4.5 The registrations for a number of marks in the United States, including the key marks of HOLIDAY INN, Reg. No. 592,539 and HOLIDAY INN EXPRESS, Reg. No. 1,651,851 are, pursuant to Section 15 of the U.S. Trademark Act, 15 U.S.C., paragraph 1065, incontestable and constitute conclusive evidence of Complainant’s exclusive right to use the marks in commerce in the United States.

4.6 Complainant has spent and continues to spend large amounts of money advertising and promoting the HOLIDAY INN marks worldwide. Such expenditures are over and above the amounts spent by Complainant’s franchisees for advertising and promotion.

4.7 In Six Continental Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No. D2003-0222, the sole panelist agreed with Complainant’s assertion that HOLIDAY INN is a famous mark. Other decisions have found that HOLIDAY INN marks have a worldwide reputation, Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272, and that HOLIDAY INN marks are well known worldwide, Six Continent Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.

4.8 Complainant operates websites under the domain names <holiday-inn.com> and <holidayinnexpress.com> among other domain names (SCH Brand Websites). SCH Brand Websites provide on-line reservation services for HOLIDAY INN hotels worldwide.

4.9 In 2003, on-line reservations of HOLIDAY INN hotel rooms through SCH Brand Websites generated more than 6% of Complainants total HOLIDAY INN hotel reservations and almost US$400 million in revenue for Complainant. HOLIDAY INN is routinely one of the top 20 most commonly searched travel-related marks on the Internet, averaging more than 500,000 queries for the phrase “holiday inn” in September 2004.

4.10 Complainant owns domain name registrations for a number of HOLIDAY INN hotels in which HOLIDAY INN is followed by a geographic location, e.g., <holiday-inn-hotels-asheville-directory.com>.

4.11 The factual information provided by Complainant is supported by a declaration of Del Ross, Director, Global E-Commerce Services for Complainant.

4.12 On September 22, 2004, Complainant sent a cease and desist letter to Respondent regarding the domain name <happyholidayinn.com> and demanding transfer of that domain name to Complainant. Complainant learned of the registration of the domain name <holidayinnexpressnewnan.com> subsequent to sending the letter. Respondent has not responded to the letter.

4.13 Respondent registered the domain name <happyholidayinn.com> on September 20, 2004; the domain name <holidayinnexpressnewnan.com> was registered by Respondent on August 13, 2004. Both of these domain names resolve to pornographic websites.

4.14 Respondent did not file a response in these proceedings and was notified of its default by the Center on December 30, 2004.

5. The Parties’ Contentions

A. Complainant

5.1 Complainant contends that it owns the marks for HOLIDAY INN and HOLIDAY INN EXPRESS as well as other registered marks for Holiday Inn. Complainant further contents that by virtue of its long use of the HOLIDAY INN marks throughout the world, Complainant has accrued trademark rights in the marks HOLIDAY INN and HOLIDAY INN EXPRESS.

5.2 Complainant contends that the disputed domain names are “identical and/or confusingly similar to” Complainant’s HOLIDAY INN and HOLIDAY INN EXPRESS marks, that the domain names incorporate the marks in their entirety, and include the descriptive term “happy” and the geographically descriptive term “newnan”, respectively. (Complainant owns a Holiday Inn Express Hotel in the town of Newnan, Georgia.)

5.3(a) Complainant contends that the addition of a geographic term to a mark does not change the nature of the mark and that, as at least some panels have found, does not distinguish a disputed domain name from a mark in which an owner has rights, either registered rights or rights derived from long usage under common law. Complainant further contends that the use of a geographic term attached to a mark compounds the likelihood of confusion, and that a consumer desiring to stay at Complainant’s hotel in Newnan, Georgia may be directed to Respondent’s pornographic site, and may be confused that Respondent’s website is somehow related to Complainant.

