|Kläger||Hilton Hotels Corporation, Hilton Worldwide, HLT Domestic IP LLC, HLT International IP LLC|
|Beklagter||Steve Alek, Niagara Falls Corp|
|Entscheider||Ryan, Desmond J.|
Complainants are Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC, and HLT International IP LLC, of McLean, Virginia, United States of America represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Steve Alek, Niagara Falls Corp of Crystal Beach Province Canada.
The disputed domain names <doubletreeniagarafalls.com>, <embassysuiteniagara.com>, <embassysuiteshotelniagara.com>, <embassysuitesniagarahotel.com>, <niagarafallsembassyhotel.com>, <niagarafallsembassysuite.com>, <niagrafallsembassysuite.com>, <niagrafallsembassysuites.com>, <1800hiltons.com> are registered with eNom.
The disputed domain names <fallshamptoninn.com>, <hamptoninnfalls.com>, <niagaraembassy.com>, are registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2010. On June 29, 2010, the Center transmitted by email to eNom and Moniker Online Services, LLC request for registrar verifications in connection with the disputed domain names. On June 29, and June 30, 2010, eNom and Moniker Online Services, LLC respectively transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 2, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 9, 2010. 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.
Complainants are members of the Hilton hotel group, one of the world's largest hotel operating companies. According to the Complaint it operates 3,500 hotels in 81 countries across all six continents under several brands. Those relevant for the purposes of this dispute are:
- Doubletree – 218 hotels and resorts;
- Embassy Suites – 193 hotels in the United States and 8 internationally including at Niagara Falls;
- Hampton – 1670 hotels in the United States and 44 internationally;
- Hilton – over 520 hotels worldwide.
Third Complainant owns United States and international trademark registrations for the Hilton brands in respect of hotel services including United States registrations for DOUBLETREE (since 1968), EMBASSY SUITES (since 1983), EMBASSY SUITES HOTELS (since 2000), HAMPTON (since 2000), HAMPTON INN (since 1983) and HILTON (since 1946). It also holds registrations of domain names in the .com domain which include each of the names Hilton, Embassysuites, Hampton and Doubletree.
Complainants operate hotels in Niagara Falls under their Doubletree, Embassy Suites, Hampton Inn and Hilton trademarks.
No Response was filed, however, it appears from the panel decision in The Niagara Parks Commission v. Steve Alek o/a Niagara Falls Corp., WIPO Case No. D2009-0096, that Respondent operates a travel and tourism business in the Niagara area.
According to Complainants:
“Respondent is using the Disputed Domain Name as described below:
- <doubletreeniagarafalls.com>: This domain name redirects Internet visitors to a website at ‘www.niagarafallslocal.com’, which contains links to websites offering services competitive with the services offered by Complainant under the DOUBLETREE Trademark, including for ‘Travelodge’ hotels, ‘Chalet Inn & Suites By the Falls’, ‘Imperial Hotel & Suites’, ‘Victoria Motor Inn’ and many more.
- <embassysuiteniagara.com>, <embassysuiteshotelniagara.com>, <embassysuitesniagarahotel.com>, niagaraembassy.com, niagarafallsembassyhotel.com <niagarafallsembassysuite.com>, <niagarafallsembassysuite.com> and <niagarafallsembassysuites.com>: Each of these domain names is used in connection with a website, or redirects Internet visitors to a website at ‘www.embassysuites.ca’ that falsely appears to be an official website for Complainant’s Embassy Suites hotel in Niagara Falls. These websites contain what appears to be a photograph of an Embassy Suites hotel near Niagara Falls along with Complainant’s logos and a telephone number that is not associated with Complainant.
- <1800hiltons.com>: This domain name redirects Internet visitors to a website at ‘www.canadianniagarahotels.com’, which contains links to and advertisements for websites offering services competitive with the services offered by Complainant under the HILTON Trademark including for ‘Victoria Motor Inn’, ‘Fallsview Hotels®’, ‘Motel 6’ and many more
- <fallshamptoninn.com> and <hamptonfalls.com>: Each of these domain names is not currently being used in connection with an active website.”
Complainants exhibit printouts of the homepages of each of the active sites at the disputed domain names.
Complainants' contend that:
(i) each of the disputed domain names consists of Complainants’ respective trademarks, or, in the case of the “Embassy” domains, the distinctive element of the Trademark, with the addition of the geographic locator “Niagara”, “Niagara Falls” or “Falls”, the descriptive word “hotel” or the telephone prefix “1800”;
(ii) in comparing the respective domain names with its trademarks the gTLD domain denominator “.com” must be ignored;
(iii) the addition of geographic or descriptive words serves to accentuate rather than to detract from the confusing similarity of the disputed domain names to Complainants’ marks, particularly, as here, those words aptly describe the services offered under the trademarks and the locations at which they are offered;
(iv) they have strong and long established rights, both by registration and at common law, in their respective marks; and
(v) therefore the disputed domain names, and each of them, are substantially identical to trademarks in which Complainants have rights.
