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Six Continents Hotels, Inc. v. Helen Siew [2004] GENDND 1376 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Helen Siew

Case No. D2004-0656

1. The Parties

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

The Respondent is Helen Siew, Santa Clara, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <holiday-inn-reservation.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2004. On August 19, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August 19, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on August 24, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2004.

The Center appointed Angela Fox as the Sole Panelist in this matter on September 23, 2004. 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 one of the largest international hoteliers in the world. Its most successful and internationally recognized hotel chain is known as HOLIDAY INN.

The HOLIDAY INN brand was launched in 1952, and today there are more than 2,900 HOLIDAY INN hotels in more than 70 countries around the world. The Complainant has put its corporate weight behind promotion of the HOLIDAY INN brand globally, spending nearly $1 billion on advertising and promotion worldwide in the last 50 years, and spending millions annually on HOLIDAY INN profile-raising. As a result, the HOLIDAY INN brand has become internationally famous.

Since at least July 1995, Internet users have been able to reserve hotel rooms at HOLIDAY INN hotels through websites operated by the Complainant at inter alia “www.holiday-inn.com”. HOLIDAY INN is routinely one of the top 20 most commonly searched travel-related marks on the Internet, averaging more than 400,000 queries per month. In 2003 alone, on-line reservations for HOLDAY INN hotel rooms through the Complainant’s websites generated over 6% of the Complainant’s total HOLIDAY INN hotel reservations and nearly $400 million in revenue for the Complainant.

The Complainant owns numerous federal trademark registrations in the United States for HOLIDAY INN and marks incorporating HOLIDAY INN dating from as early as 1952, details of which were included in Exhibit E of the Complaint.

The disputed domain name was registered on March 9, 2004. On the same day, the Respondent also registered <booking-marriott.com> and <booking-westin.com>. Linked to the disputed domain name is a site cloaked in a green identical to the corporate livery of the Complainant’s HOLIDAY INN chain and offering on-line reservations at HOLIDAY INN hotels. A drop-down list following the instruction “Hotel Brand: SELECT one of the Holiday Inn Chains” lists numerous hotel chains owned by the Complainant and others, including many competitor chains. The site purports to permit bookings at any of these, although in fact those who tried to do so would meet with a message informing them that “our booking engine system is not ready yet”. Metatags including HOLIDAY INN and misspelled variations such as HOLLIDAY INN ensured that the site was located in Internet searches for the Complainant’s mark.

On July 9, 2004, the Complainant issued a letter to the Respondent by mail, fax and email, asking the Respondent to cease use of the domain name and associated website, and transfer the disputed domain name to the Complainant. The fax did not transmit and the letter was returned as not deliverable. The email, however, appeared successfully to transmit, although the Respondent did not reply.

This administrative proceeding was launched on August 18, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s domain name is confusingly similar to its HOLIDAY INN trademark, differing only in the addition of hyphens, the non-distinctive gTLD domain name suffix “.com” and the descriptive word “reservation”, which is directly relevant to the Complainant’s business.

The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with, authorized or licensed by the Complainant to use the HOLIDAY INN trademark as a domain name or otherwise. The Respondent’s website does not constitute use of the domain name in connection with a bona fide offering of goods or services, because the Respondent cannot fail to have been aware of the Complainant’s famous mark, was using it in the same field of endeavor as the Complainant, and offered reservations at hotels that were in competition with the Complainant. Nor was this legitimate non-commercial or fair use, because it was unquestionably commercial in nature, and could not be fair because it offered, under a domain name confusingly similar to the Complainant’s trademark, reservations at hotels operated by the Complainant’s competitors. Even though some of the reservations offered were at the Complainant’s hotels, nevertheless the Respondent was not entitled, without the Complainant’s authorization, to register and use a domain name including the Complainant’s trademark because it misleadingly suggested to Internet users that the Respondent was in some way connected to or endorsed by the Complainant.

