юридическая фирма 'Интернет и Право'
Основные ссылки











Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'







Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Alexander Morozov

Case No. D2007-0069

 

1. The Parties

The Complainant is Six Continents Hotels, Inc., United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Alexander Morozov, of United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <holidayinnbeachside.com> (hereinafter the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2007. On January 19, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 22, 2007, Network Solutions, LLC 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, 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 January 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2007.

The Center appointed Andrew S. Mansfield as the sole panelist in this matter on March 23, 2007. 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 (or its affiliates) owns at least 1,215 registrations in at least 125 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOLIDAY INN. Complainant presented the Panel with printed copies from the United States Patent and Trademark Office evidencing the following United States trademark registrations:

Mark

Reg. No.

Date of First Use

Date of Registration

HOLIDAY INN

592,541

July 1, 1952

July 13, 1954

HOLIDAY INN

592,539

March 1, 1952

July 13, 1954

HOLIDAY INN

864,359

1957

January 28, 1969

HOLIDAY INN

1,061,893

1949

March 22, 1977

HOLIDAY INN

1,243,330

May 19, 1982

June 21, 1983

HOLIDAY INN

1,275,560

December 1, 1982

April 24, 1984

HOLIDAY INN

1,281,008

July 13, 1982

June 5, 1984

HOLIDAY INN

1,330,101

October 31, 1983

April 9, 1985

5. Parties’ Contentions

A. Complainant

Complainant is one of a number of companies collectively known as the InterContinental Hotels Group (“IHG”). Complainant alleges that it is the world’s largest hotel group by number of rooms and that companies within IHG own, manage, lease or franchise, through various subsidiaries, more than 3,600 hotels and 537,500 guest rooms in nearly 100 countries and territories around the world. Complainant alleges that IHG owns a portfolio of well-recognized and respected hotel brands including Holiday Inn Hotels and Resorts, Holiday Inn Express, InterContinental Hotels & Resorts, Crowne Plaza Hotels & Resorts, Hotel Indigo, Staybridge Suites and Candlewood Suites, and also manages the world’s largest hotel loyalty program, Priority Club Rewards.

Complainant alleges and presents evidence that the Holiday Inn brand was founded in 1952 and today is used in connection with 1,393 hotels worldwide, which collectively offer 260,308 hotel rooms.

In addition to possessing over 1,215 trademark registrations in over 125 nations that consist in whole or in part of the phrase HOLIDAY INN, as discussed above, Complainant (or affiliates) alleges that it owns approximately 990 domain names that contain the trademark HOLIDAY INN.

Complainant alleges that Respondent has registered the domain name <holidayinnbeachside.com>, which contains Complainant’s HOLIDAY INN trademark in its entirety plus a geographic term. Further, Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant’s HOLIDAY INN trademarks.

Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the HOLIDAY INN trademarks in any manner.

Upon information and belief, Complainant alleges that Respondent has never used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Respondent is alleged to be using the Domain Name in connection with a hard-core pornographic website. Because Complainant has a long history of established use of the HOLIDAY INN trademarks, Complainant alleges that it is unlikely that the Respondent is commonly known by this trademark.

Complainant alleges that Respondent is not making a legitimate or non-commercial fair use of the Domain Name.

Complainant also alleges that the Domain Name should be considered as having been registered and used in bad faith by the Respondent. Complainant alleges and introduces evidence that Respondent has engaged in a pattern of registering domain names that contain third parties’ trademarks to prevent the owners of the trademarks or service marks from reflecting the marks in a corresponding domain name. Using another’s well-known trademark to attract Internet users to a pornographic website, according to the allegations of Complainant, constitutes bad-faith use of a domain name. Finally, Complainant states that Respondent’s failure to reply to correspondence from counsel for Complainant is evidence of bad faith. Complainant brings to the attention of the Panel the fact that Complainant’s HOLIDAY INN trademark is exceptionally well known around the world and that the date of the registration of the Domain Name is well after the date of the registration in the United States of Complainant’s HOLIDAY INN trademark. These facts further support a finding of bad faith, according to Complainant.

For the foregoing reasons, Complainant has requested that the Domain Name be transferred to it.

B. Respondent

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

 

6. Discussion and Findings

In order to succeed in its complaint, Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used by Respondent in bad faith.

Even when a respondent defaults, as is the case here, Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The possession of U.S. Federally registered trademark rights by Complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661. Of course, Complainant’s various other national registrations could also serve to fulfill this threshold right but the Panel need not review those registrations to reach its decision in this matter. The Panel finds that Complainant has presented substantial evidence that it has rights to the HOLIDAY INN trademark.

This Panel also notes that previous panels under the Policy have found that Complainant has strong rights in and to the HOLIDAY INN trademarks. See, e.g., Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (“the [HOLIDAY INN] mark, more than famous, has become iconic”); Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659 (the HOLIDAY INN trademarks “are inherently distinctive, have been used extensively for many years throughout the world in connection with its hotels and services, and are some of the most widely recognized lodging brands in the world”); and Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (“the HOLIDAY INN name and trademark are famous, are identifiable with Complainant, and have considerable good will”).

