The Leading Hotels of the World, Ltd. v. Interdynamic S.A.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Leading Hotels of the World Ltd v. Interdynamic S.A.

Case No. D2001-1435

1. The Parties

The Complainant is The Leading Hotels of the World Ltd, a New York

corporation with its principal place of business at New York, NY, U.S.A.

The Complainant is represented by Abelman, Frayne & Schwab, Attorneys

of New York, NY, U.S.A.

The Respondent is Interdynamic S.A., a Greek corporation with an address

in Heraklion, Crete, Greece. The Respondent is represented by its Managing

Director, Mr. Jimmy Sophios.

2. The Domain Names and Registrar

The domain names at issue are <worldleadinghotels.net>, <leading-hotels.net>

and <greekleadinghotels.com>. The domain names are registered with

Tucows Inc. of Toronto, Canada ("the Registrar"). The three

names were first registered with the Registrar on June 11, 2000,

June 15, 2001 and June 15, 2001 respectively.

3. Procedural History

The Complaint submitted by the above Complainant was received on December 7, 2001,

(electronic version) and December 11, 2001, (hard copy) by the

World Intellectual Property Organization Arbitration and Mediation Center

("WIPO Center").

On December 17, 2001, a request for Registrar verification was

transmitted by the WIPO Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the

Complainant as requested by WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("Supplemental Rules"), paragraph

4(b).

- Confirm that the domain names at issue are registered with it.

- Confirm that the person identified as the Respondent is the current

registrant of the domain names.

- Provide full contact details, i.e., postal address(es), telephone

number(s), facsimile number(s), email address(es), available in the Registrar’s

WHOIS database for the registrant of the disputed domain names, the technical

contact, the administrative contact and the building contact for the domain

names.

- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP")

was in effect.

- Indicate the current status of the domain name.

By email dated December 17, 2001, the Registrar advised WIPO

Center as follows:

- It is the Registrar of the domain names in question.

- The Respondent is shown as the "current registrant" of

the domain names. Mr. Jimmy Sophios is shown as the administrative

and billing contact.

- The UDRP Policy is in effect.

- The domain name registrations are currently on "hold"

status.

- The Registrar has currently incorporated in its agreements for Uniform

Domain Name Dispute Resolution Policy adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") (hereinafter simply

the "Policy").

The advice from the Registrar that the domain names in question are on

"hold" status indicates the Respondent has not requested that

the domain names at issue be deleted from the domain name database. The

Respondent has not sought to terminate the agreement with the Registrar.

Accordingly, the Respondent is bound by the provisions of the Policy. The

Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of

the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy

("Rules"), the WIPO Center on December 18, 2001, transmitted by

post-courier and by email a notification of the Complaint and Commencement

of Administrative Proceedings to the Respondent. A copy of the Complaint

was also emailed to the Registrar and ICANN.

- The Complainant elected to have its Complaint resolved by a sole

Panelist; it has duly paid the amount required of it to the WIPO Center.

- The Respondent was advised that a Response to the Complaint was

required within 20 calendar days. The Respondent was also advised

that any Response should be communicated, in accordance with the Rules,

by four sets of hard copy and by email. A Response was filed by the Respondent

on January 6, 2002 (electronic) and January 6, 2002 (hard

copy).

- WIPO Center invited the Honorable Sir Ian Barker QC

of Auckland, New Zealand, to serve as Panelist in the case.

- The Panelist duly advised acceptance and forwarded to the WIPO Center

an executed declaration of impartiality and independence. The Panel finds

that the Administrative Panel was properly constituted in accordance with

the Rules and the Supplemental Rules.

- On January 15, 2002, WIPO Center forwarded to the Panel

by courier the relevant submissions and the record. In terms of Rule 5(b),

in the absence of exceptional circumstances, the Panel is required to

forward its decision by January 29, 2002.

- However, on January 17, 2002, the Center received an e-mail communication

from the Complainant with a further statement in accordance with the UDRP

Policy. The e-mail noted that in the Response dated January 5, 2002,

the Respondent omitted the concluding statement required under Paragraph

5(b)(viii) of the Rules. The e-mail was forwarded to the Panel. The Panel

therefore instructed WIPO Center to issue an order that the Respondent

provide the concluding statement under Paragraph 5(b)(viii) of the Rules

within 2 working days. No response was received from the Respondent.

4. Factual Background

(1) The Complainant is the registered owner of the following service

marks in the United States of America registered by the United States

Patent and Trademark Office under the Principal Register:

- THE LEADING HOTELS OF THE WORLD, Trademark Registration No. 1433355;

- THE LEADING HOTELS OF THE WORLD (SPECIAL SCRIPT), Trademark

Registration No. 1516816;

- THE LEADING HOTELS OF THE WORLD (AND DESIGN), Registration No. 1520255.

