Six Contentinents Hotels, Inc. v. Frequent Flyer Depot

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL

DECISION

Six Contentinents Hotels, Inc. v. Frequent Flyer Depot

Case No. D2003-0550

1. The Parties

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

The Respondent is Frequent Flyer Depot, Austin, Texas, United States of America.

2. The Domain Names and Registrar

The disputed domain names <holidayinnpriorityclub.com> and <holidayinnrewards.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2003. On July 14, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On July 14, 2003, Intercosmos Media Group d/b/a directNIC.com 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 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2003.

The Center appointed Andrew Mansfield as the sole panelist in this matter on August 15, 2003. 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

Complainant, itself, or through an affiliate, is the franchisor of the well-known Holiday Inn, Holiday Inn Express, and Crowne Plaza hotel brands. In addition to franchised hotels, Complainant owns and operates numerous Holiday Inn, Holiday Inn Express, and Crowne Plaza hotels worldwide. An affiliate of Complainant also owns, manages, and franchises the Intercontinental hotel brand globally.

Complainant owns one thousand, two hundred thirty-seven (1,237) registrations for its numerous Holiday Inn Hotels service marks in one hundred eighty-two (182) countries throughout the world. Complainant owns the following eighteen (18) registrations for its marks incorporating Holiday Inn in the United States alone (listed by United States Registration Number): 0592539; 0592541; 0708521; 0864359; 1059639; 1243330; 1261925; 1275560; 1281008; 1281951; 1301022; 1555275; 1651851; 1806858; 2034107; 2207318; 2370049; and 2640061. The words "HOLIDAY INN" are components of each referenced mark. Fourteen of the above-listed registrations are now incontestable pursuant to United States law. Complainant also has a registered United States trademark in "PRIORITY CLUB," under which it provides the service of linking to affiliate sites.

5. Parties’ Contentions

A. Complainant

Complainant claims that it has used the mark "HOLIDAY INN" since 1952, and has spent more than $1 billion promoting the mark. There are over 2,900 Holiday Inn establishments in over 70 countries. Complainant claims that Holiday Inn is the most-widely-used hotel chain and is also located in the most countries around the world.

Complainant has registered and maintains over 1,100 domain names to promote and/or protect its marks. Complainant has provided information and registration services at "www.holiday-inn.com" since 1995. That and related websites run by Complainant receive tremendous web traffic.

Complainant alleges that both of the domain names subject to this proceeding are identical or confusingly similar to its marks. The Domain Name <holidayinnrewards.com> includes Complainant’s famous HOLIDAY INN mark with the additional, descriptive term "rewards." The Domain Name <holidayinnpriorityclub.com> is identical and/or confusingly similar to Complainant’s marks, incorporating two of Complainant’s registered marks in their entireties, HOLIDAY INN and PRIORITY CLUB.

Complainant also alleges that Respondent has no rights or legitimate interests to the words "holiday inn" or "priority club." Respondent does not and is not preparing to offer goods or services under those marks. Respondent does not operate a free-speech, comment or criticism website.

The fact

that Respondent

brokers

Holiday

Inn Priority

Club points

via its

web site

does not

give Respondent

any rights

or legitimate

interest

to use the

famous HOLIDAY

INN and

PRIORITY

CLUB marks

in domain

names. Respondent

relies on

Nokia

Corporation

v. Nick

Holmes t/a

Etype Media,

WIPO

Case No.

D2002-0001,

in which

the Panel

decided

that

"A licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark."

Complainant also claims that Respondent’s use of Complainant’s famous Holiday Inn and Priority Club marks in its Domain Names is not a "nominative" or "referential" use of the marks, because internet users are likely to mistakenly believe that Respondent’s web sites are sponsored by, affiliated with, or otherwise endorsed by Complainant, when they are not. As one Panelist stated:

Respondent’s use of the mark in the disputed domain names suggests to Internet users that Complainant sponsors or endorses Respondent’s hotel reservation services. . . . Respondent may be able to offer Complainant’s hotel rooms on its website as part of its range of hotel room offerings, but it cannot use Complainant’s mark as its domain name, that is, as the entryway to its business. The latter use suggests ownership, sponsorship or authorization by Complainant.

Six

Continents

Hotels,

Inc. v.

Georgetown,

Inc.,

WIPO

Case No.

D2003-0214.

While Complainant

admits that

a reseller

or distributor

may use

the mark

of a manufacturer

or supplier

in a domain

name, Complainant

relies on

Oki Data

Americas,

Inc. v.

ASD, Inc.,

WIPO

Case No.

D2001-0903,

for

the proposition

that a reseller

or distributor

may only

do so when

it exclusively

sells the

manufacturer’s

or service

provider’s

products

or services

at that

website.

That is

not the

case in

this matter.

Finally, Complainant avers that the registration and use of the domain names by Respondent is in bad faith. Complainant’s terms and conditions for Priority Club points specifically prohibit the transfer that Respondent’s website appears to authorize. Complainant believes that Internet users will mistakenly believe that Respondent’s website is authorized by or affiliated with Complainant and that the incorporation of Complainant’s marks by Respondent was done to engender exactly such confusion.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent 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 in question; and

(iii) the domain name has been registered and is being used in bad faith.