Finally, the Complainant avers that the Respondent registered and used the domain name in bad faith. The Respondent knowingly registered and used a domain name incorporating the Complainant’s famous trademark for the purpose of disrupting the Complainant’s business, by intentionally attracting Internet users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration of the domain names <booking-marriott.com> and <booking-westin.com>, incorporating the famous third-party hotel chain trademarks MARRIOTT and WESTIN, suggested that the Respondent had engaged in a pattern of attempting to monopolise domain names incorporating third-party trademarks. The Respondent’s unauthorized use of the Complainant’s corporate get-up on its website was further evidence of its intent to mislead, and therefore of bad faith. The Complainant also alleges that the Respondent’s failure to respond to the Complainant’s emailed correspondence and its apparent recordal of false contact details further support a finding of bad faith.

B. Respondent

The Respondent did not reply to the Complaint and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with Paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the 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 the domain name;

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its ownership of United States federal trademark registrations for HOLIDAY INN and marks incorporating HOLIDAY INN long pre-dating registration of the disputed domain name.

The disputed domain name incorporates the whole of the HOLIDAY INN trademark. It differs only in the addition of hyphens, the non-distinctive gTLD domain name suffix “.com”, and the word “reservation”. Of these, it is long-established that domain name suffixes and punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See, among others, Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214 and Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc., WIPO Case No. D2002-1159.

In the Panel’s view, the presence of the word “reservation” cannot avoid a finding of confusing similarity, either. A hotel reservation is an essential part of planning a trip, and on-line reservations are commonly offered by hotel chains such as those operated by the Complainant. Travelers commonly use the Internet when researching and making their travel plans, including checking hotel availability and making bookings. The word “reservation” is descriptive of a fundamental service offered by hotel chains, and the disputed domain name conveys the message that the website to which it links is that of the Complainant, through which reservations at the Complainant’s hotels can be made.

This finding is consistent with the decision in Six Contintents Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No. D2003-0222, concerning the domain name <holidayinnhotelreservations.com>, which held that, “The addition of the relevant and descriptive words ‘hotel reservations’ to the Domain Name increases rather than decreases the likelihood of confusion, since many if not most of the online contacts with Complainant are precisely for the purpose of making reservations at Holiday Inn hotels”.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be present based on its evaluation of all the evidence, shall demonstrate a respondent’s right to or legitimate interest in the domain name for the purposes of Paragraph 4(a)(ii):

(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 organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Given the fame of the Complainant’s trademark, it is implausible that the Respondent could have been commonly known by a name corresponding to the disputed domain name. Before notice of the dispute, however, the Respondent was using the domain name in connection with a website offering hotel reservations. The question is therefore whether that use constituted a bona fide offering of services, or a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant’s trademark.

The disputed domain name is confusingly similar to the Complainant’s HOLIDAY INN trademark, and the Respondent’s website is cloaked in a green identical to the Complainant’s HOLIDAY INN livery, repeatedly mentioning HOLIDAY INN in text and inviting visitors to select the HOLIDAY INN chain of interest to them for reservations. Such use is misleading because it strongly suggests, from the use of the Complainant’s trademark in the domain name and in text, to the use of the Complainant’s own corporate colours and the offering of reservations at HOLIDAY INN hotels, that the website linked to the domain name is that of, or is in some way sponsored by or connected to, the Complainant. Moreover, the linked website offers not only reservations at the Complainant’s hotels, but also reservations at competitor hotels, thus not only misleading visitors about the provenance of the website, but also diverting potential customers of the Complainant into booking reservations at other hotel chains, who as a result of the website may consider are part of the Complainant’s business even if not marketed under the HOLIDAY INN name.

Such misleading and deceptive use in the same field of endeavor as the Complainant cannot be held to be use in connection with a bona fide offering of services. Similar results were reached in Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 and Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc. WIPO Case No. D2002-1159. Nor can such use be held to be a legitimate non-commercial or fair use of the domain name within the meaning of Paragraph 4(c)(iii) of the Policy, because the use is clearly commercial in nature, and involves an effort for commercial gain to misleadingly divert customers of the Complainant through use of the Complainant’s HOLIDAY INN trademark. There is every indication that it was the Respondent’s intent to mislead Internet visitors into its site so that they would make bookings through it, rather than through the Complainant’s own websites. Indeed, the use of metatags including the HOLIDAY INN trademark and variations of it shows that the Respondent deliberately set out to attract Internet traffic searching for information on HOLIDAY INN hotels. On this, see Chicago Mercantile Exchange, Inc. v. e-globex/Abidin H., WIPO Case No. D2003-0743.