The Complainant has registered and has applied to register as trademarks

THE LEADING HOTELS OF THE WORLD, THE LEADING HOTELS OF THE WORLD (SPECIAL

SCRIPT), THE LEADING HOTELS OF THE WORLD (AND DESIGN), THE LEADING SMALL

HOTELS OF THE WORLD and THE LEADING HOTELS OF THE WORLD LUXURY ALLIANCE

(AND DESIGN) collectively referred to as the LHW trademarks)

throughout the world. In Greece, the Complainant has trademark registration

for "The Leading Hotels of the World" and "The Leading

Small Hotels of the World" plus two associated services marks.

The Complainant has used the mark THE LEADING HOTELS OF THE WORLD continuously

since January 1976 in domestic, interstate and international commerce as

a trademark to refer to its services in respect of hotel reservations, marketing,

promotion and advertising. The Complainant has invested considerable sums

in promoting the LHW trademarks. It actively monitors their

use by member hotels in order to maintain a high-end brand image of hotels

of consistent luxury standards.

As a result of its long domestic and international sales activities for

73 years, the Complainant has become well-known throughout the world,

and in particular, in the luxury travel industry, in respect of its services

offered under the LHW trademarks. The Complainant has received

numerous awards and international recognition in the travel industry. The

Complainant currently uses their LHW trademarks in approximately

380 member hotels in approximately 75 countries throughout the world, including

Greece.

5. Parties’ Contentions

Complainant

The domain names <worldleadinghotels.net>, <leading-hotels.net>

and <greekleadinghotels.com> are identical or confusingly similar

to the Complainant’s LHW trademarks in terms of visual, phonetic

and semantic reference in that they contain or otherwise incorporate the

Complaint’s registered trademarks. The addition of the word "Greek"

in the domain name <greekleadinghotels.com> is not distinctive and

acts only as a geographic reference in respect of the Complainant’s LHW

trademarks.

The Respondent has no rights or legitimate interests in respect of the

domain names that are the subject of this Complaint because:

A. The Respondent was aware of the Complainant’s rights in respect

of the LHW trademarks and deliberately adopted the disputed

domain names with the intent to trade-off the Complainant’s goodwill and

reputation in respect of its LHW trademarks. This is supported

by the following facts:

(i) The Complainant has registered or applied to register and

has used the LHW trademarks prior to the registration

of the domain names. The Complainant is well-known throughout the

world in association with the LHW trademarks, and in

particular, in the luxury travel industry.

(ii) The domain names <leading-hotels.net> and <greekleadinghotels.com>

link to the domain name <worldleadinghotels.net>. The domain

name<worldleadinghotels.net> is used to refer to an active website

for online hotel travel reservations and membership services in respect

of hotel reservations. These services which are also offered on the

Complainant’s website at <lhw.com>.

(iii) The content of the Respondent’s website at <worldleadinghotels.net>

uses the Complainant’s trademarks THE LEADING HOTELS OF THE WORLD

and THE LEADING SMALL HOTELS OF THE WORLD on the web page at the domain

name <worldleadinghotels.net>. This use of Complainant’s marks

is unauthorized.

(iv) The content of the Respondent’s website at <worldleadinghotels.net>

uses similar language to refer to its membership services as the Complainant

does for the same or similar services referred to on the Complainant’s

website at <lhw.com>, which was registered on July 16, 1996.

(v) The content of the Respondent’s website at <worldleadinghotels.net>

uses identical pictures to depict the hotels as the Complainant uses

on its website at <lhw.com> and in its trade directories and

other promotional material for the same or similar services.

B. The Respondent is not commonly known as or otherwise uses as a

company, business or trade name the domain names the subject of their

Complaint. The Respondent registered the domain name in question after

the Complainant’s mark was registered and well-established.

The Respondent is using the domain names <worldleadinghotels>,

<leading-hotels.net> and <greekleadinghotels.com> for commercial

gain at the expense of the Complainant’s accrued goodwill in respect of

their LHW trademarks and with the intent misleadingly to

divert consumers. The Respondent requests a fee for its customer membership

services and thus usurps the reservation commission systems of the Complainant

for the same or similar services.

C. The domain names <worldleadinghotels.net>, <leading-hotels.net>

and <greekleadinghotels.com> have been registered and are being

used in bad faith for the following reasons:

(a) the domain names <leading-hotels.net> and <greekleadinghotels.com>

link to the domain <worldleadinghotels.net>. The domain name

<worldleadinghotels.net> is being used as at the time of filing

this Complaint to refer to a web page which provides: (a) online hotel

reservation services; and (b) offers, for a fee, customer membership

services in respect of hotel reservation services.