Although Respondent did not provide any reply, the Panel will examine Complainant’s allegations in light of the Policy and other applicable rules or laws. It is beyond dispute that Complainant has a mark that is termed "famous" under United States trademark law and that many of the variations on that mark are incontestable. The Panel finds that Complainant has marks in "HOLIDAY INN" and "PRIORITY CLUB."

A. Identical or Confusingly Similar

One of the two subject domain names (<holidayinnpriorityclub.com>) incorporates two of Complainant’s marks and the other domain name (<holidayinnrewards.com>) incorporates Complainant’s mark and a generic phrase. Both domain names are confusingly similar to Complainant’s marks. The domain name <holidayinnpriorityclub.com> is identical to Complainant’s marks.

B. Rights or Legitimate Interests

Respondent "brokers" Holiday Inn Priority Club points at the domain names. Complainant seeks to rule out any argument that Respondent has rights or legitimate interests in the domain names because it offers services, albeit against the terms of the program, related to Complainant’s marks.

The Panel

finds that

even if

Respondent

were a licensee,

dealer,

agent or

reseller

of Holiday

Inn Priority

Club Points,

it would

not have

a right

to use the

marks "Holiday

Inn"

or "Priority

Club"

in its domain

names. See

Nokia Corporation

v Nokia

Ringtones

& Logos

Hotline

WIPO

Case No.

D2001-1101,

(October

18, 2001)

in which

the administrative

panel stated:

"The domain

name <worldnokia.com>

has been

used by

Respondent

to offer

logos, ringtones,

software

and other

products

and services

to owners

of mobile

phones.

Respondent

has stated

that the

products

offered

by Respondent

are only

compatible

with the

Nokia mobile

phone and

that it

was for

this reason

that the

name "worldnokia"

was used.

As was held

by the Panel

in, inter

alia, (Motorola

Inc. v

NewGate

Internet

Inc,

WIPO

Case No.

D2000-0079;

Stanley

Works and

Stanley

Logistics

Inc. v Camp

Creek Co,

WIPO

Case No.

D2000-0113;

Mikimoto

(America)

Co. v Asanti

Jewellers

Ltd,

Case No.

AF-0126;

R.T.

Quaife Engineering,

Ltd. and

Autotech

Sport Tuning

Corporation

d/b/a Quaife

America

v. Bill

Luton,

WIPO

Case No.

D2000-1201)

a licensee

or a dealer,

agent or

distributor

of products

of the trademark

owner or

of compatible

products

does not

per se have

a right

to a domain

name which

includes

that trademark.

It follows

that Respondent

in this

case would

only have

a right

to the domain

name <worldnokia.com>

if Complainant

had specifically

granted

that right.

Respondent

has not

contested

that Complainant

has not

licensed

or otherwise

permitted

Respondent

to use the

trademark

NOKIA. The

mere fact

that Respondent

sells logos

and ringtones

compatible

with NOKIA

mobile phones

is not sufficient

for Respondent

to claim

a legitimate

interest.

There are

circumstances

under which

this general

proposition

is not true.

For example,

a proceeding

under the

UDRP is

not the

proper forum

to decide

complicated

contested

factual

issues such

as whether

Complainant

provided

Respondent

with permission

or consent

to use its

marks. Respondent

might meet

all of the

elements

set forth

in Oki

Data Americas,

Inc. v.

ASD, Inc.,

WIPO

Case No.

D2001-0903,

to establish

that it

has made

a bona fide

prior use

of the mark

as a reseller

or distributor

pursuant

to Paragraph

4(c)(i)

of the Policy.

Such issues

are not

before this

Panel because

Respondent

failed to

present

a Reply.

The Panel finds that Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent have registered or have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent have 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 you have engaged in a pattern of such conduct; or

(iii) the Respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent have intentionally attempted to attract, for commercial gain, Internet users to his/her/its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on your website or location.

The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its domain names by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its domain names and its brokerage service.

The Panel

looks to

The Sportsman’s

Guide, Inc.

v. Modern

Limited,

Cayman Islands,

WIPO

Case No.

D2003-0305,

for guidance

on evidence

of bad faith

in such

circumstances.

The Panel

finds that

Respondent:

1) had constructive knowledge of Complainant’s long standing marks at the moment of registration of the disputed domain names; and

2) used the disputed domain names for commercial gain.

The Panel has no doubt that Respondent knew of Complainant’s "HOLIDAY INN" and "PRIORITY CLUB" when it registered the disputed domain names. Respondent holds itself out as a broker for points earned in the Holiday Inn Priority Club program.

Respondent’s website indicates that it charges significant "brokerage" fees for the transfer of miles and points between users of services. It also sells advertising on its website. Respondent used the disputed domain names for commercial gain.

The Panel finds that the Respondent registered and used the domain names 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 names be transferred to the Complainant.

Andrew Mansfield

Sole Panelist

Dated: September 2, 2003