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InterContinental Hotels Wins 1,500 Domain Names
InterContinental Hotels Wins 1,500 Domain Names in Largest WIPO Dispute
In the largest domain name dispute resolution decision to date, the World Intellectual Property Organisation (WIPO)’s arbitration centre transferred 1,519 out of a total of 1,542 disputed domain names to the InterContinental Hotels Group in January. Another ten names were refused transfer while the hotel group withdrew claims relating to 13 other domain names. The Panel found the Respondent had no legitimate interest in the domain names and had acted in bad faith.
The disputed domain names were all held by one registrant, a Daniel Kirchhof of Leipzig, Germany, who has over 70,000 domain names registered. All of the disputed domain names had a domain parking page with a headline for the website of, for example, “Hotel InterContinental Amstel” following by an image of five stars. There are tabs for “Homepage”, “Hotel offers”, “Hotel pictures” and “Surrounding pictures”. The websites were designed to make internet users believe they were visiting the website of the actual hotel. However they all linked to third party websites offering bookings at rival hotels as well as links to some InterContinental Hotels group hotels.
Domain names disputed included those from InterContinental Hotels, Holiday Inn, Crowne Plaza, Staybridge Suites, Hotel Indigo and Candlewood brands belonging to the hotel group. The dispute hearing was extremely large and unprecedented in the number of domain names it considered. However the WIPO Panel said that due to this large “number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them.”
The Panel agreed with many of the InterContinental Hotels complaints. Among the findings, the Panel found that almost all of the domain names contained terms that “were in some cases identical and in other[s] confusingly similar to trade marks held by the hotels group,” a key issue in such a complaint. The brand owner was required “to show that the name is identical or confusingly similar to terms that it has rights to; that the person who owns it has no rights to the domain name; and that it was registered and is being used in bad faith.”
The Panel also found the registrant had no legitimate interest or fair use in the domain names with the websites containing a mechanism for booking rooms in InterContinental’s hotels “using a third party booking engine. The websites also contain links to third party websites (or the Complainant’s own websites), and sponsored advertising which is likely to entitle the Respondent to receive commercial revenue and directs potential customers of the Complainant to websites of its competitors. This clearly constitutes commercial use of the disputed domain names without the Complainant’s authorisation.” The Panel also found there “is clear evidence of bad faith” in the registration of the domain names.
The Panel also decided that given the large number of domain names registered in itself was evidence the Respondent had acted in bad faith. “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.” The ten names that were refused transfer did not contain the terms to satisfy the tests used by the Panel to determine the Respondent had no legitimate use of the domain names. The 13 domain names disputed that were withdrawn from the complaint by InterContinental Hotels as they had been deleted.
The case is one reason why trademark and brand holders should consider registering their domain names before cybersquatters do. Despite the seemingly quick and efficient manner in which this dispute was decided, it is possible for cybersquatters to do damage to a brand/trademark’s image before the legitimate holder of the domain name is able to get hold of disputed domain names.
To help prevent such disputes, brand owners and trademark holders should consider having a brand protection strategy that includes domain names. This could include registering all common spellings and mis-spellings of brands and products across a wide range of generic Top Level Domains (gTLDs - .COM, .ORG, .NET) and country code Top Level Domains (ccTLDs - .CN, .DE .UK
The full WIPO decision is available at: www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1661.html