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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Six Continents Hotels, Inc. v. Seweryn Nowak

Case No. D2003-0022

 

1. The Parties

Complainant is Six Continents Hotels, Inc., a company based in Atlanta, Georgia, United States of America ("USA").

Respondent is Seweryn Nowak of Bielsko-Biala, Slaskie, Poland.

 

2. The Domain Name and Registrar

The domain name at issue is <holidayinnakron.com> (hereinafter "Domain Name").

The Domain Name is registered with eNom Inc., 16771 NE 80^th Street, Suite # 100, Redmond, WA 98052, USA.

 

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 9, 2003, and subsequently in hard copy on January 13, 2003. The Center sent an Acknowledgement of Receipt of Complaint to Complainant on January 10, 2003.

On January 10, 2003, a request for Registrar Verification in connection with this case was transmitted to Registrar. On January 14, 2003, Registrar replied by e-mail confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contacts.

On January 20, 2003, the Center completed the Formal Requirements Compliance Checklist and formally notified Respondent of the Complaint and the proceedings commenced on January 20, 2003. On the same day, the Center transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceeding (Commencement Notification) by the required means, setting a deadline at February 9, 2003, by which Respondent could file a Response to the Complaint.

The Response was filed with the Center on February 8, 2003, by e-mail only. The Center transmitted to Respondent an Acknowledgement of Receipt of Response on February 12, 2003.

On February 18, 2003, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding and the projected decision would be due on March 4, 2003, in the absence of any exceptional circumstances.

The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

Complainant submitted as Annex C to the Complaint a declaration by Eric Pearson, Vice President, E-Commerce for Six Continents Hotels, Inc. asserting the following.

Complainant is a worldwide franchisor of several hotel brands including HOLIDAY INN hotels and HOLIDAY INN EXPRESS brands. Together with its authorized affiliates, Complainant owns and/or operates HOLIDAY INN hotels worldwide. Complainant owns one thousand two hundred and thirty-seven (1,237) trademark registrations for its HOLIDAY INN hotels in over 182 countries throughout the world. In this connection Complainant has provided evidence of the eighteen (18) registrations of its marks incorporating the words "holiday inn" in the United States (see Annex D to the Complaint).

Complainant has been using the "holiday inn" mark since at least 1952. Currently, "holiday inn" is the most global hotel brand in the world; about two thousand nine hundred (2,900) hotels in over seventy (70) countries throughout the world are operated under the "holiday inn" brand.

In the last fifteen years Complainant has spent about one billion dollars on advertising and promoting the "holiday inn" marks worldwide and annually spends many millions of dollars on advertising, marketing and promoting its brands.

As regards Complainant’s presence on the Internet, it owns over one thousand one hundred (1,100) Internet domain names, including <holiday-inn.com>, which Complainant registered in 1995 and where Complainant provides both on-line reservation services for all HOLIDAY INN Hotels worldwide and information on all of his hotel brands. The website has received approximately one hundred and fifty-six (156) million visits since March 1999.

Complainant has also provided supporting evidence of the presence on the Internet of over three hundred (300) domain names (such as, for example, <holidayinnseattle.com>, <holidayinnsanfrancisco.com>, <holidayinnmontreal.com>, <holidayinnlosangeles.com>) including the "holiday inn" mark owned by Complainant (see Annex E to the Complaint).

Finally, Complainant has evidenced that the website addressed at the Domain Name shows explicit sexual and pornographic contents (see Annex F to the Complaint).

 

5. Parties’ Contentions

A. Complainant’s Summarised Contentions:

Complainant contends that:

- the Domain Name <holidayinnakron.com> is identical or confusingly similar to Complainant’s registered trademarks incorporating the words "holiday inn";

- the use of Complainant’s mark "holiday inn" with the addition of a geographical term, such as "Akron", which is a city in Ohio (USA), is apt to increase the likelihood of consumers’ confusion;

- Respondent has no rights or legitimate interests in the Domain Name;

- Respondent neither is a licensee of Complainant nor has been authorized by Complainant to use the "holiday inn" trademark;

- Respondent is not – and has never been – commonly known by the Domain Name;

- Respondent is not using the Domain Name for a fair and non commercial use; on the contrary, the website is being used for featuring pornographic and adult contents and this circumstance is likely to tarnish Complainant’s mark and reputation;

- Respondent has registered and is using the Domain Name in bad faith; these circumstances are evidenced by the following facts: - users entering the website are forwarded to a web page at the URL "www.ars2.dailyxxxstories.com", featuring also pornographic content (see Annex G); - users attempting to close their browser window after entering this site are "mousetrapped" by a number of additional pornographic pop-up windows, all of which show additional adult and pornographic contents; - full access to the website "www.ars2.dailyxxxstories.com" is available to subscribing members only and this likely means that Respondent is using the Domain Name to divert consumers to Respondent’s own page for commercial gain.