Complainants assert that they have not assigned, licensed or in any way authorised Respondent to use any of their respective trademarks. They further contend that Respondent’s use of the domain names does not constitute a bona fide offering of goods or services. They assert, and provide evidence to show, that Respondent uses the domain names to direct users to websites that not only offer services competitive with those of Complainants, but falsely suggest that the website is an official website from Complainants’ Embassy Suites hotel and also use Complainants’ logos and give a telephone number which is not associated with Complainants.
Complainants contend that Respondent is not commonly known by any of the disputed domain names, nor is he making a legitimate noncommercial or fair use of them.
Complainants contend that they have demonstrated that Respondent has no rights or legitimate interests in any of the domain names.
Complainants contend that Respondent registered each of the disputed domain names in “opportunistic bad faith” knowing of Complainants’ long standing use and reputation in the trademarks which they reflect, and that he did so in pursuit of profit by creating consumer confusion. They contend further that he has registered the disputed domain names in order to prevent Complainants from reflecting their trademarks in corresponding domain names and they point to the decision in the Niagara Parks Commission case, supra.
Respondent did not reply to Complainant’s contentions.
It is now trite UDRP law that domain denominators such as “.com” are generally to be ignored in comparing a disputed domain name with a corresponding trademark. It is further, well established both in reason and in many prior panel decisions that the addition to a trademark of geographic locators, such as “Niagara”, or descriptive words, such as “hotel” do not serve to detract from confusing similarity with the respective trademark, and may even tend to reinforce it. The Panel accepts the proposition cited by Complainants from Six Continents Hotels Inc v. EnterSports Inc, WIPO Case No. D2000-1951, that the addition of a descriptive expression or the name of a geographical area in which Complainants conduct business “serves to add to such confusion rather than distinguish the mark and the domain name”. Similar reasoning applies to the addition to Complainants’ HILTON trademark of the telephone number prefix 1800, especially so where, as here, the domain name corresponds to Complainants’ actual telephone number 1-800-HILTONS.
Complainants’ evidence clearly establishes that they have long established trademark rights both at common law and by registration in each of their relevant domain names, and the Panel therefore has no hesitation in finding that each of the disputed domain names is confusingly similar to a trademark in which Complainants have rights.
Complainants have established a strong prima facie case that there is no basis upon which Respondent can claim legitimate rights or interests in any of the domain names. He is not commonly known by any of those names, nor is there any suggestion that the use which he is making of them is a legitimate noncommercial fair use without intent for commercial gain. The inescapable conclusion from Respondent’s web pages exhibited to the Complaint is that Respondent operates the websites at the active domain names for the purpose of attracting commissions or other revenue. Respondent’s use of the domain names in this way cannot constitute the offering of a bona fide service by reference to the domain name. The evidence provided in the Complaint shows not only that the offering is not bona fide but, at least in the case of the “Embassysuites” domain names, fraudulent.
The Panel therefore finds that Respondent has no rights or legitimate interests in the domain names.
Complainants are members of one of the world’s largest and most widely known hotel operating groups. Not only do they operate hotels under trademarks relevant to these proceedings across the globe, but most particularly, they operate them in the Niagara Falls area, an area where it appears Respondent conducts his business. Complainants’ reputation and rights in their respective trademarks were, in each case, established long before the respective disputed domain names were registered. The inevitable conclusion is that Respondent registered the domain names in full knowledge of Complainants’ rights and reputation and in the expectation that it could profit from the identity or confusing similarity between those trademarks and the respective domain names. The evidence shows that having registered the domain names for that purpose, Respondent, proceeded in all but two of the cases, to use them for precisely that purpose.
Two of the domain names, <hamptoninnfalls.com> and <fallshamptoninn.com> do not resolve to an active website.
From almost the commencement of operation of the Policy it has been held that, where there are other indicators of bad faith, “passive holding” of a domain name can constitute use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case there is ample evidence of Complainants' bad faith to satisfy the test in Telstra.
Accordingly, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.
The Complaint has therefore succeeded. Complainants ask, pursuant to paragraph 4(i) of the Policy, that the domain names be transferred “to the Complainant” without indicating to which Complainant they wish the domain names to be transferred. Since it is Third Complainant, HLT Domestic IP LLC, which is the owner of the respective United States trademark registrations, the Panel proposes to order that the domain names be transferred to that Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names,
be transferred to Complainant HLT Domestic IP LLC.
Desmond J. Ryan AM
Dated: August 23, 2010