(b) Complainant also contends that the addition of a generic word, such as “happy” does not decrease the similarity of Complainant’s mark HOLIDAY INN with one of the disputed domain names, and that the addition of common terms does not change the overall impression of the mark as being connected to Complainant, and makes the disputed domain names confusingly similar to Complainant’s marks.

5.4 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names; that Respondent is not affiliated with Complainant, is not a licensee of Complainant; and that Respondent is not authorized by Complainant to use marks in which Complainant has rights.

5.5 Complainant contends that Respondent has never used, or made preparations to use the disputed domain names for a bona fide offering of goods or services, Complainant contending that a pornographic website is not a bona fide offering of goods or services under these disputed domain names.

5.6 Complainant further contends that Respondent is not, and has never been, commonly known by either of the disputed domain names, and with Complainant’s established use of its registered marks, it is highly unlikely, and one would be hard pressed, to find anyone who could be commonly known by either disputed domain name.

5.7 Complainant contends the Respondent registered and is using the disputed domain names in bad faith in an intentional effort to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks regarding their source, sponsorship, affiliation or endorsement by Complainant.

5.8 Complainant further contends that Respondent’s use of the disputed domain names to attract Internet users to Respondent’s pornographic websites constitutes bad faith use of a domain name, and does not qualify as a bona fide offering of goods or services.

5.9 Complainant further contends Respondent’s websites, accessed by entering either of the disputed domain names, carry a message that the domain names are for sale; the price being US$500.00 as noted on the credoNIC.com website.

5.10 Complainant requests that this Panel transfer the disputed domain names to Complainant.

B. Respondent

5.11 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

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

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name or names; and

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

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraph 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate.”

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant has shown usage of its marks relating to HOLIDAY INN over a long period of time with registration of those marks starting over 50 years ago. Many of Complainant’s marks are uncontestable. Certainly, the facts adduced in this proceeding show that Complainant has strong marks relating to HOLIDAY INN, and Complainant has been diligent in protecting these marks. (See the WIPO database for cases involving Complainant, and the many times that Complainant has prevailed in proceedings under the Policy.) Complainant’s marks, particularly the HOLIDAY INN mark, is considered by Complainant and at least one earlier panel as a famous mark. The evidence presented by Complainant supports that conclusion. All the more reason to give Complainant’s marks a substantial measure of protection.

6.5 (a) The disputed domain name <happyholidayinn.com> incorporates, in its entirety, one of Complainant’s oldest, well known and highly publicized marks. The disputed domain name adds the generic term “happy” as well as the “.com” suffix. Many cases have held that the “.com” suffix is irrelevant when considering domain names; see, for example, Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, regarding the gTLD suffix. Also, this Panel agrees with the decision in PepsiCo, Inc. v. Pepsi, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a/ EMS), WIPO Case No. D2003-0696, that the mere addition of generic terms or common terms to a mark “does not change the overall impression of the designations as being” domain names connected to Complainant. This Panel is also cognizant of the decision in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 where the Panel found that when “a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.” This Panel, therefore, finds that the disputed domain name <happyholidayinn.com> is confusingly similar to Complainant’s distinctive marks, particularly Complainant’s mark Reg. No. 592,539.

(b) The other disputed domain name, <holidayinnexpressnewnan.com>, incorporates in its entirety one of Complainant’s marks and differs from Complainant’s marks, particularly Reg. No. 1,651,851, by the addition of the geographic term “newnan” and the “.com” suffix. A person unfamiliar with the towns and cities of the State of Georgia may not immediately recognize “newnan” as a geographic term. Nevertheless, it is a geographic place in that State and 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. See Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 relating to the addition of a state name, (equally applicable to other geographic terms). This Panel also finds that the overall impression given an Internet user by this disputed domain name makes it appear that it is Complainant’s domain name. See Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433. This Panel, therefore, finds that the disputed domain name <holidayinnexpressnewnan.com> is confusingly similar to Complainant’s marks, particularly Reg. No. 1,651,851.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.

