Six Continents Hotels, Inc. v. Albert Jackson

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Six Continents Hotels, Inc. v. Albert Jackson

Case No. D2003-0922

1. The Parties

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

The Respondent is Albert Jackson, of Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <wwwholidayinnexpress.com>, <wwwstaybridge.com>, <wwwstaybridgesuites.com> and <holidayinncocoabeach.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2003. On November 20, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On November 25, 2003, iHoldings.com Inc. d/b/a DotRegistrar.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. On December 12, 2003, the Complainant filed an amendment to the Complaint, adding the domain name <holidayinncocoabeach.com> to the three domain names against which the Complaint was originally directed. On January 8, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with that domain name. On the same day iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is also listed as the registrant of the domain name <holidayinncocoabeach.com> and providing the contact details for the administrative, billing, and technical contact. 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 November 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2003.

The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on January 5, 2004. 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.

Having noted that the Complainant had amended the Complaint by adding a fourth domain name of the Respondent to the Complaint, the panelist issued on January 13, 2004, a procedural order giving the Respondent an additional time limit for responding to the amendment of the Complaint until January 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2004.

4. Factual Background

The Complainant is the owner of registrations for the mark (trademark and service mark) HOLIDAY INN in many countries all over the world and operates several thousand hotels under this mark all over the world.

It is also the owner of the following marks in the United States:

Registration no. 2,257,830 STAYBRIDGE SUITES for hotel services in class 42

Registration no. 1,651,851 HOLIDAY INN EXPRESS for hotel and restaurant services in class 42

Furthermore the Complainant owns in the United States other marks, combining the term HOLIDAY INN with additional terms, such as CROWNE PLAZA, SUNSPREE, and FAMILY SUITES RESORT.

The Complainant is also the owner of several hundred domain names and operates as its main portal a website at "www.holiday-inn.com," where it provides online reservation services for all HOLIDAY INN hotels worldwide. Amongst the domain names of the Complainant the following are relevant for these proceedings: <holidayinn.com>, <staybridge.com>, <staybridgesuites.com> and <holidayinnexpress.com>, all leading to websites operated by affiliates of the Complainant.

The submissions of the Complainant have been documented and have not been contested

by the Respondent.

The Respondent has registered the following domain names:

<wwwstaybridgesuites.com>

<wwwstaybridge.com>

<wwwholidayinnexpress.com>

<holidayinncocoabeach.com>

These domain names resolve to generic portal pages that feature links to hotel

reservation services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that either directly or through affiliates, it operates,

manages or franchises about 3000 HOLIDAY INN hotels worldwide in nearly 100 countries,

making it the world’s leading global hotel company and serving more than 150 million

guests per year globally. Therefore, the mark HOLIDAY INN, through its

intensive and worldwide use since over 50 years, has become internationally

well-known.

The Complainant submits that (A) the domain names <wwwstaybridgesuites.com>,

<wwwstaybridge.com>, <wwwholidayinnexpress.com> and <holidayinncocoabeach.com>

are confusingly similar to marks in which it has rights; (B) the Respondent

has no rights or legitimate interests in respect of the domain names; (C) the

domain names have been registered and are being used in bad faith.

B. Respondent

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

not contested the allegations of the Complaint and the Panel shall decide on

the basis of Complainant’s submissions, and all inferences that can reasonably

be drawn therefrom (Rules, paragraph 14(b)).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must

prove to merit a finding that the domain names of the Respondent be transferred

to the Complainant:

(a) The domain names are identical or confusingly similar to a trademark or

service mark ("mark") in which the Complainant has rights; and

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

domain names; and

(c) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The domain names <wwwstaybridgesuites.com> and <wwwholidayinnexpress.com>

consist both of a mark in which the Complainant has rights, to which the prefix

"www" is added (The gTLD ".com" cannot be taken into consideration

when judging identity or confusing similarity). The prefix "www" has

no distinguishing character. The two domain names are therefore, if not identical,

at least confusingly similar to marks in which the Complainant has rights. Actually,

it makes no difference for an Internet user, whether he types the Respondent’s

domain name correctly as <www.wwwholidayinnexpress.com> or simply <wwwholidayinnexpress.com>;

in both cases he arrives at websites offering third party hotel reservation

services and not at a website of the Complainant. Consequently, an Internet

user who intends to type "www.holidayinnexpress" (that would lead

him to an official site of the Complainant) and inadvertently omits the dot

after "www" will be diverted to a website to which the Respondents

domain name is linked. The same is true for the domain name <wwwstaybridgesuites.com>.

With these two domain names the Respondent is therefore typo-squatting on Complainants

marks and domain names in order to deviate Internet users to websites offering

hotel reservation services for competitors of the Complainant.

The same considerations apply to the domain name <wwwstaybridge.com>,

even if this domain name is clearly not identical to a mark of the Complainant.

