Complainant is Six Continents Hotels, Inc., of Atlanta, Georgia, United States of America, represented by The Gigalaw Firm, United States of America.
Respondent is Chris Falletta, of Kissimmee, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <holidayinnvacationclub.com>, is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 5, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and provided the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
On June 10, 2008, Complainant forwarded an email communication from Respondent in which Respondent stated: “I did a little investigating and discovered that one of my past employees serving in the role of Marketing Intern did indeed purchase the domain name of holidayinnvacationclub.com.” Respondent also informed Complainant that the disputed domain name had been released from his account, was no longer registered in his name, and had never been used for any purpose. In an email communication of June 10, 2008, Complainant informed the Center that it did not consent to the transfer of the disputed domain name and would await a decision from the Panel. Complainant also requested the registrar, GoDaddy.com, to confirm that the disputed domain name will remain under registrar lock during the pending proceedings. Subsequently, the Center asked the registrar to confirm the status of the disputed domain name.
The Registrar confirmed to the Center that the domain name was not cancelled and was locked pending the outcome of the Panel. On June 11, 2008, the Center received an email communication from Respondent requesting the Center to “Please cancel the above domain name and or transfer to the party mentioned and represented by the below Law Firm.” The Center acknowledged receipt of Respondent’s email communication and informed Respondent that the Center was still verifying the Complaint filed against Respondent. Additionally, the Center asked Respondent to confirm that his previous communication may be regarded as his complete response so the Center could forward Respondent’s communication to the Panel for consideration.
On June 17, 2008 the Center received an email communication from Respondent stating that he had made several failed attempts to contact Complainant. Furthermore, Respondent stated that he was unaware he had registered the disputed domain name, he had never used the disputed domain name under any circumstance and lastly that he was “ready willing and able to assign/transfer it to [the Complainant].” On June 24, 2008 the Center advised Respondent that the due date for filing a response had lapsed on June 23, 2008 and that the Center would proceed with the appointment of an administrative Panel. Furthermore the Center notified Respondent that consideration of any late submissions is left to the discretion of the Panel.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 8, 2008. 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
Complainant, Six Continents Hotels, Inc., has used the HOLIDAY INN mark since 1952. The disputed domain name, <holidayinnvacationclub.com>, was first created on May 12, 2004. The domain name resolves to a web page that offers hospitality services in competition with Complainant.
5. Parties’ Contentions
A. Complainant
Six Continents Hotels asserts the following:
- Complainant has strong rights in and to the HOLIDAY INN trademarks. As support, Complainant notes that it owns at least 1,515 registrations in at least 184 countries or geographic regions worldwide for trademarks that consist of or contain the mark HOLIDAY INN, and is the registrant of at least 950 domain names that consist of or contain the mark HOLIDAY INN or variations thereof;
- The disputed domain name is confusingly similar to Complainant’s HOLIDAY INN trademarks because it contains Complainant’s trademark plus the descriptive words “vacation club”;
- Respondent has no rights or legitimate interests in the disputed domain name, as Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use any of Complainant’s trademarks in any manner;
- Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
- Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name;
- Respondent is not making a legitimate noncommercial or fair use of the disputed domain name;
- The disputed domain name was registered and is being used in bad faith as well as primarily for the purpose of disrupting business of a competitor;
- Respondent uses the disputed domain name in connection with a website that offers services competitive with those offered by Complainant;
- Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website;
- Respondent knew of Complainant’s trademarks when it registered the disputed domain name;
- Complainant’s trademarks pre-date Respondent’s registration of the disputed domain name by 50 years;
- Respondent’s actions suggest opportunistic bad faith given Complainant’s established rights in its trademarks in 184 countries or geographic regions worldwide and the fact that the disputed domain name is “so obviously connected with” Complainant;
- As of the date on which the Complaint was filed, Complainant had not received a response from Respondent concerning a demand letter sent.
B. Respondent
Although Respondent has failed to provide a formal response, Respondent has emailed the Center asserting that it is his desire to cancel the domain name and/or assign/transfer the domain name to Complainant.
6. Discussion and Findings
In The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, the panel explained that when presented with a “unilateral consent to transfer” panels have taken three different approaches. Some panels have granted the relief requested on the basis of respondent’s consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,
WIPO Case No. D2000-0207; SLUMBERLAND FRANCE V. CHADIA ACOHURI,
WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. JACOBI CARBONS AB,
WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotelephone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,
WIPO Case No. D2003-0745.
The panel in Williams Sonoma, Inc. v. EZ Port,
WIPO Case No. D2000-0207, offered the following guidance:
Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by Complainant so that the transfer may occur without further delay.
This Panel agrees with the approach and rationale set forth in the Williams Sonoma decision. Accordingly, the Panel orders the transfer of the disputed domain name to Complainant, pursuant to Complainant’s request in which Respondent appears to acquiesce.
7. Decision
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 name <holidayinnvacationclub.com> be transferred to Complainant.
Michael A. Albert Sole Panelist
Dated: July 22, 2008
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