6.7 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, the Complainant having made the necessary assertions (see below), it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain names, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain names, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.8 Complainant has asserted that Respondent is not affiliated with Complainant, is not a licensee of Complainant, and was not authorized by Complainant to use its mark. These assertions are uncontested, and therefore, must be deemed for purposes of these proceedings as being true.

6.9 Complainant asserts that it is highly unlikely that Respondent has been commonly known by either of the disputed domain names in view of the relatively late registration of these names when compared to Complainant’s long use in commerce of its marks, and their distinctiveness. See Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397. Again, Complainant’s assertion is uncontested and can be accepted for purposes of this proceeding.

6.10 Even though Respondent has used the disputed domain names before the start of these proceedings, that use is solely to direct Internet users to pornographic websites and such use cannot be considered a bona fide offering of goods or services. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a/ Country Walk, WIPO Case No. D2003-0161; Victoria Rowell v. Telco, Regsnet and Jeff Martin, WIPO Case No. D2003-0712.

6.11 Further, it is not likely that Respondent is making a non-commercial or fair use of the disputed domain names, the website offering pornographic materials. That Complainant’s marks are being tarnished by Respondent’s use of the disputed domain names is without question or doubt by this Panel.

6.12 Where a mark is as distinctive as Complainant’s marks, and Respondent has no relationship with Complainant (as incontestably asserted by Complainant), Respondent cannot be said to have legitimately chosen the disputed domain names “unless it was seeking to create an impression of an association” with Complainant, and to deliberately use those names to attract unwitting Internet users to Respondent’s sites. See Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172.

6.13 For the reasons enumerated above, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.14 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Three of these methods are pertinent in these proceedings. They are 4(b)(i), 4(b)(iii), and 4(b)(iv) of the Policy.

6.15 With regard to Paragraph 4(b)(i) of the Policy, this Panel agrees with Complainant and the Panel in Venturum GmbH v. Coventry Investments Ltd., Domain Collection Inc., WIPO Case No. D2003-0405. It is clear that Respondent is in the business of selling domain names through its website, i.e., the disputed domain names, and that the sale price of US$500.00 is well in excess of Respondent’s out-of-pocket costs directly related to registering the disputed domain names. Paragraph 4(b)(i) of the Policy relates to selling domain names to a complainant or to a competitor of the complainant. In this case the disputed domain names are being offered to any interested party, including Complainant or a competitor of Complainant and, therefore, Paragraph 4(b)(i) of the Policy is satisfied.

6.16 Regarding Paragraph 4(b)(ii) of the Policy, this Panel believes that the registration and use of the disputed domain names which are confusingly similar to Complainant’s strong, distinctive, and famous marks for the purpose of directing Internet users to pornographic sites trades on the substantial goodwill developed by Complainant and is designed to disrupt the activities of Complainant. See Society of St. Vincent de Paul, Council of the United States v. Alex Yip, WIPO Case No D2004-0121 and Baylor University and Baylor College of Medicine v. Alex Yip, WIPO Case No. D2003-0414.

6.17 Additionally, this Panel believes that using the disputed domain names to direct traffic to pornographic websites constitutes bad faith (regarding registration and use) 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.

6.18 There may be some question as to whether an Internet user will believe that the pornographic sites are associated with Complainant. That begs the issue, the damages having been done once the Internet user accesses the websites with the disputed domain names. The registrant, Respondent, will have succeeded in its purpose of using the disputed domain names to attract the Internet user with a view to commercial gain. See Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568.

6.19 For the reasons enumerated above, this Panel finds that Respondent has registered and used the disputed domain names in bad faith.

7. Decision

7.1 For all of the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain names <happyholidayinn.com> and <holidayinnexpressnewnan.com> be transferred to the Complainant.

Jay Simon
Sole Panelist

Dated: February 4, 2005

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2004/d2004-0987.html

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