserted facts, Complainant maintains its own allegation on the basis of “information and belief”. Having regard to the evidence tendered and the surrounding circumstances, it is difficult for the Panel to understand what information Complainant might be relying on and how it could have formed the belief that it asserts. If there is more information supporting Complainant’s assertion, that should have been tendered in evidence.

The third submission made by Complainant in support of the allegation that Respondent does not have any rights or legitimate interests in the Domain Name is that “holidex” is an invented word and would not be chosen by Respondent except for an improper purpose. The fact that “holidex” is an invented word is a circumstance that is consistent with a lack of rights and legitimate interests. However, in the Panel’s view, that fact standing alone is not sufficient to satisfy Complainant’s burden. It is well established in the UDRP cases that a respondent may well have rights and legitimate interests in an invented word that also happens to be a trademark owned by another party: see X/Open Company Limited v. Expeditious Investments, WIPO Case No. D2002-0294 (complaint regarding <unix.com> denied).

In the Panel’s view, the fact that the HOLIDEX Mark is apparently an invented word would be more persuasive if it was accompanied by evidence of additional circumstances that reasonably support an inference that Respondent lacks rights and legitimate interests in the Domain Name. However, in this case, there are additional circumstances that go in the opposite direction. Specifically, under the law of many countries, the main significance of a word being invented or coined is that it is more likely to be distinctive. Such a word is generally considered to be “inherently distinctive”. However, just because a word is inherently distinctive does not mean that it is actually distinctive. An inherently distinctive trademark can lose its distinctiveness as a consequence of various events, including multiple ownership or use by different parties in association with the same or very similar products and services.

Complainant’s evidence demonstrates facts that appear to undermine the distinctiveness of the HOLIDEX Mark. If the HOLIDEX Mark is not, in fact, distinctive as a consequence of divided ownership (and, presumably, divided use) in Kenya and elsewhere, then Complainant’s argument would be substantially weakened if not completely negated. As Complainant has not provided any explanation of the divided ownership revealed in Exhibit “D” of the Complaint, the Panel must assume that there is a fair likelihood that the HOLIDEX Mark is not distinctive of Complainant in Kenya and quite possibly other countries. For that reason, the Panel is not prepared to draw the inferences urged by Complainant.

Overall, Complainant has not tendered any objective evidence capable of supporting a reasonable inference that any of Complainant’s allegations regarding the second element might be true. Rather, the evidence of both parties shows that Respondent and Respondent’s predecessor-in-title put Complainant and Complainant’s predecessor-in-title on notice that Respondent’s predecessor-in-title registered “Holidex Reservation Network” as a business name in Kenya under Registration No. 282353 on May 26, 1998. That is well before Complainant and its predecessor-in-title first contacted Respondent and its predecessor-in-title concerning the Domain Name.

Respondent also asserts that Holidex Reservation Network is a fully-operational business that is involved in promoting Kenya as a travel destination. Respondent does not provide any evidence as to the nature or scope of its business. However, Complainant itself asserts that Respondent is likely in the travel business or is related to an entity that is in the travel business.

Although Respondent has not provided any evidence to support its assertions that it and its predecessor-in-title have registered and used “Holidex Reservation Network” as a business name, Complainant has not contradicted these assertions or tendered admissible evidence demonstrating that Respondent’s assertions are false. For example, even if Respondent’s website was under construction after it acquired the Holidex Reservation Network business, that would not be sufficient to rebut Respondent’s allegations of use by its predecessor-in-title.

Complainant could easily have conducted searches in trademark and corporate registries in Respondent’s home jurisdiction to ascertain whether Respondent has indeed registered, applied for, or claimed rights in any trademarks or business names that incorporate the HOLIDEX Mark. It has chosen not to do so.

Although the evidence submitted by Respondent regarding registration and use of the Kenyan business name “Holidex Reservation Network”, is sparse and in the form of mere assertion, it might conceivably be sufficient to establish a defense under paragraph 4(c)(i) of the Policy. Respondent’s evidence on the point is certainly no weaker than Complainant’s.

However, it is not necessary for the Panel to determine whether Respondent has provided evidence sufficient to establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. That would only be necessary if Complainant had met its burden under paragraph 4(a)(ii) of the Policy. To satisfy that burden, Complainant must do more than make assertions and engage in speculation, particularly when Complainant’s own evidence demonstrates that it had actual notice of a claim by Respondent’s predecessor-in-title that it owned and used the registered Kenyan business name Holidex Reservation Network since 1998.

The Panel finds that Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given that Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the Policy, there is no need for the Panel to address the issue of registration and use in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Robert A. Fashler
Sole Panelist

Dated: September 9, 2004