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WIPO Arbitration and
Six Continents Hotels, Inc. v. IQ Management Corporation
Case No. D2004-0272
1. The Parties
The Complainant is Six Continents Hotels, Inc., Atlanta, Georgia, United States of America, it is represented by Needle & Rosenberg, PC, Atlanta, Georgia, United States of America.
The Respondent is IQ Management Corporation, Belize
City, Belize. The Respondent is not represented.
2. The Domain Name and Registrar
The disputed domain name, <holidayin.com> is
registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2004. On April 14, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 14, 2004, Tucows 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 April 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2004.
The Center appointed the Honourable Sir Ian Barker QC of Auckland,
New Zealand as the sole panelist in this matter on May 14, 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.
4. Factual Background
Complainant owns 1,237 registrations for the mark HOLIDAY INN, either for those 2 words alone or with additional words, in some 182 countries. Registrations in the United States go back to trademarks granted to the Complainant's predecessors-in-interest in the 1950's.
The Complainant, directly or through its predecessors in interest, has used the mark HOLIDAY INN in connection with lodging and restaurant services in hotels and motels since at least 1952. The Complainant itself, or through affiliates, owns, manages and/or franchises the HOLIDAY INN, HOLIDAY INN EXPRESS, HOLIDAY INN SELECT, and HOLIDAY INN SUNSPREE brand of hotels and resorts (collectively "HOLIDAY INN hotels") and the CROWNE PLAZA, STAYBRIDGE SUITES, INTERCONTINENTAL and CANDLEWOOD SUITES brand hotels worldwide (collectively, "SCH Brand Hotels"). There are some 2,900 HOLIDAY INN Hotels in some 70 countries throughout the world.
Over the last 50 years and currently, the Complainant (or its predecessors in interest) has spent and does spend large sums in advertising and promoting the HOLIDAY INN Marks and HOLIDAY INN Hotels worldwide. Its franchisees spend additional sums of money advertising their individual hotels.
The Complainant operates websites under the domain names <holiday-inn.com> and <holiday-in.com>, plus numerous other domains ("SCH Brand Websites"). SCH Brand Websites provide online reservation services worldwide for HOLIDAY INN Hotels, and for the Complainant's other hotel brands.
Consumers have been able to reserve hotel rooms through an SCH Website since July 1995. Collectively, SCH Brand Websites received 7 million visits in January 2004, alone and average more than 225,000 visits every day. The "www.holiday-inn.com" website received more than 40% of these visits.
The Complainant's factual information was supported by a statutory declaration from its Senior Vice-President, E-Commerce, Mr. Eric Pearson.
Accordingly to its website, the Respondent holds itself out as a company that "assists clients to locate brandable and generic domain names, and helps them launch viable e-commerce businesses." It also claims to partner with many existing e-commerce sites. The Respondent has registered third-party owned trademarks as domain names (in addition to the disputed domain name).
The Respondent's website, inter alia, allows consumers to place online hotel reservations for the Complainant's HOLIDAY INN hotels. The web page associated with the disputed domain name is nearly an exact copy of the website using the domain name <discountbusinesstravel.com>, albeit with differences in the featured hotels and destinations.
In June 2001, attorneys for the predecessor-in-title of the Complainant
sent a `cease and desist' letter to the Respondent. The Respondent, through
its representative Paul Gordon, replied to this letter on July 10, 2001.
The Respondent indicated that it was not attempting to pass itself off as the
trademark owner and that the HOLIDAY INN logos and marks did not appear
on its travel reservation site. Mr. Gordon disagreed that the disputed
domain name was confusingly similar to the trademark because `in' and 'inn'
are different words with different meanings. He denied that the mark was distinctive
and that there was any deception or bad faith. The Respondent refused to comply
with the demands in the letter.
5. Parties' Contentions
The disputed domain name is confusingly similar to Complainant's famous HOLIDAY INN trademark in that the domain name is identical to the trademark, except that the last letter of HOLIDAY INN has been deleted from the domain name.
In Microsoft Corporation v. Microsof.com aka Tarek
Ahmed, WIPO Case No. D2000-0548, the
Panel stated: "The term `mircrosof' is very similar to `microsoft' in its
visual impression. Pronunciation of the two terms is very similar. An Internet
user or consumer viewing the term `microsof' (or <microsof.com>) is likely
to confuse it with the term `microsoft' (or <microsoft.com>). Complainant's
mark "Microsoft" is undoubtedly strong - it is immediately recognizable
by the public - and this factor contributes to the likelihood of confusion.
The Panel determines that the disputed domain name `microsof.com' is confusingly
similar to `Microsoft' in the sense of paragraph 4(a)(i) of the Policy."
Likewise, the term "HOLIDAY IN" is very similar to "HOLIDAY INN" in its visual impression and pronunciation. The HOLIDAY INN mark is immediately recognizable to the public. An Internet user or consumer viewing the term "HOLIDAY IN" is likely to confuse it with the term "HOLIDAY INN."