(b) 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 the source, sponsorship,

affiliation or endorsement of the website and the products and services

offered on the website.

(c) The Complainant initially became aware of the Respondent’s

registration of the domain name <worldleadinghotels.net> on

or about July 19, 2001. The Complainant wrote to the Respondent

on August 30, 2001 and requested it cease use of THE LEADING

HOTELS OF THE WORLD and THE LEADING SMALL HOTELS OF THE WORLD and

cancel or assign the domain name <worldleadinghotels.net>. The

Complainant requested a response on October 1, 2001. No

response from the Respondent has been received.

(d) Since August 31, 2001 the Respondent has increased the scope

of its activities under the domain name <worldleadinghotels.net>

in respect of its online hotel reservation services by: (a) including

additional countries in which they offer online hotel reservation

services, and (b) including additional hotels.

(e) The Respondent’s domain names link to a website which uses

the Complainant’s registered trademarks "THE LEADING HOTELS OF

THE WORLD" AND "THE LEADING SMALL HOTELS OF THE WORLD".

The website also uses the following terms which are identical or confusingly

similar to the Complainant’s registered trademarks: "International

Leading Hotels of the World", "The Best Luxury Hotels of

the World", "The Great Hotels of the World" and "The

Finest Hotels of the World".

The use of the Complainant’s LHW trademarks, and numerous

expressions are identical or confusingly similar to the complainant’s

LHW trademarks, is intentional deception of consumers

seeking to show that the Respondent’s website is, or is affiliated

with, the Complainant.

The content of the Respondent’s website at <worldleadinghotels.net>

gives a description of the membership services similar to the description

given by the Complainant at its website at <lhw.com> for the

same or similar services and uses identical pictures to depict hotels

in respect of the same or similar services offered by the Complainant.

(f) The content of the website refers to the Complainant but does

not refer to the Complainant’s hotel reservation or membership services.

For example, the website states:

"The Elite Membership Card (that you will soon receive after

you sign up), gives you extra privileges in each Hotel you visit,

such as special discounts to the hotel’s services and facilities.

The hotels of this site are members of the best international hotel

associations such as "The Leading Hotels of the World, Ltd…"

This statement on the website suggests that the hotel reservation

services offered by the Respondent at their website are those of the

Complainant or otherwise have the sponsorship, affiliation or endorsement

of the Complainant.

(g) The Respondent’s membership services offered at the website

at <worldleadinghotels.net> are deliberately designed to deceive

consumers that such services are those of or associated with the Complainant

in respect of the Complainant’s services offered under their LHW

trademarks. The Respondent fails to state the membership services

organization involved and merely offers customers an opportunity to

become a "member".

(h) The Respondent’s services offered at the website at <worldleadinghotels.net>

are intentionally designed to trade-off the goodwill of the Complainant

in respect of the Complainant’s LHW trademarks and profit

therefrom. There is no indication of the Complainant’s services offered

under the LHW trademarks or any link to the Complainant’s

website. By taking online hotel reservations and requesting membership

fees the Respondent is attempting wrongfully to gain from the reputation

of the Complainant in respect of its LHW trademarks.

The Respondent has used the disputed domain names primarily for the

purpose of disrupting the business of a competitor and improperly

profiting from their goodwill. The domain name <worldleadinghotels.net>

is used for the same or similar services of the Complainant. The website

allows a visitor to review a hotel by reference to the Complainant’s

LHW trademarks and make hotel reservations online. By

using the Complainant’s LHW trademarks and trademarks

identical or confusingly similar thereto the Respondent is attempting

to divert customers from the Complainant and profit therefrom.

The use of the LHW trademarks by the Respondent is

unsupervised. The Complainant has established a high brand image in

respect of their LHW trademarks and actively maintains

and monitors standards for the use of the LHW trademarks

by member hotels. Hotels which fail to meet the standard of luxury

in respect of their hotel services are unable to use the LHW

trademarks.

The unsupervised use of the LHW trademarks by the Respondent

on the website at <worldleadinghotels.net> may dilute and tarnish

the reputation and high brand image of the LHW trademarks

and otherwise injure the Complainant’s customers and member hotels.

Respondent

The holder of a trade name, registered at the Board of Trade, has the right

to file for a domain name. This just does not guarantee the use of a domain

name through the internet if the holder of the trade name has not registered

it as a domain name.

