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Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale [2005] GENDND 1643 (7 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale

Case No. D2005-0755

1. The Parties

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

The Respondent is CredoNIC.com / Domain For Sale, Hallandale, United States of America.

2. The Domain Name and Registrar

The disputed domain name <holidayinnmanassas.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2005. On July 15, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 15, 2005, 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 July 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2005.

The Center appointed Frank L. Politano as the sole panelist in this matter on August 24, 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

For over fifty years, Complainant and its predecessors in interest have used the HOLIDAY INN mark for hotel, motel and restaurant services. Complainant has spent more than one billion dollars advertising and promoting the HOLDIAY INN mark and such efforts have resulted in that mark becoming well known to consumers in the United States and throughout the world. HOLIDAY INN is one of the most recognized brands in the world and Complainant’s mark deserves “a substantial measure of protection.” Six Continents Hotels, Inc. v. credoNIC.com, WIPO Case No. D2004-0987.

Complainant owns in excess of three thousand domain names which include <holiday-inn.com> and <holidayinnexpress.com>, and which have been in use for over a decade. Complainant’s “holdayinn” websites are extensively used by the consuming public and Complainant derives substantial revenue from these websites.

Complainant owns several HOLIDAY INN federal Principal Register Service Mark registrations covering hotel, motel and restaurant services including several registrations which are incontestable and constitute conclusive evidence of Complainant’s exclusive right to use the HOLIDAY INN marks in the United States.

Complainant has a hotel in Manassas, Virginia. Two major battles in the American Civil War were fought near Manassas, First Bull Run (July 1861) and Second Bull Run (August 1862) and Manassas is the site of National Battlefield Park which preserves the scenes of these battles. Complainant’s hotel is thus called Holiday Inn Manassas-Battlefield.

Respondent registered the domain name <holidayinnmanassas.com> on May 15, 2005, long after Complainant developed rights in HOLIDAY INN. The domain name resolves to a pornographic website and if offered for sale at the top of the website.

Because Respondent failed to submit a response to the Complaint, this Panel accepts as true all of the supported allegations of the Complaint. AT&T Wireless Services, Inc.; AT&T Corp. v. Phone Center, Mark Henrich, WIPO Case No. D2000-0678; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Blue Cross and Blue Shield Association v. Joe Guthrie and Tom Guthrie, WIPO Case No. D2004-0894.

5. Parties’ Contentions

A. Complainant

Complainant argues Respondent’s domain name is confusingly similar to Complainant’s HOLIDAY INN marks. Complainant contends that the appendage of a geographic term, “Manassas” to its famous HOLIDAY INN mark does not obviate a finding of likelihood of confusion and indeed exacerbates confusion.

Complainant further submits Respondent has no rights or legitimate interests in <holidayinnmanassas.com> and has shown Respondent is not a licensee of Complainant, is not known by the domain name at issue, and is not using the domain name for legitimate, non-commercial or fair use purposes.

Complainant also contends the domain name is being used in bad faith to divert unsuspecting Internet users to Respondent’s salacious website.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy and paragraph 3(b)(ix) of the Rules require that the Complainant must prove each of the following:

- The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

The Panel will deal with each element seriatim.

A. Identical or Confusingly Similar Marks

By virtue of its long and extensive use and promotion, Complainant has developed strong rights in HOLIDAY INN for, among other things, hotel, motel, and restaurant services and the mark, more than famous, has become iconic. Complainant’s incontestable registrations provide conclusive evidence of the validity of the marks and Complainant’s ownership and exclusive rights to use HOLIDAY INN for lodging and restaurant services.

Respondent has simply appended the geographic term “Manassas” to Complainant’s HOLIDAY INN mark. This increases the likelihood of consumer confusion. BP p.l.c. v. Kang-Sunghun Portraits Production, WIPO Case No. D2001-1097; Holiday Educational Testing Service v.TOEFL USA, WIPO Case No. D2002-0380. Indeed, where Respondent has registered the HOLIDAY INN mark suffixed with a geographic term, another panel ordered transfer of the domain name to Complainant. Six Continents Hotels, Inc. v. credo NIC.com WIPO Case No. D2004-0987.

That Complainant has a hotel in the town of Manassas, Virginia, which is known as “Holiday Inn Manassas-Battlefield” further compounds the confusion.

Although more relevant under the third bad faith element, the Panel notes that users and potential users of Complainant’s website may seek accommodations in Manassas and could mistakenly be directed to Respondent’s website. They may be confused that this pornographic website is somehow related to Complainant or that Complainant sponsors, endorses or approves of the website.

This Panel finds the Respondent’s domain name <holidayinnmanassas.com> is confusingly similar to Complainant’s HOLIDAY INN marks.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the domain name at issue. Respondent is not affiliated with Complainant, is not a licensee of Complainant and is not authorized by Complainant to use any of Complainant’s marks as a domain name or otherwise. This 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.

Another panel has expressly ruled that Respondent had no rights in the domain names <happyholidayinn.com> and <holidayinnexpressnewnan.com>. Six Continents Hotels, Inc. v credoNIC.com, WIPO Case No. D2004-0987.

This Panel rules Respondent has no rights or legitimate interests in the <holidayinnmanassas.com> domain name.

C. Registered and Used in Bad Faith

Respondent has registered and is using the domain name in bad faith, in an effort

to attract, for commercial gain, Internet users to the Respondent’s pornographic website. By creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, Respondent is using its domain name in violation of the Policy.

It is well established that using another’s well-known mark to attract Internet users to a pornographic website constitutes bad faith use of the domain name. Six Continents Hotels, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2004-0987 (involving the same Respondent as in this proceeding); Bass Hotels and Resorts v. Mike Rodgerall, WIPO Case No. D2000-0568; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a/ Country Walk, WIPO Case No. D2003-0161.

That Respondent uses the name of a Civil War battlefield to link users to pornography is another ground for finding bad faith.

Further, that Respondent’s domain name is for sale for $500 as stated on the credoNIC.com website at ”www.credoinc.com” (Exhibit H) is, in itself, sufficient grounds to find bad faith.

In VENTURUM GmbH v. Domain Collection Inc/Coventry Investments Ltd., WIPO Case No. D2003-0405, the panel found that bad faith existed when the respondent was found to be in the business of selling domain names on its web page and profiting from such business “by selling the domain names for valuable consideration in excess of his out-of-pocket costs directly related to the domain name”; see also: Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551.

Respondent ignored Complainant’s demand letter which also supports a finding of bad faith. Failure to respond to a complainant’s efforts to make contact provides “strong support for a determination of ‘bad faith’ registration and use.” Encyclopedia Britannica v. Zucarini, WIPO Case No.D2000-0330. See also RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242.

This Panel holds Respondent has registered and is using the <holidayinnmanassas.com> domain name 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 <holidayinnmanassas.com> be transferred to the Complainant.

Frank L. Politano
Sole Panelist

Dated: September 7, 2005