Based on the above, Complainant requests the transfer of the Domain Name.

B. Respondent

A Response was filed by electronic means only whereby Respondent "responds to the statements and allegations in the complaint and respectfully requests the administrative panel to deny the remedies requested by the Complainant". Theoretically Respondent might not be considered in default having submitted a Response. Such Response however is absolutely inconsistent with the Rules according to which, amongst others:

"The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form (see Rule 5(b)) and shall:

(i) respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder to retain registration and use of the disputed domain name ….(see Rule 5(b)(i)) …and;

(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.(see Rule 5(b) (ix)".

Apart from the fact that it has not been submitted in hard copy, the Response consists in a generic request for the "Administrative Panel to deny the remedies requested by Complainant" without offering any supporting ground or evidence. As a matter of fact Respondent has simply submitted the model response provided by the Center as a guideline, without inserting any information (except for its name and address).

Given this state of affairs, the Panelist has received no elements or indications from Respondent as if no response had been filed. Therefore although the Respondent technically is not in default, the effects of its conduct may be regarded as equivalent.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist to decide the Complaint on the ground of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that he deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".

In the light of the above , the Panelist may draw such inferences from Respondent’s failure to comply with the Rules as she considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000)).

Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to complainant’s trademark or service mark;

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

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

A. Identity or confusing similarity

The Domain Name is <holidayinnakron.com>. As mentioned above, Complainant owns several trademark registrations for the words "holiday inn" alone or in combination with different words.

The Domain Name is made up of a simple combination of Complainant’s trademark and the geographical location of Akron.

Therefore, the only difference between the domain name and Complainant’s "holiday inn" mark is the addition of the word "akron" and the generic top level domain name identifier <com>. The addition of the geographical term "akron" does not prevent a finding of confusing similarity. In fact, in the Panelist’s view, the addition of the suffix "akron" is apt to suggest that Complainant’s goods and services are provided in that particular location.

This reasoning is consistent with many previous WIPO decisions in which it has been ruled that the addition of a country or a city name does not distinguish the domain name from the trademark (see among others BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097 (November 14, 2001); Rolls-Royce PLC v. Hallofpain WIPO Case No. D2000-1709 (February 19, 2001); The Nasdaq Stock Market, Inc. v Vidudala Prasad, WIPO Case No. D2001-1493 (February 27, 2002)).

Therefore the Panelist finds that the Domain Name is confusingly similar to Complainant’s trademarks pursuant to the Policy Par. 4(a)(i).

Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001), page 8; see also International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683 (September 16, 2002)).

Complainant has asserted that Respondent has no relationship with or authorization from Complainant for using the "holiday inn" mark; that Respondent has not been commonly known by the Domain Name; that Respondent is not, and has never been, commonly known by the Domain Name. The Panelist’s view is that these facts must be taken as proven provided that they have not been denied by Respondent.

On the other hand, Respondent has not submitted a proper Response, therefore, has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Name under Par. 4(c) of the Policy.

Accordingly the Panelist holds that Respondent has no legitimate interests or rights in registering the Domain Name pursuant to Par. 4(b) of the Policy.

Bad Faith

Both under the WIPO case law (see for instance Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000); Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 (October 16, 2002)) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panelist reasonably finds that since Complainant’s trademarks are very well known worldwide, it is very unlikely that Respondent, at the time he registered the Domain Name, was not aware that he was infringing Complainant’s trademarks.

As regards Respondent’s use of the Domain Name to attract Internet users to an adult website, the Panelist’s view is the following. Preliminary, it is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith (Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 (August 29, 2001); Bass Hotels & Resorts, Inc. vs. Mike Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000)).

In addition, in the pending case, Complainant has provided evidence of the fact that Respondent is using the confusion in the consumers’ minds over the use of "holiday inn" to divert users for commercial gain. In particular, Complainant has proved (see Annexes F, G and H) that users entering the website addressed at "www.holidayinnakron.com" were automatically forwarded to another website (URL: "www.ars2.dailyxxxstories.com") containing adult content (galleries of pictures and videos) and to which full access is available to subscribing members only. As has been clearly pointed out in National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387 (January 23, 2002) "it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques".

In the light of the above, the Panelist concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

 

7. Decision

For the foregoing reasons, the Panelist orders that the Domain Name <holidayinnakron.com> be transferred to Complainant.

 

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Anna Carabelli
Sole Panelist

Dated: March 4, 2003