Inter-Continental Hotels Corporation v Reservation Booking, booking

WIPO Case No. D2024-3988

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Inter-Continental Hotels Corporation v. Reservation Booking, booking

Case No. D2024-3988

1. The Parties

The Complainant is Inter-Continental Hotels Corporation, United States of America (“United States”), represented by the GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Reservation Booking, booking, United States.

2. The Domain Name and Registrar

The disputed domain name <americasintercontinental.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27,
2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On September 30, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain name which differed from the named Respondent (REDACTED FOR PRIVACY) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
October 1, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the

Complaint on October 1, 2024.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 7, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 27, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 28, 2024.

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The Center appointed William F. Hamilton as the sole panelist in this matter on November 5, 2024. 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

The Complainant is part of InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups. Companies within IHG own, manage, lease, or franchise, through various subsidiaries, 6,430 hotels and 954,836 guest rooms in about 100 countries and territories worldwide.

The Complainant owns numerous registrations for the INTERCONTINENTAL trademark (“Mark”), including:

- United States Reg. No. 890,271 (registered April 28, 1970) for hotel services;
- United Kingdom Reg. No. 1,277,670 (registered April 27, 1990) for hotel services;

- European Union Reg. No. 002787646 (registered June 14, 2006) for hotel and motel services.

The Complainant operates 224 hotels with 73,082 guest rooms across the Americas, Europe, Middle East,
Africa, and Asia. The Complainant owns numerous domain names containing the Mark, including

<intercontinental.com>, registered on July 30, 1997.

The disputed domain name was registered on September 16, 2024, more than 54 years after the
Complainant’s first trademark registration for INTERCONTINENTAL. The disputed domain name resolves
to a website purportedly offering hotel rooms at prices ranging from USD 120 to USD 200. In addition to the

Mark, the Respondent is also using a portion of the Complainant’s INTERCONTINENTAL logo on its website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Mark because the disputed domain name incorporates the Mark and merely adds the term “americas”. The Complainant contends that the Complainant has never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, has never operated a business under the disputed domain name, has not advertised the disputed domain name, and has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in the Mark and has registered and used the disputed domain name in bad faith to unfairly compete with the Complainant and otherwise disrupt the Complainant’s business.

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

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

(ii)       the 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 in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in the Mark for the purposes of the Policy. The disputed domain name incorporates the Mark in its entirety with the addition of the term “americas”. The addition of such term does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. Previous UDRP panels have consistently found that adding terms to the INTERCONTINENTAL mark still results in confusing similarity. See, e.g., Inter-Continental Hotels Corporation v. Contact Privacy Inc. Customer 1247331665 / “Intercontinental Hotel”, WIPO Case No. D2020-3392.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

The Complainant has never authorized or licensed the Respondent to use its Mark.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this showing and has not provided evidence of any of the circumstances set forth in paragraph 4(c) of the Policy.

The Respondent’s website is replete with the Mark and a logo that is similar to the Complainant’s
INTERCONTINENTAL logo. The Respondent has used the disputed domain name to impersonate the
Complainant and offer competing hotel booking services at various price points, which does not establish the

Respondent’s rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:

(i)        circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)       the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii)      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Respondent registered the disputed domain name 54 years after the Complainant’s first trademark registration for INTERCONTINENTAL and decades after the Mark became well-known in the hotel industry. Given the fame of the Mark and the Respondent’s use of the disputed domain name to offer competing hotel booking services, the Panel finds it implausible that the Respondent was unaware of the Complainant’s rights when registering the disputed domain name.

The Respondent attempts to create confusion and impersonate the Complainant for commercial gain by using the Complainant’s Mark, offering competing hotel booking services, and creating a website that falsely appears to be associated with the Complainant.

By using the disputed domain name to offer hotel rooms, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's Mark as to source, sponsorship, affiliation, or endorsement. This constitutes evidence of registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <americasintercontinental.com> be transferred to the Complainant.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: November 19, 2024