Over 1,500 domain names transferred to InterContinental Hotels
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In Inter-Continental Hotels Corporation v Kirchhof (Case D2009-1661, January 19 2010), a World Intellectual Property Organization (WIPO) panel has ordered the transfer of 1,519 domain names.
Six Continents Hotels Inc and Inter-Continental Hotels Corporation (referred to jointly as the complainant) are both members of the InterContinental Hotels Group (IHG), an international organization which manages and operates hotels around the world. The complainant owns numerous trademarks, including HOLIDAY INN, INTERCONTINENTAL and CANDLEWOOD, in a large number of countries.
Daniel Kirchhof, an individual living in Germany, registered 1,542 domain names allegedly in violation of the complainant's trademark rights. As a result, the complainant filed a complaint before WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP). Kirchhof did not provide any response to the complaint.
To obtain the transfer of a domain name under the UDRP, a complainant needs to prove all of the three following circumstances:
- The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As a preliminary issue, the panel considered the issue of multiple complainants (which is not expressly covered by the UDRP) and concluded that it was acceptable in this instance for a number of reasons, notably the following:
- Both companies were members of the same corporate group and could be said to have a common legal interest; and
- It would be procedurally efficient to deal with all matters in one proceeding, given the almost identical facts.
When considering the first prong of the UDRP, the panel decided to categorize the domain names into four groups:
- domain names containing one of the complainant's trademarks in its entirety, plus a geographic term or abbreviation thereof (eg, 'crowne-plaza-berlin.com');
- domain names containing one of the complainant's trademarks in its entirety, plus a descriptive term or abbreviation thereof (eg, 'holiday-inn-express-university.com');
- domain names beginning with a part of one of the complainant's trademarks, plus a geographic or descriptive term, or abbreviation thereof (eg, holiday-memphis-midtown.com'); and
- domain names not containing any of the complainant's trademarks (eg, atlantic-holiday-centre.com').
The panel found confusing similarity in relation to the first three groups. While the first two groups did not present much of a problem, the third group required further analysis, especially because the components of the trademarks used could be said to be generic in certain cases (eg, 'holiday' or 'hotel'). Nevertheless, the panel found confusing similarity when taking into account the particular facts of the case, notably:
- the fame of the trademarks in question;
- the volume of domain names concerned; and
- the fact that the trademark components appeared at the beginning of the domain names.
However, the panel refused to find confusing similarity in relation to the last group. Therefore, these domain names were not taken into consideration in the rest of the panel's decision.
Regarding the second prong of the UDRP, the panel agreed that Kirchhof had never been granted any right or licence to use the marks, and had never been known by the domain names. In addition, the panel considered that Kirchhof was not making a legitimate non-commercial or fair use of the domain names, and was not using them in connection with a good-faith offering of goods and services. In this regard, the panel declared that the websites to which the domain names were pointing created the impression that they were official websites or that Kirchhof managed the hotels in question. The panel concluded that:
- Kirchhof could not have been unaware of the complainant when he registered the domain names; and
- the registrations were made for the purpose of redirecting internet users to his own websites.
Turning to the last prong of the UDRP, the panel found bad faith in the number of domain names that were registered, showing that Kirchhof had engaged in a pattern of registering domain names in accordance with Paragraph 4(b)(ii) of the UDRP. In addition, the panel asserted that the registrations were made because they were likely to confuse internet users. Finally, the panel noted that the complainant might suffer a commercial loss when an internet user booked through Kirchhof's websites, as opposed to through the complainant's official websites. Moreover, Kirchhof was likely to receive a commercial gain, both from such transactions and from displaying sponsored links to competitive goods and services. The panel thus concluded that Kirchhof had registered and was using the domain names in bad faith.
As a result, the panel decided to transfer 1,519 domain names (all 1,542 included in the complaint, except 10 for which no confusing similarity was found and 13 that had expired and were withdrawn from the complaint). The case is notable for the extremely large and unprecedented number of domain names transferred, and illustrates the new trend in bulk registrations that the UDRP is being increasingly called upon to deal with. The panel noted that Kirchhof had not been involved in any previous UDRP cases, but that he had registered over 70,000 domain names. This is perhaps an indication that we will be seeing more of Kirchhof in the future, not to mention more of these types of bulk registration cases in general, as the UDRP is forced to adapt to new trends in domain name registrations.
David Taylor, Lovells LLP, Paris
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