In reviewing whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the relevant comparison to be made is with the second-level portion of the Domain Name only, as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Panel finds that the term “beachside” is a general geographic identifier indicating a location near or on a beach. Previous Panels under the Policy have found that use of one of Complainant’s HOLIDAY INN trademarks in its entirety plus a geographic term in a domain name creates a domain name that is confusingly similar to the HOLIDAY INN trademark. See, e.g., Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (in ordering transfer of domain name <holidayinnmanassas.com>, Panel said: “Respondent has simply appended the geographic term ‘Manassas’ to Complainant’s HOLIDAY INN mark. This increases the likelihood of consumer confusion.”); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987 (in ordering transfer of domain name <holidayinnexpressnewnan.com>, Panel said: “there is sufficient precedent for finding that the addition of a geographic term or name to a distinctive mark suggests that the domain name is the domain name of Complainant in that particular location”); Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986 (in ordering transfer of domain name <watsonvilleholidayinn.com>, Panel said: “Several Panels have underlined that the use of a Complainant’s trademark in connection with a geographic term does not prevent confusing similarities.”); Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388 (in ordering transfer of domain name <dubaiholidayinn.com>, Panel said: “The addition of ‘dubai’ does not serve to distinguish these domain names from the Complainants’ well known marks, but indeed compounds the likelihood of confusion between these domain names and the Complainants’ trademarks given that the Complainants’ have CROWNE PLAZA and HOLIDAY INN hotels in Dubai.”); and Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384 (in ordering transfer of domain name <holidayinnexpressburl.com>, Panel said: “The use of the suffix ‘burl’ in the disputed Domain Name, rather than differentiate Respondent’s business, actually affirms the extent to which that domain name is confusingly similar to the Complainant’s Mark.”).

In this case, applying these principles, and mindful of prior Panel decisions, the Panel finds the disputed domain name is confusingly similar to Complainant’s trademark HOLIDAY INN.

B. Rights or Legitimate Interests

Based on the case file and noting the use of the domain name described below, the Panel is satisfied that Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“For the purposes of Paragraph 4(a)(iii), 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 you have registered or you 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) you 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

The Panel finds that Respondent has engaged in a pattern of registering domain names that contain third parties’ trademarks to prevent the owners of the trademarks or service marks from reflecting the marks in a corresponding domain name. Prior decisions appear to demonstrate a similar pattern of conduct by Respondent. See, e.g., Alpha One Foundation, Inc. v. Alexander Morozov, NAF Case No. 766380 (transfer of <shortofbreathgettested.org>); Window and Door Manufacturers Association v Alexander Morozov, NAF Case No. 809777 (transfer of <nwwda.org>). Combined with the Respondent’s registration of the Domain Name to prevent the Complainant in this case from reflecting the HOLIDAY INN trademark in a corresponding domain name, this activity by Respondent constitutes bad faith as defined by paragraph 4(b)(ii) of the Policy.

This Panel adopts the conclusion of other Panels under the Policy that using another party’s widely-known trademark to attract Internet users to a pornographic website constitutes bad faith use of a domain name. See Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (“[i]t is well established that using another’s well-known mark to attract Internet users to a pornographic website constitutes bad faith use of the domain name.”); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987 (“using the disputed domain names to direct traffic to pornographic websites constitutes bad faith in and of itself in that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, or endorsement of the website”); Bass Hotels and Resorts v. Mike Rodgerall, WIPO Case No. D2000-0568 (filed by Complainant’s predecessor-in-interest) (“while a user who arrives at the pornographic site may promptly conclude that it is not what he or she was originally looking for, the registrant has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain”); Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (transfer of domain name <hoildayinn.com>) (“Respondent’s acts of typo-squatting and redirecting the Domain Name to pornographic websites do not qualify as a bona fide offering of goods or services”); and Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384 (transfer of domain name <holidayinnexpressburl.com>, which was used in connection with a pornographic website).

Because Respondent is simply redirecting Internet users that type in or search for Complainant’s HOLIDAY INN trademark plus a simple geographic term to pornographic websites, the Panel further finds that Respondent has registered and is using the Domain Name in bad faith.

The Panel further finds that there is no possibility that Respondent accidentally chose the Domain Name and that the Domain Name happens to be identical to or confusingly similar to Complainant’s HOLIDAY INN trademark. The mark HOLIDAY INN is so widely-known that the Panel concludes that its selection is further evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; and Marriott International, Inc. v. Momm Amed Ia, NAF Case No. FA95573.

Complainant has satisfied paragraph 4(a) (iii) of the Policy.

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 name, <holidayinnbeachside.com>, be transferred to the Complainant.


Andrew S. Mansfield
Sole Panelist

Dated: April 6, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0069.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.