An Internet user who intends to access information on the Staybridge Suites

Hotels of the Complainant may do so by simply typing "www.staybridge.com"

and he will indeed be linked to the official "Staybridge Suites" website

of the Complainant, because the Complainant uses the domain name <staybridge.com>

for that purpose. Again, if such user inadvertently omits the dot after "www,"

he will instead be diverted to the same website, offering reservation services

of competitors of the Complainant as in the case of the domain name <wwwstaybridgesuits.com>.

This shows that the omission of the descriptive part "suites" of the

Complainant’s mark STAYBRIDGE SUITES in the domain name <wwwstayridge.com>

does not exclude confusing similarity.

Therefore the Respondent, in these three cases, not only played with marks

of the Complainant but also and particularly chose domain names of the Complainant

that are incorporating its marks wholly or partially, and added to these domain

names the prefix "www."

The situation is different with the domain name <holidayinncocoabeach.com>,

where the Respondent did not add a prefix to a mark of the Complainant, rather

the suffix "cocoabeach" to its well-known mark HOLIDAY INN."

It is established practice that the addition of a geographically descriptive

term to a mark does not exclude confusing similarity with the mark. In the present

case users will understand the domain name as the name of a HOLIDAY INN hotel

at the "Cocoabeach" in Florida. Actually, an Internet user typing

"www.holidayinncocoabeach.com" arrives at a website that not only

provides for addresses of hotel reservation services that are competitors of

the Complainant, but also provides links to hotels at "Cocoabeach, Florida."

Users who are expecting that the hotel operating with the domain name <holidayinncocoabeach.com>

is a hotel of the Complainant at Cocoabeach will be confused to arrive at websites

offering competing hotels.

In conclusion, the Panel is satisfied that all four domain names of the Respondent

are confusingly similar to marks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has not consented to the Respondent's use of the domain names.

Furthermore, none of the circumstances listed under paragraph 4(c) of the

Policy, possibly demonstrating rights or legitimate interests, are given. According

to the Complainant's submissions, the Respondent does not use (commercially

or non-commercially) the domain names and has not demonstrated any preparations

for such use. The Respondent has not challenged these submissions. As evidenced

by the Complainant, the Respondent uses the domain names to divert traffic to

websites that offer hotel reservation services in competition with the Complainant.

The Complainant rightly points out that this is not a bona fide offering

of goods or services. Even if the Respondent does not use its domain names to

promote commercial activities of its own, the Panelist is satisfied that such

use cannot be considered to be non-commercial. It would make no sense for the

Respondent to provide links to websites offering services of competitors of

the Complainant, if it where not to attract a fee, the more as such arrangements

are common. Finally, for the same reason that the Respondent does not promote

its own commercial activities, the Respondent has not been able to become known

under any of his domain names.

The Panel concludes in application of Rule 14(b) that the Respondent has

failed to submit any circumstances to demonstrate rights to or a legitimate

interest in the domain names <wwwstaybridgesuites.com>, <wwwstaybridge.com>,

<wwwholidayinnexpress.com> and <holidayinncocoabeach.com> as requested

under 4(c) of the Policy. The Panelist is therefore satisfied that the

Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

For a For a Complainant to succeed, the Panel must be satisfied that a domain

name has been registered and is being used in bad faith.

There can be no doubt that the Respondent knew the marks of the Complainant

when he registered the domain names. The mark HOLIDAY INN is internationally

well known. Three of the four domain names that are object of the proceedings

consist of domain names of the Complainant that are incorporating marks of the

Complainant to which the Respondent simply added the prefix "www."

As said before, this is a typical case of typo squatting. This proves that the

Complainant not only was aware of the marks of the Complainant but even knew

these domain names of the Complainant. It is at the same time a strong indication

of registration in bad faith. The fourth domain Name is a combination of the

well-known mark HOLIDAYINN of the Complainant and the geographically descriptive

suffix "cocoabeach." Considering the use that the Respondent makes

of this domain name as well as of the other three domain names, the Panelist

is satisfied that all four domain names have been registered in bad faith:

The Respondent is using all these domain names in order to divert users to

generic portal pages that feature links to third-party hotel reservation services.

These third party websites offer hotel reservation services for many of the

Complainant’s competitors. As said before the Panel is satisfied that the Respondent

provides these links for his own commercial benefit. By providing these links,

the Respondent diverts Internet users, who may be wishing to reserve HOLIDAY

INN hotel rooms, to websites where reservation services for competitors of the

Complainant are offered. Therefore the Panel concludes that the Respondent intentionally

attracts for commercial gain Internet users to an online location, by creating

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

affiliation, or endorsement of that location or a service on that location.

Taking into account the use which the Registrant is making of his domain names,

as described before, and in the absence of any submission of the Respondent

to the contrary, the Panelist is satisfied 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 names, <wwwstaybridgesuites.com>,

<wwwstaybridge.com>, <wwwholidayinnexpress.com> and <holidayinncocoabeach.com>

be transferred to the Complainant.

Gerd F. Kunze

Sole Panelist

Dated: February 2, 2004

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