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Six Continents Hotels, Inc. v. Midas Search Limited [2005] GENDND 51 (21 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Midas Search Limited

Case No. D2004-0986

1. The Parties

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

The Respondent is Midas Search Limited of Gibraltar, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <watsonvilleholidayinn.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2004, by email and on November 26, 2004 in hardcopy. On November 26, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 29, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details for the administrative, billing, and technical contact and stating it had not received the Complaint. OnlineNic also indicated that the registrant had not submitted in its registration agreement to the jurisdiction at the location of its principal office, in China.

In response to a notification by the Center on December 2, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 3, 2004. 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”), 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 December 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2004.

The Center appointed Thomas Webster as the sole panelist in this matter on January 13, 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 administrative proceeding is Six Continents Hotels, Inc., a Delaware corporation which owns, manages and/or franchises directly or through its affiliates the HOLIDAY INN, HOLIDAY INN EXPRESS, HOLIDAY INN SELECT and HOLIDAY INN SUNSPREE brand hotels and resorts.

Complainant has registered the following trademarks in the Unites States:

MARK	U.S. REG.NO.
HOLIDAY INN	592,539
HOLIDAY INN (and Design)	592,541
HOLIDAY INN OF AMERICA (and Design)	708,521
HOLIDAY INN (Stylized)	864,359
HOLIDAY INN THE WORLD INNKEEPER (and Design)	1,059,639
HOLIDAY INN (and Design)	1,243,330
HOLIDAY INN (and Design)	1,275,560
HOLIDAY INN (and Design)	1,281,008
HOLIDAY INN EXPRESS	1,651,851
HOLIDAY INN SUNSPREE	1,806,858
HOLIDAY INN SUNSPREE RESORTS and Design	2,732,102
HOLIDAY INN SELECT	2,034,107
HOLIDAY INN EXPRESS (and Design)	2,207,318
HOLIDAY INN SELECT (and Design)	2,370,049
HOLIDAY INN SUITES RESORT	2,640,061
HOLIDAY INN CROWNE PLAZA (and Design)	1,555,275
RELAX, IT'S HOLIDAY INN	2,853,822

In addition, Complainant is the owner of international registrations for HOLIDAY INN marks in other countries such as Gibraltar, where the Registrant has listed its address, Spain, Portugal and Morocco.

Complainant argues that it also has “accrued trademark rights by virtue of its long and continuous use of the mark HOLIDAY INN” and that HOLIDAY INN hotels “are the most recognized hotel brands in the world” with a “100% name recognition in the United States.”

In addition, the Complainant operates websites under the domain names <holiday-inn.com>, <holidayinnexpress.com>, but also hundreds of domain names containing the HOLIDAY INN Marks. The Complainant remarks that “many of these domain names consist of Complainant's mark HOLIDAY INN plus the name of a city in which a Holiday Inn Hotel is located.”

Respondent registered the disputed domain name on March 29, 2003, and is using it in connection with a website titled ‘Zoofilia at watsonvilleholidayinn.com’.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns about 1,270 registrations for its mark HOLIDAY INN and HOLIDAY INN EXPRESS in about 150 countries and “has used the mark HOLIDAY INN in connection with lodging and restaurant services in hotels and motels since at least as early as 1952”.

Complainant also argues that he has registered “more than 2,900 domain names to use in connection with its HOLIDAY INN Hotels and other SCH Brand Hotels”.

According to the Complainant, “several panelists have pointed out that the use of another's trademark in connection with a geographic term increases the likelihood of consumer confusion”. Complainant also remarks that “the fact that Complainant has a Holiday Inn Express Hotel & Suites hotel in Watsonville, California, USA, exacerbates the likelihood of confusion”.

In addition, the Complainant puts forward that “the mere fact that the Domain Name incorporates Complainant's HOLIDAY INN mark in its entirety and thus, leaves an overall impression of similarity to Complainant's mark proves that the Domain Name is confusingly similar to Complainant's mark.”

