Six Contents Hotels, Inc. v. Jeffrey Evans

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Jeffrey Evans

Case No. D2002-1118

1. The Parties

The Complainant in this proceeding is Six Continents Hotels, Inc., a corporation

of the state of Delaware, United States of America.

The Respondent is Jeffrey Evans, an individual with a principal address of

7 Parkhurst Drive, Nashua, NH, United States of America.

2. The Domain Name and Registrar

This dispute concerns the domain name <crowne-plaza-hotel-bangkok.com>

(the "Domain Name").

The Domain Name was registered on August 11, 2002.

The Registrar with whom the Domain Name is registered is iHoldings.com, Inc.

d/b/a Dotregistrar.com.

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

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

("the Rules") both of which are implemented by ICANN on October 24,

1999, was received by the WIPO Arbitration and Mediation Center (the "Center")

in electronic format on December 4, 2002, and in hardcopy on December 6, 2002.

Payment in the required amount to the Center has been made by the Complainant.

On December 6, 2002, a request for registrar verification was sent to the Registrar

requesting confirmation that it had received a copy of the Complaint from the

Complainant, that the Domain Name was currently registered with it and that

the Policy was in effect, and requesting full details of the holder of the Domain

Name and advice as to the current status of the Domain Name. The Center formally

notified the Respondent of the Complaint and the proceedings commenced on December

9, 2002.

On December 29, 2002, a Response was received from the Respondent.

On January 13, 2003, a notification of appointment of administrative panel

and projected decision date ("the appointment notification") was sent

to the Complainant and the Respondent. In accordance with the Complainant’s

request, the appointment notification informed the parties that the administrative

panel would be comprised of a single panelist, Mr. Clive Elliott.

On January 15, 2003, a request from the Complainant for leave to file a reply

was received by the Panel. The Panel admitted the Reply, for reasons given below.

On January 23, 2003, a decision was submitted to the Center.

4. Factual Background

The Complainant, through one or more affiliates owns, manages or franchises

over three thousand, three hundred hotels and resorts world-wide under the brands

HOLIDAY INN, HOLIDAY INN EXPRESS, CROWNE PLAZA, and INTERCONTINENTAL among others.

The Complainant is the owner of United States Trademark Registration No. 1,

297, 211 for the mark CROWNE PLAZA, covering "hotel services – namely,

providing lodging and restaurant services in hotels." The CROWN PLAZA mark

was registered on September 18, 1984. A copy of the registration certificate

has been provided.

The Complainant claims that the Domain Name is comprised of the Complainant’s

mark, CROWNE PLAZA, plus the generic term HOTEL and the geographically descriptive

term BANGKOK.

The Respondent is a contractor for registering high level domain names, developing

websites, search engine registration and search engine promotion consistent

with its Internet strategies.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has used its CROWNE PLAZA mark since at least

as early as 1983. It also states that, there are currently over 190 CROWNE PLAZA

brand hotels and resorts world-wide and as a result of its exclusive use of

its CROWNE PLAZA mark, it has developed significant goodwill for consumers throughout

the world.

It also states that it has been operating a hotel in Bangkok, Thailand under

the name CROWNE PLAZA since at least as early as January 1990.

The Complainant says that it operates a web site at the URL "www.crowneplaza.com",

at which web site the Complainant provides hotel reservation services for any

of its CROWNE PLAZA hotels world-wide.

The Complainant claims that the Respondent has incorporated several of the

Complainant’s registered marks into its keyword meta-tag fields, and prominently

displays the Complainant’s logo mark on its web site, without the consent or

approval of the Complainant. It claims the Respondent has registered and is

using the Domain Name in an effort to divert Internet browsers looking for the

Complainant’s web site to its own web site for commercial gain.

The Complainant claims that the Respondent, through its web site at "www.crowne-plaza-hotel-bangkok.com",

provides hotel reservation services for hotels in Asia and around the world.

Consumers can reserve hotel rooms through the Respondent’s web sites for any

number of different hotel brands, the majority of which are not affiliated or

associated with the Complainant.

It is contended that when the Complainant learned of the Respondent’s unauthorised

registration and use of the Domain Name, and its unauthorised use of its Complainant’s

registered logo mark, its counsel sent a cease and desist letter to the Respondent,

asserting that its registration and use of the Domain Name and logo mark violated

several provisions of the U.S. Trademark Act. The Respondent did not respond

to the demand letter. On November 14, 2002, the Complainant again sent a cease

and desist letter to the Respondent; however, according to the Complainant,

to date the Respondent has neither complied with the demands in the letter,

nor responded to the allegations therein.

The Complainant acknowledges that it received a single telephone message from

the Respondent on or about December 23, 2002. However, it says that when the

Complainant attempted to return the message, the phone number left by the Respondent

was not in service.

