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Hilton International Co. v. Elliot Centeno [2005] GENDND 1581 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton International Co. v. Elliot Centeno

Case No. D2005-0826

1. The Parties

The Complainant is Hilton International Co., Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Elliot Centeno, San Jose, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <hiltonsports.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2005. On August 2, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 3, 2005, Go Daddy Software 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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2005.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 16, 2005. 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 in this proceeding, Hilton International Co., is a hotel operating division of the Hilton Group plc, a company operating in the hospitality and gaming markets. The Group’s betting and gaming division is operated under the brands HILTON and LADBROKES.

The Complainant has based its Complaint on the HILTON word mark in the United Kingdom with registration No. 2,028,804 in Class 41 and submitted evidence of this registration.

Furthermore, the Complainant has based its Complaint on the HILTON word mark in the European Community with registration No. 121,343 in Class 41 and submitted evidence of this registration.

The Respondent registered the domain name <hiltonsports.com> on February 5, 2005. The Complainant has provided a copy of the relevant Whois search result, which has been confirmed by the concerned Registrar.

5. Parties’ Contentions

A. The Complainant

Hilton International Co. is the leading brand name and hotel operating division of the Hilton Group plc, a global company operating in the hospitality and gaming markets. The Complainant operates over 400 hotels, employs over 71,000 staff in 80 countries and is the world’s most famous hotel brand. The Group’s betting and gaming division is operated under its well-known LADBROKES brand. The Ladbrokes business owns a network of around 1,900 retail betting shops in the UK, Ireland and Belgium and offers Internet gaming facilities with sports book, casino and poker features. The Complainant maintains an online presence across the world via hotel/hospitality and gaming websites using domain names containing the brands HILTON and LADBROKES. The websites of the betting and gaming division of the Complainant contain links to the hotel divisions of the Group, giving customers easy access to the full range of Hilton brands. The Ladbrokes business has over 60,000 registered users in at least 160 countries.

The Hilton hotels in the USA are owned by Hilton Hotels Corporation. Both the Complainant and Hilton Hotels Corporation co-operate in their respective marketing initiatives to promote the trademark HILTON. The Complainant’s betting and gaming activities are also offered under the trademark HILTON as many of the hotels provide on-site casinos. The Complainant has submitted evidence showing that many of the Complainant’s hotels offer large on-site casinos. In addition, in many Hilton hotels, guests are offered online gambling in the hotel rooms. The Complainant contends that the trademark HILTON itself is extremely well-known for gaming and betting.

The Complainant’s betting and gaming division generated a turnover of approximately £7,3 billion in 2003. The Group’s hotel operating division under the Complainant had a turnover of approximately £2,7 billion. The Group spends approximately US$100 million annually on global advertising and promotions. The Complainant has submitted extracts of the Group’s annual report for 2003 to support the statements above.

The Complainant owns rights in the trademark HILTON outside of the USA and is the proprietor of many trademark registrations including:

HILTON word mark in the United Kingdom with registration No. 2,028,804 in Class 41 in respect of inter alia “casino, gambling, gaming and betting services”; and

HILTON word mark in the European Community with registration No. 121,343 in Class 41 in respect of inter alia “casino, gambling, gaming and betting services”.

The Complainant argues that the trademark HILTON enjoys substantial goodwill and has become the best known brand in the hospitality sector. As a result of the Group’s involvement in the gaming industry under the trademarks HILTON and LADBROKES, the Complainant has developed a substantial reputation in the gaming sector.

The Complainant claims that the term “sports” when used in connection with betting and gaming relates to betting odds for major sporting events. The Respondent is using the disputed domain name to host online betting and gaming services. The website connected with the disputed domain name resembles the website of the Complainant in that it has a similar color scheme. The Complainant has submitted color printouts from the websites to support its claim.

The Respondent’s domain name is linked to a website which appears to be hosted by a website at “www.sunsetsports.com”. The Complainant points to a number of similarities between “www.sunsetsports.com” and the website linked to the disputed domain name suggesting a connection between them. From the use of the disputed domain name it is clear that the Respondent’s motive for registering it was to profit. The domain name has been used to attract for commercial gain Internet users seeking the Complainant’s business to the site of the Respondent. There is nothing on the Respondent’s website that clearly indicates that the site and/or the Respondent is not in some way associated with the Complainant. The fame of the Complainant’s HILTON trademark attracts visitors to the Respondent’s website and therefore business opportunities are created. The Complainant argues that visitors may be confused, believing that the site has something to do with the Complainant.

The Complainant contends that the disputed domain name <hiltonsports.com> is identical or confusingly similar to the trademark HILTON. The additional word “sports” is merely descriptive for the area in which the Complainant provides services under the trademark.

The Respondent is not known by the disputed domain name and is not authorized by the Complainant or any of its associated companies to use the Complainant’s registered trademark HILTON. To the best of the Complainant’s knowledge, the Respondent has no trademark or service mark in respect of the disputed domain name or any corresponding name. The Respondent must have been aware of the Complainant and its trademark when registering the disputed domain name.

Furthermore, the Complainant contends that the Respondent’s commercial use of the disputed domain name cannot constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions. In accordance with paragraph 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark HILTON. The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the generic word “sports”.

Such a generic word has a limited ability to distinguish the domain name from the trademark and has little, if any, legal significance. See, for example, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA.

Having the above in mind, it is the opinion of the Panel that the domain name <hiltonsports.com> is confusingly similar to the Complainant’s trademark HILTON.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise consented to the Respondent’s use of its trademark HILTON in connection with the disputed domain name <hiltonsports.com>, which is confusingly similar to the trademark. No evidence or circumstances in this case indicate that the Respondent has been commonly known by the disputed domain name.

The evidence submitted by the Complainant clearly shows that the Respondent’s use of the disputed domain is commercial. Furthermore, the circumstances in the case suggest that the Respondent’s use of the disputed domain name in connection with the associated website is likely to attract for commercial gain Internet users searching for the Complainant’s website or trademark. The website of the Respondent offers services in the same area for which the Complainant’s trademarks are registered. In addition to the above, it has been shown that the layout of the Respondent’s website resembles the layout of the Complainant’s website as to the choice of colors.

Such commercial use of the disputed domain name which is likely to lead to confusion of Internet users does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name.

There is no evidence in the case to refute the Complainant’s submissions, which have established a prima facie case that the Respondent has no rights or legitimate interests in the domain name, and the Panel therefore concludes that the Complainant has proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The evidence submitted shows that the disputed domain name <hiltonsports.com> is used for an on-line betting and gaming service. The Complainant’s HILTON trademarks are registered for the very same type of services that are offered by the Respondent on the website connected with the disputed domain name. Given the fact that the Respondent is commercially active in the field of betting and gaming, the Panel finds it highly unlikely that the Respondent would not have been aware of the Complainant’s trademark HILTON when registering and using the disputed domain name <hiltonsports.com>.

The circumstances in the case before the Panel indicate that the disputed domain name <hiltonsports.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the trademark HILTON as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. There is no evidence in the case to refute the Complainant’s submissions.

Having all of the above in mind, the Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <hiltonsports.com> has been registered and used in bad faith.

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 <hiltonsports.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist

Dated: September 30, 2005