UDRP panels have consistently held that domain names
that are misspellings of a trademark or service mark may qualify as being confusingly
similar. See Geobra Brandstatter GmbH & Co KG v. Only Kids Inc.,
WIPO Case No. D2001-0841; Playboy Enterprises
v. Movie Name Company, WIPO Case No. D2001-1201;
AT&T Corp. v. John Zuccarini, WIPO
Case No. D2002-0440; and United Feature Syndicate, Inc. v. Mr. John Zuccarini,
WIPO Case No. D2000-1449.
No Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the domain name because (a) the Complainant has never authorized the Respondent to use its mark HOLIDAY INN as a domain name or otherwise; (b) the Respondent is not, nor has it ever been commonly known by the domain name; (c) the Respondent uses an intentionally subtle variation of the HOLIDAY INN mark as its domain name to attract the Complainant's potential customers; and (d) the Respondent uses the domain Name commercially to trade on the fame of the HOLIDAY INN mark.
The exclusive and continuous use of the mark HOLIDAY INN by Complainant or its predecessors since 1952 and its numerous trademark registrations for the mark constitute prima facie evidence of its exclusive right to use the mark HOLIDAY INN in connection with the goods and services covered by its registrations. The Respondent is not affiliated with the Complainant, is not a licensee of the Complainant and is not authorized by the Complainant to use any of the Complainant's trademarks as a domain name or otherwise.
It is highly unlikely that the Respondent is, or has ever been, commonly known by the disputed domain name, given the Complainant's established use of its famous HOLIDAY INN mark.
The Respondent is not making a legitimate, non-commercial or fair use of the domain name and is not using it in connection with a bona fide offering of goods or services. To the contrary, the Respondent is making an illegitimate commercial use of the disputed domain name with intent for commercial gain by misleading consumers looking for the Complainant's own website. Because "holiday in" is a typographical misspelling of "HOLIDAY INN," the Respondent's registration and use of this typographical misspelling can divert Internet users seeking the Complainant's official HOLIDAY INN website to a website where users can book HOLIDAY INN hotel rooms as well as other hotel rooms. Presumably, the Respondent receives a commission from these bookings that it would not receive if the Internet user booked directly from an official SCH Brand Website.
By prominently displaying hotel reservation services
on the first page of the "www.holidayin.com" website, without any
notice disclaiming an association with the Complainant and HOLIDAY INN,
the Respondent is further confusing Internet users into believing that they
have reached an official HOLIDAY INN website. Such intentional trading
on the fame of a mark cannot constitute a bona fide offering of goods
or services. Six Continents Hotels, Incl. v. Patrick Roy, WIPO
Case No. D2003-0098.
The fact that consumers can reserve rooms for the
Complainant's HOLIDAY INN hotel rooms via the disputed domain name does
not establish that the Respondent is making a bona fide and good faith
use of the domain name. UDRP panelists have consistently concluded that, even
if a respondent is an authorized retailer of a complainant's products (and,
in this case, Respondent is not), this in itself is not sufficient to
give a respondent a right to use these trademarks as domain names. See, e.g.,
Morotola Inc. v. Newgate Internet Inc., WIPO
Case No. D2000-0079; Ferrero SpA v Fistagi SrL WIPO
Case No. D2001-0262; and Nokia Corporation v. Nokia Ringtones & Logos
Hotline, WIPO Case No. D2001-1101.
Finally, the Respondent is not making a fair use of "holiday in". On the contrary, the Respondent's use of the disputed domain name leads to initial interest confusion. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 U.S.P.Q.2d 1545 (9th Cir. 1999); Fatbrain.com, Inc. v IQ Management Corporation, NAF Claim No. FA0101000096374 (involving same the respondent as in this Complaint). If Respondent was using the term "In" in the disputed domain name, as a preposition, rather than as a misspelling of the noun "Inn," it would include an object of the preposition such as "In the Park" in the domain name (e.g., <holidayinthepark.com>).
The Respondent is undoubtedly aware of the reputation of the Complainant and its HOLIDAY INN mark, as discussed below but, nonetheless, uses the disputed domain name <holidayin.com> in connection with the sale of hotel rooms.
The Respondent has registered and is using the disputed domain name in bad faith by (a) knowingly registering and using a variation of the Complainant's famous HOLIDAY INN mark as a domain name; (b) using the HOLIDAY INN mark intentionally to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website; and (c) engaging in a pattern of registering variations of well-known marks.
Given the fame and worldwide reputation of the HOLIDAY INN
mark, as well as the fact that Respondent ran a travel-related website, "www.discountbusinesstravel.com,"
as discussed previously, prior to registering the disputed domain name, Respondent
is undoubtedly aware of the fame and worldwide reputation of the Complainant's
mark. Such knowledge leads to a finding of bad faith. See, e.g., Six Continents
Hotels, Inc. v. Albert Jackson, WIPO Case
No. D2003-0922 (finding evidence of bad faith where the respondent typo-squatted
on the internationally, well-known HOLIDAY INN mark).