In the Complainant's Request for Leave to file a Reply it notes that the Respondent

asserts a legal right to register the Domain Name at issue in the proceeding

by virtue of a contract between the Respondent and the Crowne Plaza Hotel in

Bangkok, Thailand. The Complainant states that it was unaware that this particular

hotel had entered into the contract upon which the Respondent now relies in

its Response. It states that because it did not know of the contract, it did

not address what rights, if any, this contract conferred in its Complaint. This

submission has merit and, in the Panel’s view, justifies the admission of this

additional material.

In its Reply, the Complainant asserts that the Contract Agreement did not in

any event authorise the Respondent to register the Domain Name, and therefore

does not provide the Respondent with any right or legitimate interest in the

Domain Name.

The Complainant responds to the assertion that a contractual agreement exists

between E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel Bangkok.

It notes that reliance is placed on the following provision from Amendment 1

in the contract agreement: "The agent shall provide the hotel an independent

high level domain including domain registration-site development-search engine

registration and promotion free for a minimum of 2 years from the date signed

up."

The Complainant submits that contrary to Respondent’s assertions, the contract

does not include an express authorisation or grant of right to the Respondent

to register a domain name that includes the Complainant’s CROWNE PLAZA mark.

Rather, the Contract Agreement merely states that the Respondent may provide

its reservation services for the hotel through the identified web sites, or

any future web site that the Respondent may register.

It goes on to submit that the Amendment requires the Respondent to provide

domain registration, web site development, and search engine registration services

at no cost to the hotel for two years. It suggests that no reasonable construction

of the contract agreement or the Amendment can be interpreted as expressly granting

to the Respondent a right or license to register a domain name incorporating

the CROWNE PLAZA mark. It concludes that these clauses simply obligate the Respondent

to provide certain contracted services to the hotel.

Furthermore, it asserts that the Crowne Plaza Hotel in Bangkok, Thailand, that

entered into the Contract Agreement with Respondent has no legal authority to

grant to any third party the right to register a domain name that incorporates

the CROWNE PLAZA mark. It states that the Complainant’s eCommerce Standards,

which were effective for all of the Complainant’s hotels outside of the Americas

as of July 1, 2001, expressly prohibit hotels from registering domain names

that incorporate any of the Complainant’s marks, including CROWNE PLAZA. Accordingly,

it submits that because the Crowne Plaza Hotel in Bangkok had no legal right

to register the Domain Name itself, it had no legal right to authorise the Respondent

to register the Domain Name.

B. Respondent

As foreshadowed above, the Respondent claims to have a contractual agreement

with E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel Bangkok.

It states that part of the contract included registering a high level domain,

developing the website, search engine registration and search engine promotion

consistent with its Internet strategies. The Respondent also claims that they

understood the Complainant was aware of the agreement.

According to the agreement, the Respondent was appointed as the "reservation

agent for the sale of hotel rooms or packages through "http://e-biz-travel.com",

"http://bangkok-hotel-reservations.com", "http://thailand-hotel-reservations.com"

and any other URL’s the agent may register to promote the sales at its own expense."

It is asserted that the Holiday Inn Crowne Plaza Hotel Bangkok provided a sales

kit, which included all logos and almost all graphics (including the trademark

in question). These were provided to facilitate the creation of the website.

As these were provided for the website, we must conclude that their use is not

only authorised but also expected.

The Respondent states that it is compensated by The Crowne Plaza Hotel Bangkok

IAW the commission schedule in Amendment 1. This schedule is based on the number

of room nights produced per month and other considerations. As it does not have

exclusive coverage of The Crowne Plaza Hotel Bangkok it must compete for search

engine positioning with many other reservation companies. For this reason they

put the hotel name in the keyword list. It is also part of its search engine

strategy.

The Respondent believes that E-Biz Travel Co., Ltd. registered the Domain Name

on August 11, 2001, after completing a signed agreement on July 19, 2001,

with The Crowne Plaza Hotel Bangkok and that the Domain Name was registered

pursuant to the contract for the purpose of selling room nights at this hotel.

The affiliate sites listed at the bottom of the page are part of the Respondent's

link strategy to increase the search engine position and page ranking of its

sites. It is submitted that it is not intended in any way to divert business

away from this hotel. There are also links to other sites. It is submitted that

this link strategy and the use of the hotel name in conjunction with the destination

name are consistent with the Respondent's search engine strategy and are necessary

under amendment 1 as part of our search engine promotion obligation.

The Complainant asserts that the Respondent failed to respond to outside counsel's

demand letter that included transferring the rights to this Domain Name. In

response it notes its telephone records indicate four phone calls to the Complainant's

outside counsel on October 25, 2002. The Respondent says that the Complainant

never returned its telephone calls.

