Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. decided that one man’s ownership of 1,542 domains was just too much to bear. In the recent cybersquatting decision of Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof (WIPO Case No. D2009-1661, January 19, 2010) a single member panel had the long task of sorting through these domains. For a full listing of all the domains in dispute please see the decision.
Paragraph 4(a) of the ICANN UDRP Policy provides that a complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Complainants are the well known corporate owners of multiple hotel chains which include, Holiday Inn, Holiday Inn Express, Intercontinental, Crowne Plaza, Staybridge Suites, Staybridge, Hotel Indigo, Candlewood, and Candlewood Suites. For more info about Complainants go to www.ichotelsgroup.com or www.ihg.com .
The Panel, in addressing the first element noted that most of the domain names included Complainants’ trademarks with the addition of some geographic indicator. Thus the domains were found to be identical or confusingly similar. The Panel also found that many of the domains contained Complainants’ trademarks and a descriptive term. These were also determined to be confusingly similar. The Panel further found that many of the disputed domain names started with part of the Complainant’s trademark in combination with a geographic location or generic term. These were also found to be confusingly similar. However, a total of ten (10) of the disputed domain names were found to not be confusingly similar to any of Complainant’s trademarks.
The Panel quickly dealt with the second element noting:
The websites resolving from the disputed domain names create the impression that they are official websites for the relevant hotel, or potentially, that the Respondent manages the hotel. By using the Complainant’s trade marks, the Respondent is falsely suggesting he is the trade mark owner or the website is the official site for the accommodation of the Complainant’s related entities when it is not…. Accordingly, the Panel concludes that the Respondent intentionally selected domain names which contained the Complainant’s trade marks, and added a word or words which do not serve to distinguish them, but which strengthens the association with the Complainant or its goods and services, for the purpose of redirecting Internet users to his own websites. Such use cannot constitute a bona fide offering of goods of services.
Although previous domain dispute decisions have an effect on a finding of bad faith, Respondent’s lack of previous decisions didn’t sway the Panel.
The Respondent has not been named as a respondent in previous UDRP decisions. However the fact that this proceeding has been brought in relation to over 1,500 domain names which contain the Complainant’s trade marks, makes it clear that the Respondent has engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The Panel’s view is further supported by the fact that the Respondent owns a vast array of other domain names. This is clear evidence of bad faith.
Ultimately, the Panel agreed that 1,519 of the domains should be TRANSFERRED. There was a remaining 23 domains, of which 13 with withdrawn and 10 were DENIED.