Even if the Respondent were to claim innocence of knowledge of the Complainant's HOLIDAY INN mark, the Complainant's numerous trademark and service mark registrations in the United States and worldwide constitute constructive notice to the world of the existence and validity of its trademark rights. 15 U.S.C. § 1072. See, e.g., Mariott International, Inc. v. Momm Amed Ia, NAF Claim No. FA95573.
There is no doubt that Respondent was aware of the HOLIDAY INN mark when it registered the disputed Domain Name. The Respondent is using this fame to route traffic to a commercial website promoting services that are identical to services offered by Complainant, i.e., travel and lodging, which constitutes use in bad faith. Marriott International Inc. v Momm Amed Ia, NAF Claim No. FA95573.
In ordering the transfer of <holiday-inn-hotels.net>
to the Complainant, one panelist held: "The Respondent's website is clearly
intended to attract members of the public who may be wishing to reserve HOLIDAY INN
hotel rooms, and then to offer them other hotels and services.... This conduct
falls squarely within paragraph 4(b)(vi) of the Policy and accordingly
the Panelist concludes that the Respondent registered and has been using the
Domain Name in bad faith." Six Continents Hotels, Inc. v. Ameriasa,
WIPO Case No. D2002-1132.
The fact that the Respondent has shown a pattern of registering marks confusingly similar or identical to other well-known brand names further supports a finding of bad faith. Fatbrain.com, Inc. v. IQ Management Corporation, NAF Claim No. FA0101000096374 involving same respondent as in this Complaint) ("Respondent [IQ Management Corporation] has demonstrated a pattern of conduct, by registering domain names comprised of infringing marks, which prevent trademark owners from reflecting their marks in corresponding domain names.")
The Respondent's home page at <www.iqmc.com> provides a list of sample sites that the Respondent operates. The Respondent has registered variations of well-known trademarks in an effort to divert Internet users searing for the brand name, e.g., Respondent had added the number "2" to create <ebay2.com>. The Respondent is not the owner of the well-known KATE SPADE, COACH, EBAY, KENNETH COLE, GUCCI or TOMMY BAHAMA trademarks, yet it has registered variations of them to divert Internet users looking for on official website.
The Respondent has been involved in several UDRP proceedings where panelists have required the Respondent to transfer disputed domain names to the rightful trademark owners. V&S Vin & Sprit Aktiebolag v. IQ Management Corporation, (supra) (finding it "inconceivable" that Respondent was not aware of the complainant's trademark ABSOLUT when the respondent registered the domain name <absolutbeach.com>); Fatbrain.com, Inc. v. IQ Management Corporation, NAF Claim No. FA0101000096374 (finding, inter alia, that the Respondent registered the domain name <clbooks.com> to deprive the complainant of the Internet traffic rightly intended for complainant, thereby disrupting complainant's business sand causing complainant to lose revenue); and DJR Holdings, LLC v. Paul Gordon a/k/a IQ Management Corporation, NAF Claim No. FA0301000141813 (finding, inter alia, that an inference can be made that by engaging in a pattern of registering the marks of trademark owners as domain names, "the Panel finds it difficult to accept that Respondent could register and make any use of the disputed domain name in the manner in which he is using the name without creating a false impression of some association with Complainant").
The Respondent has filed no submissions.
6. Discussions 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 Policy, is to show:
- that 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
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The disputed domain name is clearly confusingly similar to the Complainant's
registered trademarks. This is a blatant case of typo-squatting whereby the
domain name registrant has registered a name which has just one letter fewer
or, otherwise, is slightly different from a well-known mark. The typo-squatting
cases referred to in the Complainant's submissions above such as the Microsoft
case are applicable. See too Telstra Corporation Ltd v. Warren Bolton Consulting
Ltd WIPO D2000-1293 (Trademark, BIG
POND; Disputed Domain Name <bigpons.com>.)
Legitimate Rights or Interest
The Complainant gave the Respondent no legitimate rights or interest in respect of the disputed domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved after an evaluation of all evidence presented, could demonstrate a Respondent's rights or legitimate interests to a domain name. None of these has been demonstrated, let alone raised. The second criterion is therefore proved. The numerous precedent decisions cited by the Complainant in its submissions are applicable to this case.
Likewise, bad faith has been patently demonstrated for the reasons outlined
in the Complainant's submissions. The Respondent must have known about the world-wide
reputation of the Complainant's mark. It uses this fame to attract Internet
users to its site for commercial gain. It has engaged in a pattern of cyber-squatting.
The cases cited by the Complainant are manifestly appropriate. The Respondent's
track record shows that it is a sophisticated Internet user. It is no stranger
to the UDRP as can be seen from the cases where it has been required to surrender
domain name registration.
For the foregoing reasons, the Panel decides:
(a) That the domain name <holidayin.com> is confusingly similar to the trademark to which the Complainant has rights.
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraphs 4(i) of the
Policy and 15 of the Rules, the Panel requires that the registration of the
domain name <holidayin.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: May 24, 2004