6. Discussion and Findings

Para. 4(a) of the Policy requires 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;

- The Respondent has no right or legitimate interest in respect of the Domain

Name; and

- The Domain Name has been registered and is being used in bad faith.

Para. 4(b) of the Policy sets out four illustrative circumstances that, if

proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred

to above.

Para. 4(c) of the Policy sets out three illustrative circumstances that, if

proved, constitute evidence of a right or legitimate interest as described in

para. 4(a)(ii) referred to above.

Domain Name Identical or Similar

There is no real dispute that the Complainant has used its CROWNE PLAZA mark

for many years, there are currently numerous CROWNE PLAZA brand hotels and resorts

world-wide and that as a result of the Complainant’s exclusive use of its CROWNE

PLAZA mark, it has developed significant goodwill for consumers throughout the

world, including in Bangkok, Thailand.

The Complainant claims that the Domain Name is comprised of the Complainant’s

mark, CROWNE PLAZA, plus the generic term "hotel" and the geographically

descriptive term "Bangkok". This is self evidently so and the ground

is made out.

Respondent has no Right or Legitimate Interest

The real nub of the case is that the Respondent asserts it has a right to the

Domain Name and an entitlement to use it, based on the contractual agreement

between E-Biz Travel Co., Ltd. and the Holiday Inn Crowne Plaza Hotel, Bangkok.

The Respondent relies on what is effectively a defence to the Complaint, namely

that part of the contract included registering a high level domain, developing

the website, search engine registration and search engine promotion consistent

with its Internet strategies.

The Respondent of course claims that he understood the Complainant was aware

of the agreement but no satisfactory evidence is proffered to support this.

It also appears to be inconsistent with the Complainant’s international practice

in this regard.

The Complainant submits that because the Crowne Plaza Hotel in Bangkok had

no legal right to register the Domain Name itself, it had no legal right to

authorise the Respondent to register the Domain Name. This is true to an extent

but it does not necessarily resolve the issue because of possible difficulties

arising from the concept of ostensible authority.

At the end of the day, the Panel is of the view that, even putting things in

as positive as possible a light for the Respondent, the answer must be found

in the wording of the contract between the parties or their agents.

The Panel agrees that the contract does not include an express authorisation

or grant of rights to the Respondent to register a domain name that includes

the Complainant’s CROWNE PLAZA mark, but merely states that the Respondent may

provide its reservation services for the hotel through the identified web sites,

or any future web site that the Respondent may register (emphasis

added).

There is merit in the submission that no reasonable construction of the contract

agreement or the Amendment can be interpreted as expressly granting to the Respondent

a right or license to register a domain name incorporating the CROWNE PLAZA

mark and that these clauses simply obligate the Respondent to provide certain

contracted services to the hotel.

In the context of the facts of this particular case, it seems to be neither

necessary nor appropriate to imply or infer a right to register and use the

Domain Name. The Respondent was well able to provide its services without such

a right being implied or inferred.

Accordingly, it is found that the Respondent lacked the necessary right or

interest and the ground is made out.

Domain Name Registered and Being Used in Bad Faith

As the Panel sees it, the Respondent’s argument depends on a positive finding

on the issue of the Contractual Agreement and the rights and interests that

are purported to flow from it. Having rejected its argument on this point, the

necessary conclusion on this ground is that the ground is satisfactorily made

out.

7. Decision

Therefore, and in consideration to the Complaint’s compliance with the formal

requirements for this domain dispute proceeding, to the factual evidence and

legal contentions that were submitted, to the confirmation of the presence of

each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the

Policy, and on the basis of the statements and documents submitted and in accordance

with the Policy, the Rules and other applicable rules and principles of law,

as directed by paragraph 15(a) of the Rules, it is found:

(1) that the Domain Name is confusingly similar to the Complainant’s CROWNE

PLAZA trade mark and name.

(2) that the Respondent has no right or legitimate interests in respect of

the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith

by the Respondent.

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs

3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.

Clive L. Elliott

Sole Panelist

Dated: January 23, 2003

More cases by this complainant

• Six Contents Hotels, Inc. v. eGO — D2003-0341 · holidayinnsuwanee.com, holidayinnsweetwater.com · Transfer · 03 Jul 2003
• Six Contents Hotels, Inc. v. Hotel Partners of Richmond — D2003-0222 · holidayinnhotelreservations.com · Transfer · 14 May 2003
• Six Contents Hotels, Inc. v. Georgetown Inc. — D2003-0214 · holiday-inn-4-less.com, holidayinn4less.com · Transfer · 18 May 2003
• Six Contents Hotels, Inc. v. Jeffrey Butler — D2002-1076 · crowneplazawarwick.com · Transfer · 24 Jan 2003