The Complainant also claims that the Respondent has no rights nor legitimate interests in the domain name <watsonvilleholidayinn.com>. Complainant alleges that “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 as a domain name or otherwise”. In the Complainant’s view, “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 (transfer of domain name <holidayin.com>).

Moreover, the Complainant points out that “Respondent has never used, or made preparations to use, the Domain Name or names corresponding to the Domain Name in connection with a bona fide offering of goods or services. Respondent is using the Domain Name in connection with a website titled ‘Zoofilia at watsonvilleholidayinn.com,’ a hardcore animal pornography site”. According to the Complainant, “respondent's act of using a confusingly similar domain name for a pornographic website does not qualify as a bona fide offering of goods or services.”

The Complainant adds that “given Complainant's established use of its famous HOLIDAY INN Marks, it is highly unlikely that the Respondent is commonly known by the mark HOLIDAY INN.”

Finally, the Complainant argues that the Respondent “has registered and is using the Domain Name in bad faith, in an effort to intentionally attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location, in violation of the Policy.”

According to the Complainant, “Using another's well-known trademark to attract Internet users to pornographic websites constitutes bad-faith use of a domain name”. In addition, the Complainant considers that “failure to positively respond to a complainant’s efforts to make contact provides ‘strong support for a determination of ‘bad faith’ registration and use’. Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.”

B. Respondent

The Respondent did not file a response.

6. Discussion and Findings

Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:

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

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

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

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s registered trademark, connected to a geographic indication.

Several Panels have underlined that the use of a Complainant’s trademark in connection with a geographic term does not prevent confusing similarities. In InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel established that “the mere addition of the word ‘India’ at the front of the Respondent’s domain name is not sufficient to distinguish it from the trademarks of the Complainant. The Panel notes that such addition appears most likely to be made with an intent to induce Internet users to believe that they are connecting their computers with a site pertaining to an Indian affiliate of the Complainant, or to some kind of ‘Indian operation’ of the Complainant.”

The domain name <watsonvilleholidayinn.com> appears to lead Internet users to the Complainant’s subsidiary’s website in Watsonville, California. The confusion is even more likely given the fact that the HOLIDAY INN mark is world famous.

In PepsiCo, Inc. v. QWO, WIPO Case No. D 2004-0865, dealing with a famous brand, the Panel pointed out that “forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant’s mark (here being PEPSICO) is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD ‘.com’.” The same reasoning can be followed for other geographic terms such as cities.

Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Since the Respondent has not replied to the Complainant's prima facie case on this element, there is no argument indicating that the Respondent had a legitimate interest in respect of the domain name. (See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221, finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names.)

Therefore, according to the Policy, paragraph 4 (a)(ii) and paragraph 14(b) of the Rules, it does not appear that the Respondent had any rights or legitimate interest in respect of the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of the Policy, paragraph (a)(iii) shall be evidence of the registration and use of the domain name in bad faith, including:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel was not able to access the disputed domain name’s website, but, as shown by exhibit K to the Complaint, it appears that the Respondent has registered and is using the disputed domain name in connection with a website titled ‘Zoofilia at watsonvilleholidayinn.com,’ a pornographic website.

Several Administrative Panels have decided that the use of a domain name to direct Internet users to other web sites which may offer goods or services - usually of pornographic nature - does not constitute use of the domain name for the bona fide offering of goods or services (e.g. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co. a/k/a chargergirls.net; WIPO Case No. D2000-0118; Libro AG v. NA Global Link Limited,WIPO Case No. D2000-0186; Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610)”.

Respondent has used the disputed domain name to direct Internet users to its pornographic site and as such, has been using the name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion regarding whether Complainant was the source, sponsor, affiliate or endorser of its website.

As pointed out in National Football League Properties Inc, supra, “while a user who arrives at the pornographic site may promptly conclude that it is not what he or she was originally looking for, the registrant has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain”.

Therefore, according to the Policy paragraph 4(a)(iii) and paragraph 14(b) of the Rules, it appears that the Respondent has registered and is using the 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 <watsonvilleholidayinn.com>, be transferred to the Complainant.

Thomas Webster
Sole Panelist

Date: January 21, 2005