In Inter-Continental Hotels Corporation, Six Continents Hotels v Daniel Kirchhof D2009-1661 WIPO, a Uniform Domain- Name Dispute-Resolution Policy (UDRP) panellist ordered the transfer of over 1500 domain names from an individual registrant, to Six Continents.
The Complainants, Inter-Continental Hotels Corporation and Six Continents Hotels, were members of an international organisation called IHG which manages and operates hotels in Africa, the Americas, Australasia, China, Europe and the Middle East on a franchised basis. IHG operates under seven brands: InterContinental, Crowne Plaza, Holiday Inn, Holiday Inn Express, Candlewood Suites, Staybridge Suites and Hotel Indigo. The Complainants each owned trade marks relating to these brands around the world and requested that, if successful in their domain name complaint, the disputed domains should be transferred to Six Continents.
Daniel Kirchhof, from Leipzig was the registrant of approximately 70,000 domain names. Between December 2008 and July 2009, he registered 1529 domain names relating to IHG's hotel brands, with most of them being registered between 17 and 21 July 2009. The format of the disputed domains typically linked the name of a hotel brand with a city or location with hyphens between words, e.g., crowne-plazaamsterdam. com.
The websites to which the domains resolved had the name of the hotel, an image of five stars and tabs for Homepage, Hotel Offers, Hotel Pictures, and Surrounding Pictures. There was a disclaimer on the Hotel Pictures page stating that the pictures were the responsibility of the hotel chain or property and not the website owners. There were links to reservations websites, which allowed customers to book hotels (including, but not exclusively, IHG hotels), and advertisements, generated by Google tools, most of which were for hotels that were in competition with IHG, such as the Marriott Group. The Complainants contended that Daniel Kirchhof was not licensed to use its trade marks and that it had never used or made preparations to use the domain names in connection with a bona fide offering of goods or services. Rather, Kirchhof was using the domains in relation to websites that falsely appeared to be associated with IHG, but which then presented customers with advertisements for competing hotels. Daniel Kirchhof did not respond to the complaint.
Following Fulham Football Club (1987) Ltd D2009-0331 WIPO, the UDRP panel held that it had jurisdiction to determine a domain name complaint made by multiple complainants. The panel held that there was a common grievance and, despite the large and unprecedented number of disputed domain names, it would be procedurally efficient to deal with all of them in one set of proceedings, given the highly similar facts of the complaints.
Since Daniel Kirchhof did not respond to the complaint, it was only necessary for the Complainants to make a prima facie case under each heading of the UDRP.
The panel divided the disputed domain names into four categories to determine whether or not they were confusingly similar to the Complainants' trade marks. The categories were
- Domain names that contained one of the Complainants' trade marks in its entirety combined with a geographic term.
- Domain names that contained one of the Complainants' trade marks in its entirety combined with a descriptive term.
- Domain names that commenced with part of one of the Complainants' trade marks in combination with a geographic or generic term
- Domain names that did not contain any of the Complainants' trade marks (such as atlantic-holiday-centre.com or campingjungrau- holiday-park.com).
The panel held that the first two categories of domain name were confusingly similar to the Complainants' marks, following a number of domain name complaints, including Chanel Inc v Estco Technology D2000-0413 WIPO, in which it was held to be usual for a domain that incorporated a complainant's mark in its entirety to be confusingly similar to that mark, despite the addition of other words. Similarly, following Accor v Lee Dong Youn D2008-0705 WIPO, a domain name consisting of a trade mark plus a geographic term was confusingly similar to the trade mark.
Considering the third category, the panel noted that the abbreviations of the Complainants' marks were typically "indigo", "Holiday-exp", "holiday" or "holiday-suites". It held that although "indigo" was a dictionary term, it was not commonly used in industry and was a distinctive part of the Complainants' HOTEL INDIGO marks. Accordingly, the domains commencing with "indigo" were confusingly similar to the Complainants' marks.
Although the Complainants gave no evidence that they used the abbreviated form "holiday-exp", the panel held that "exp" was a common abbreviation for "express" and that "holiday-exp" was confusingly similar to the Complainants' marks. The panel held that the prefix "holiday-suites" was confusingly similar to the Complainants' HOLIDAY INN and HOLIDAY INN EXPRESS marks due to the Complainants' use of the word "suite" in conjunction with their trade marks, resulting in a likelihood that the combination of words would be associated with the Complainants.
Whilst noting that the words "holiday" and "hotel" were, on their own, generic and widely used terms, the panel held that in the unusual circumstances of this dispute it was prepared to find confusing similarity, taking into account the fact that HOLIDAY INN and HOLIDAY INN EXPRESS had been registered for many years, that the use of "holiday" or "hotel" at the beginning of the disputed domain names drew attention to that component of the disputed domain name and was also the first word of the Complainants' marks, and that the word "holiday" or "hotel" was used in connection with a location of an IHG hotel.
The panel concluded that the 10 domain names in the fourth category were not confusingly similar to the Complainants' trade marks. Although some of the domain names contained the word "holiday", these domains differed from those in the third category, because it was not the first word in the domain.
The panel had no difficulty in deciding that Daniel Kirchhof had no rights or legitimate interest in the names and that he had registered and used the domains in bad faith. Accordingly, Daniel Kirchhof was ordered to transfer 1,519 domain names to Six Continents.
The result of this case is unsurprising and it is interesting mainly because it relates to multiple Complainants and a large number of domain names. The panel described this as
…a text book example of the type of bulk registration strategy to which UDRP process and jurisprudence is having to adapt in order to keep pace with the broader developments and registration trends within the domain name system.
It is worth noting that, although Daniel Kirchhof had not been the recipient of any previous complaints under the UDRP, the sheer number of domain names in this complaint was grounds for presuming bad faith under Paragraph 4(b)(ii) of the UDRP, which deals with respondents engaged in a pattern of registering domain names in order to block the legitimate rights-owner from registering them.