Respondent has been in the travel agency business for 30 years, providing

services to the top end of the market. Part of the service involves informing

clients about what hotels are available, including hotels that are members

of associations such as the Complainant’s. Respondent operates a number

of domain sites for various categories in the travel business. Respondent

claims the right to categorize and organize products under relative sites

as the best way of providing information to customers. The hotels involved

authorize information about themselves including photographs being displayed

on the internet.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted

in accordance with the policy, these rules and any rules and principles

of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy,

is to show:

- That the domain names registered by the Respondent are identical

or confusingly similar to a trademark or service mark in which the

Complainant has rights;

- That the Respondent has no legitimate rights or interests in

respect of the domain names; and

- The domain names have been registered and

used in bad faith.

Confusing Similarity

The domain name <worldleadinghotels.net> is obviously confusingly

similar to the Complainant’s marks "The Leading Hotels of the World".

The domain name <leading-hotels.net>, although it does not specify

a global coverage, is also confusingly similar to the Complainant’s marks.

The words "leading hotels" indicate "leading hotels"

anywhere in the world.

The domain name <greekleadinghotels.com> is in a slightly different

category. However, the Panel considers that the domain name is confusingly

similar in that it indicates a particular country subset of leading hotels

of the world. In other words, an internet user, interested in accessing

detail on the Greek hotels included under the "Leading Hotels of the

World" banner, would think that the "leading hotels" of Greece

had been placed in a separate website to save the user facing a list of

numerous country sites. Similar views were reached in other WIPO decisions,

e.g:

(a) British Broadcasting Corporation v Renteria (D2000-0050

– trademark BBC, offending domain names <bbclondres.com>, <bbcespanol.com>).

(b) AT&T Corp v WorldclassMedia.com (D2000-0553,

trademark AT&T, offending domain names <attmexico.com> and <att-latinamerica.com>).

(c) Axel Springer Verlaq A.G. v Fritsche (D2000-1335,

trademark BILD, offending domain name <bild-dominicanacom>).

In each of these decisions, with which the Panel respectfully agrees, there

was a geographical word alongside a well-known mark. This addition does

not sufficiently or necessarily distinguish the domain name from the brand

in the mind of consumers. In the present case, consumers of high-quality

accommodation products would assume an association with the Complainant

of a domain site for the leading hotels of a particular country which is

a well-known tourist destination, i.e. Greece.

The Response demonstrates a lack of appreciation of the Policy when it

refers to a registered trade name not guaranteeing the right to use that

trade name as a domain name. The Policy is concerned with the rights of

holders of trade and/or service marks not to have those marks reflected

in domain names with which they have no connection. The Complainant owns

marks: this fact entitles it to bring proceedings under the Policy and which

have been acquired and are being used in bad faith.

Legitimacy

The Respondent was given no right to use the names in any way by the Complainant.

It is actively using the Complainant’s marks in its websites without

any authority from the Complainant. It offers similar services to the Complainant

and uses identical images for hotels as does the Complainant. Moreover,

the domain names <leading-hotels.net> and <greekleadinghotels.com>

link to the domain name <worldleadinghotels.net>. Since August 31, 2001,

Respondent has added further hotels to its website for which it will take

reservations. The Complainant has therefore proved the second criterion

primarily for the reasons enunciated in the Complainant’s submissions which

are accepted by the Panel.

Bad Faith

Obviously, as a travel agent for 30 years, the Respondent knew of

the Complainant’s marks at the time of registration of the disputed domain

names. Since then, it has blatantly and actively used the Complainant’s

marks on its websites, as well as in some of its marketing strategies. The

potential for confusion and diversion of customers is obvious. Moreover,

there is a grave risk of tarnishment of the marks from such unauthorized

use, given the Complainant’s concerns to maintain quality standards amongst

the hotels in its portfolio.

In the view of the Panel, bad faith registration and use is convincingly

proved in this case. Another reason for that finding lies in the Respondent’s

disregard of the Complainant’s "cease and desist" letter. The

Respondent has offered no explanation for not replying.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names registered by the Respondent are confusingly

similar to the trademarks to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect

of the domain names; and

(c) The Respondent’s domain names have been registered and are being

used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires

that the registration of the domain names <worldleadinghotels.net>,

<leading-hotels.net> and <greekleadinghotels.com> be transferred

to the Complainant.

Hon. Sir Ian Barker Q.C.

Sole Panelist

Dated: January 28, 2002

More cases by this complainant

• The Leading Hotels of the World, Ltd. v. Online Travel Group — D2002-0241 · leadinghotels.com, leading-hotels-worldwide.com, leadinghotelsworldwide.com · Split decision · 24 May 2002