Six Continents Hotels, Inc. v. Damir Kruzicevic

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Damir Kruzicevic

Case No. D2002-0674

1. The Parties

The Complainant in this administrative proceeding is Six Continent Hotels,

Inc. ("SCH"), a Delaware corporation with its principal place of business

at Three Ravinia Drive, Atlanta, Georgia, 30346-2149, United States of America.

The Complainant is represented in this proceeding by Carol Anne Been, Esq. of

Sonnenschein Nath & Rosenthal of Chicago, Illinois, Unites States of America.

The Respondent is Damir Kruzicevic, Vukovarska 43, 21000, Split, Croatia.

2. The Domain Name and Registrar

The domain name at issue is <holidayinns.com> (the "Domain Name").

The Registrar is Register.Com, Inc. 575 Eighth Avenue, 11th Floor, New York,

NY 10018, United States of America.

3. Procedural History

The Complainant filed a Complaint by e-mail with the World Intellectual Property

Organization Arbitration and Mediation Center (the "Center") on July

18, 2002. On July 22, 2002, the Center received a hard copy of the Complaint,

with supporting evidence.

On July 19, 2002, a Request for Registrar Verification was transmitted to the

Registrar, which confirmed, on July 29, 2002, that it had received a copy of

the Complaint, that the Domain Name was registered with it, and that the Respondent

was the current registrant of the Domain Name. The Registrar transmitted to

the Center the full whois details related to the Domain Name and confirmed that

the ICANN Uniform Dispute Resolution Policy (the "Policy") applies

to the Domain Name.

On July 30, 2002, the Center determined that the complaint satisfied the formal

requirements of 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"). On the

same day, the Center notified the Respondent of the commencement of this proceeding

and set August 19, 2002 as the date for the submission of a Response.

The Center did not receive a Response. On August 20, 2002, the Center sent

to the Parties, by email, a Notification of Respondent Default.

The Complainant elected to have the complaint resolved by a sole panelist.

On August 30, 2002, the Center invited the undersigned to act as Sole Panelist.

On August 31, 2002, the undersigned provided a Statement of Acceptance

and Declaration of Impartiality and Independence. On September 2, 2002, the

Center appointed the undersigned, notified the Parties by email of this appointment

and set September 16, 2002, as the Projected Decision Date.

The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules. It has also independently determined

and agrees with the assessment of the Center that the Complaint meets the formal

requirements of the Policy, the Rules and the Supplemental Rules.

The language of this administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

The Complainant SCH is a worldwide franchisor of several hotel brands including

HOLIDAY INN hotels. SCH and authorized users of its marks own and/or manage

HOLIDAY INN hotels in North America, Europe, Latin America, the Caribbean, Asia

Pacific, the Middle East and Africa. SCH and such authorized users operate over

1600 hotels and resorts as HOLIDAY INN hotels and over 1200 other hotels

bearing the HOLIDAY INN name in some form as part of their brand name worldwide.

The Complainant owns over 1300 trademark registrations in over 150 countries,

some of which go back as far as 1954, including in Spain, Germany, France, Switzerland,

Monaco, Benelux, Norway, Finland, Denmark, Austria, Italy, United Kingdom, Japan,

the United States and Canada. The Complainant also maintains an internet presence.

It owns and operates, inter alia, <holiday-inn.com> and "sixcontinentshotels.com/holiday-inn".

The Complainant has spent close to one billion dollars worldwide at a current

rate of approximately fifty-five million dollars per year in advertising and

promoting its goods and services under its HOLIDAY INN marks. The Complainant

also maintains a worldwide trademark policing program to prosecute and deter

infringement of its marks

The Complainant’s predecessor, Rescom World Access, registered the Domain Name

in 1995, and for approximately four years the renewal fees were paid in a timely

manner in response to standard annual reminder notices. For a variety of reasons,

the Complainant inadvertently allowed the Domain Name registration to lapse.

The Complainant attempted several times to re-register the Domain Name but was

unable to accomplish the registration. The Complainant later discovered that

the Domain Name had been registered to the Respondent on August 11, 2000 [1].

On December 27, 2000, the Complainant’s attorney sent a letter via e-mail and

registered mail to the Respondent at the address listed in the Register.com

WHOIS record for the Domain Name. The letter advised the Respondent of SCH’s

rights in the HOLIDAY INN trademarks, asserted that the Respondent’s registration

or use of the Domain Name violated SCH’s trademark rights and other rights,

and requested that the Respondent immediately refrain from using the Domain

Name and assign it to the Complainant. The Respondent failed to respond to this

letter.

On April 20, 2001, Complainant’s attorney sent a follow-up letter to the Respondent

via e-mail and registered mail attaching the December 27, 2000 letter and again

asserting the Complainant’s trademark and other rights and requesting that the

Respondent cease using the Domain Name and assign it to SCH. The Respondent

failed to respond to this letter as well [2].