The mere fact that the Respondent was offering reservations at the Complainant’s HOLIDAY INN hotels does not give rise to a legitimate right or interest in the domain name, in light of the fact that the Respondent was not authorized by the Complainant to use a domain name incorporating the Complainant’s trademark. As has been held by other Panels, the mere fact that a respondent offers or sells a complainant’s products or services does not give the respondent the right to use a domain name that includes the complainant’s trademark, given that a domain name, in contrast with mere use in text on a website, automatically conveys the message that the site linked to it is that of, or is authorized by, the trademark owner. See Motorola, Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262, and Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.

There is nothing in the Complaint to suggest that the Respondent has any rights or legitimate interests in the disputed domain name on any other basis. The Panel finds that the Respondent has none.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia Paragraphs 4(b)(ii), (iii) and (iv):

(i) the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(ii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iii) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.

The Complainant has submitted evidence, unchallenged by the Respondent, that its HOLIDAY INN trademark is internationally famous. The Respondent’s registration of the domain name necessarily resulted in the exclusion of all others from it, including the Complainant trademark owner. There is moreover evidence that the Respondent has engaged in a pattern of such conduct, in the registration of the domain names <booking-marriott.com> and <booking-westin.com>. There is no evidence that the Respondent, an individual, was authorised by the owners of the well-known MARRIOTT and WESTIN hotel chains to register domain names incorporating their trademarks. The registration of three domain names incorporating the trademarks of third parties is ample evidence of a pattern of registration intended to prevent the owners of trademarks from reflecting those marks in corresponding domain names (see Mr. Christophe Marx v. The Russian House and Mr. Alexander Mandl, WIPO Case No. D2000-1108 and Ourisman Dodge, Inc. v. Ourisman “Okie doke” Dodge dot com and Ourificeman Dodge dot com, WIPO Case No. D2001-0108).

In addition, the Complainant has shown in evidence that the Respondent’s website offers a similar service to that offered by the Complainant, namely the booking of hotel reservations at the Complainant’s HOLIDAY INN hotels. The Respondent is therefore active in the same field of endeavor as the Complainant and is a competitor in that field. Moreover, as referred to previously above, the Respondent’s website offers reservations not only at the Complainant’s hotels, but also at hotels run by competitors of the Complainant. In using the Complainant’s own trademark to draw Internet users to a site offering reservations at hotels run by the Complainant’s competitors, the Respondent was attempting to divert custom from the Complainant and thus to disrupt the Complainant’s business. In the absence of a satisfactory explanation for the Respondent’s conduct, the Panel finds that such disruption was a primary purpose behind its registration of the disputed domain name.

The Respondent’s use of the domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with the Complainant’s HOLIDAY INN mark as to source, sponsorship, affiliation, or endorsement. For all the reasons previously given, Internet users encountering the disputed domain name are likely to be misled into believing that they have found a link to a website legitimately connected to the Complainant, and the prominent manner in which the HOLIDAY INN trademark and corporate livery appear on the linked site serves only to confirm that misperception on the part of visitors to the site. The deliberate creation of metatags ensuring that the Respondent’s site was located in Internet searches for HOLIDAY INN further supports a finding that the Respondent was intentionally seeking to attract Internet users who were themselves seeking the Complainant. Similar conduct led to a finding of bad faith in Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002-1132, Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922 and Chicago Mercantile Exchange, Inc. v. e-globex/Abidin H., WIPO Case No. D2003-0743.

In the Panel’s view, the evidence is more than sufficient to support a claim that the disputed domain name was registered and used in bad faith. The Panel so finds.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <holiday-inn-reservation.com> be transferred to the Complainant.

Angela Fox
Sole Panelist

Dated: October 6, 2004