Out-Law News 3 min. read
27 Jan 2010, 4:02 pm
The single case, heard by the World Intellectual Property Organisation (WIPO)'s arbitration centre, transferred 1,519 domain names to the InterContinental Hotels Group (IHG), refusing to transfer just 10 of the names. The hotels group had withdrawn claims relating to 13 other domain names.
The case was taken by the Inter-Continental Hotels Corporation and Six Continents Hotels, both of which are owned by the IHG. The man who had registered the domain names was German resident Daniel Kirchhof.
WIPO's Uniform Domain Resolution Policy (UDRP) allows for the taking of one case to settle many disputes as long as the domain names are held by the same person. The rules also allow companies to take a joint case against a holder of domain names if they are related and have a common interest in the case.
The WIPO panel said that it accepted the taking of the action by two related companies over 1,500 domain names was acceptable.
"The inclusion of multiple complainants in this case is acceptable," said the WIPO ruling. "There is clearly a common grievance on the part of both [companies], and despite the extremely large and unprecedented 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."
For a domain name to be transferred by WIPO a brand owner has 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 WIPO panel said that almost all of the domain names contained terms that were in some cases identical and in other confusingly similar to trade marks held by the hotels group.
The panel said, though, that 10 of the domain names did not contain terms that were similar to any trade marks held by the IHG companies, so refused to transfer those names.
The websites linked to from many of the names contained a booking engine that offered rooms at the IHG's hotels as well as rooms at other hotels.
IHG said that Kirchhof had no legitimate rights to use the names and that his offering of hotel room bookings was not a reasonable use of the trade marks.
"The use of the disputed domain names in this manner cannot be considered use in connection with a bona fide offering of goods or services," said the ruling. "Attempting to attract internet users through misuse of a well-known trade mark, and the provision of links which promote goods and services competitive to [IHG], cannot be considered a bona fide use."
The hotels group argued that the very fact that so many domain names were involved in this case was in itself evidence that Kirchhof was acting in bad faith when he registered and used the domain names. The WIPO panel agreed.
"The fact that this proceeding has been brought in relation to over 1,500 domain names which contain the [IHG's] trade marks, makes it clear that [Kirchhof] 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," said the ruling. "The Panel’s view is further supported by the fact that [Kirchhof] owns a vast array of other domain names. This is clear evidence of bad faith."
The panel said that 1,519 domain names out of the 1,542 originally complained about should be transferred.
The WIPO panel hearing the case said that this was exactly the kind of case that it expected when it allowed cases to deal with multiple domain names.
"The present case presents a text book example of the type of bulk registration strategy to which UDRP process and jurisprudence is having to adapt in order to keep pace with the broader developments and registration trends within the domain name system," it said.
Intellectual property law expert John Mackenzie of Pinsent Masons, the law firm behind OUT-LAW.COM, said that other companies should learn from IHG's methods.
"This decision is an excellent illustration of how brand owners can tackle several domain name problems by co-ordinating them all into one procedure," he said. "The UDFP process provides a very cost-effective way of getting rid of rogue websites."