The Respondent previously used the Domain Name to indirectly link to "www.freewebpage.com/freewebpage.html",

a website which provided a link to, among other websites, a search engine called

"Bestoftheweb.com," which included a travel link to, among other things

various hotel reservation websites that identified hotels owned by many of the

Complainant’s competitors. The Respondent also previously used the Domain Name

to link to the <Hoteldiscount.com> website, a site which identifies availability

for various hotels in any given city, including hotels owned by many of the

Complainant’s competitors. The Respondent currently uses the Domain Name to

link to <www.cheaprooms.com/holiday-inns.html>, which allows a user to

locate HOLIDAY INN hotels in various cities, or alternatively to search other

hotels including many owned by the Complainant’s competitors. The Respondent

owns the domain name registration for "www.cheaprooms.com" [3].

5. Parties' Contentions

A. Complainant

The Complainant relies on the following arguments to ask that the Domain Name

be transferred to it.

The Complainant’s HOLIDAY INN marks are well known across the world,

inherently distinctive, famous and serve as identifiers of SCH’s worldwide goods

and services to the public, based among other things upon SCH’s many years of

continuous, widespread use and extensive advertising and promotion under such

marks. The Complainant’s HOLIDAY INN marks are immediately recognizable by consumers

of hotel related goods and services worldwide as identifying the Complainant’s

goods and services.

As a result of the Complainant’s activities, it has acquired substantial good

will in its HOLIDAY INN trademarks, and these marks have become worldwide

identifiers of genuinely-sponsored SCH goods and services.

The domain name <holidayinns.com> is virtually identical and confusingly

similar to the Complainant HOLIDAY INN marks. The Respondent use of "Holiday

Inn" is instantly recognizable by the public as the Complainant’s proprietary

HOLIDAY INN mark and as identifying the Complainant’s hotel-related

services

The Respondent has no rights or legitimate interests in the domain name <holidayinns.com>.

The Respondent is neither a licensee of the Complainant, nor otherwise authorized

by the Complainant to use any of the HOLIDAY INN marks, including HOLIDAY INN

or <holidayinns.com>. The Respondent is not known (either as an individual,

business, or other organization) by the name "holidayinns.com". The

Respondent’s only interest in the Domain Name is to reap commercial gain from

misleading consumers and diverting them to his website "CheapRooms.com".

Respondent has registered and is using the domain name in bad faith. Respondent

registered, used and continues to use the Domain Name for hotel-related services

clearly intending to misdirect Internet users to sites which identify and promote

hotels owned by Complainant’s competitors, even after receiving two demand letters.

Respondent has also displayed a pattern of cybersquatting, as evidenced by

numerous proceedings under the Policy brought against Respondent, and in which

the subject domain name has been cancelled or transferred. Many of these proceedings

involve domain names that incorporate famous trademarks, such as "Victoria’s

Secret," "Absolut" (for use with alcoholic spirits), and "Oui

Magazine." See also WIPO Cases No. D2001-0059

and D2001-0502.

B. Respondent

The Respondent has not submitted a Response nor any other comments.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this

proceeding and obtain the transfer of the Domain Name, the Complainant must

prove that each of the three following elements are satisfied:

1. The Domain Name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights (see below, section 6.1); and

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

Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see

below, section 6.3).

Paragraph 4(a) in fine of the Policy clearly states that the burden of proving

that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint

on the basis of the statements and documents submitted and in accordance with

the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the

absence of exceptional circumstances, does not comply with any provision of,

or requirement under, the Rules or any request from the Panel, the Panel shall

draw such inferences therefrom, as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which

Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a

trademark or service mark; and (2) is the Domain Name identical or confusingly

similar to such trademark or service mark.

On the first point, the record clearly shows that Complainant has rights in

the trademark HOLIDAY INN.

On the second point, a minor difference in spelling by, for example, adding

an "s" to a mark, has no trademark significance (see Toyota Jidosha

Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enters. Ltd., WIPO

Case No. D2000-0802 (September 9, 2000) (holding respondent’s

domain names <itoyota.com> and <itoyotas.com> are confusingly similar

to complainant’s TOYOTA trademark); and Aurora Foods Inc. v. David Paul Jaros,

WIPO Case No. D2000-0274 (June 8, 2000)

(holding respondent’s domain name <duncanhine.com> confusingly similar

to complainant’s Duncan Hines trademark)).

Respondent’s registration and use of the Domain Name creates a likelihood of

confusion among consumers by falsely suggesting that the Complainant is the

source, sponsor, affiliate or endorser of Respondent, its services and any websites

that may be offered at or linked to the Domain Name. In this and other respects,

this case is similar to ACCOR v. SEOCHO, WIPO

Case No. D2002-0517 (August 12, 2002).

The Panel thus finds that the Complainant has rights in the HOLIDAY INN trademarks

and service marks, and that the Domain Name is confusingly similar to such trademarks

and service marks.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name ?

The Complainants submits that the Respondent has no rights or legitimate interests

in the Domain Name based on the Complainant’s prior use of the HOLIDAY INN marks

and was never authorized to use Respondent’s marks. The Respondent, whom did

not file a Response, did not dispute this contention nor provide information

as to its interests to use the Domain Name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights

or legitimate interests in the Domain Name, among other circumstances, by showing

any of the following elements:

"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have

been commonly known by the Domain Name, even if you have acquired no trade mark

or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of

the Domain Name, without intent for commercial gain to misleadingly divert consumers

or to tarnish the trade mark or service mark at issue."

The Respondent has not made any bona fide offering of goods or services under

the name HOLIDAY INN [4]. There are no elements

showing that the Respondent is or was commonly known by the Domain Name. There

is no evidence that the Respondent is making a legitimate noncommercial or fair

use of the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate

interests in the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith

?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation,

shall be evidence of the registration and use of a domain name in bad faith,

namely:

(i) circumstances indicating that the Respondent has registered or acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the Respondent's documented out-of-pocket

costs directly related to the domain name; or

(ii) The Respondent has 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 Respondent has engaged in a pattern of such conduct;

or

(iii) The Respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s

web site or location or of a product.

The Complainant must prove that the Domain Name was both registered and used

in bad faith.

It is not difficult to conclude that the Domain Name was registered in bad

faith. The Complainant’s marks are famous and have been used in several countries

throughout the world, including in Central and Eastern Europe. The Complainant

uses the domain name <holiday-inn.com> to advertise and offer its services

over the Internet. Any doubt as to the Respondent’s knowledge of what the mark

represented at the time it registered it is removed by the very fact that it

has consistently used the Domain Name to attract customers to sites offering

hotel-related services directly competing with the Complainant’s.

Indeed, Respondent’s use of the Domain Name clearly demonstrates an intentional

attempt to attract, for commercial gain, Internet users to a website by creating

a likelihood of confusion with the Complainant’s mark as to the source, sponsorship

affiliation or endorsement of the registrant’s website. According to Paragraph

4(b)(iv) of the Policy, that in itself constitutes evidence of bad faith registration

and bad faith use.

The Respondent also failed to respond to the Complainant’s letters and emails.

Failure to respond is another sign of bad faith use (See Pharmacia &

Upjohn AB v. Dario H. Romero, WIPO Case

No. D2000-1273 (November 13, 2000); Advanced Micro Devices, Inc. v. [No

Name], WIPO Case No. D2000-0515 (January

24, 2001); Telstra Corporation, Ltd. v. Nuclear Marshmallows, already

cited; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO

Case No. D2000-0330 (June 7, 2000); eBay Inc. v. Sunho Hong, WIPO

Case No. D2000-1633 (January 18, 2001); Ellerman Investments Limited

and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO

Case No. D2001-1461; and ACCOR v. Tigertail Partners, WIPO

Case No. D2002-0625 (August 29, 2002)).

Finally, there is some evidence of a pattern by Respondent of registering domain

names confusingly similar with well-known marks "to prevent the owner of

the trademark or service mark from reflecting the mark in a corresponding domain

name." In light of the foregoing, it is unnecessary to decide whether the

Complainant would win its case on that ground alone.

In light of the above, the Panel finds that the Domain Name was registered

and is being used in bad faith.

7. Decision

On the basis of the elements set out above, the Panel finds that :

1. The domain name <holidayinns.com> is confusingly similar to the trademark

HOLIDAY INN, in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect

of the Domain Name;

3. The Domain Name was registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15

of the Rules, the Panel orders that the Domain Name <holidayinns.com>

be transferred to the Complainant.

Daniel Gervais

Sole Panelist

Dated: September 10, 2002

Footnotes:

1. Complainant asserts that this situation

would be covered under ICANN’s proposed Redemption Grace Periods for Deleted

Names, which was posted for comment on February 14, 2002.

2. Some nineteen months elapsed between the

time the second letter was sent and the time Complainant filed its complaint.

Under some circumstances, that may have required the panel to decide whether

Respondent would have been entitled to argue for the application of the equitable

doctrine of laches (see The New York Times Company v. New York Internet Services,

WIPO Case No. D2000-1072 (December 5,

2000); Scorpions Musikproductions und Verlagsgesellschaft MBH .v. Alberta

Hot Rods, WIPO Case No. D2001-0787

(November 7, 2001)). However, as Respondent did not file a response, there is

no need to do so.

3. According to the WHOIS database.

4. As the only offering made under the domain

name (i.e. linking Internet users to <cheaprooms.com>) constitutes bad

faith use, it cannot be a bona fide offering.

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