Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2003/776.html
Cite as: [2003] DRS 776

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DRS 00776

Hilton International Co – v Hotel-Assist.com Limited

Decision of Independent Expert

1 Parties:
Complainant: Hilton International Co
Country: United Kingdom

Respondent: Hotel-Assist.com Limited
Country: United Kingdom

2 Domain Name:

HILTON-HOTELS-LONDON.CO.UK ("the Domain Name")

3 Procedural Background:

The Complaint was lodged with Nominet on 23 December 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 24 December 2002 and informed the Respondent that it had 15 days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in these circumstances, Nominet so informed the Complainant and on 23 January 2003 the Complainant's representatives paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 27 January 2003 Mr Clive Thorne, the undersigned, ("the Expert") was selected. He confirmed that he knew no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4 Outstanding Formal/Procedural Issues (if any):

Here is it convenient to deal with the consequences of the Respondent not having submitted a Response to Nominet in time (or at all) in compliance with paragraph 5 (a) of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").
Paragraph 15 (b) of the Procedure provides, inter alia, that "If in the absence of exceptional circumstances; a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to make the Decision on the Complaint."

There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.
Paragraph 15 (c) of the Procedure provides that: "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ….., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

What inferences would it be appropriate for the Expert to draw from the absence of a Response in this case? The Expert is conscious that Respondents may fail to respond for a variety of reasons. The reason may simply be that the Respondent has nothing useful to say in his defence, or it may be that he has not received the Complaint, perhaps because he is away and not in e-mail contact or perhaps because he has not kept his contact details with Nominet up-to-date.

Generally, the absence of a Response from the Respondent does not, in the Expert's View, entitle an Expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the next following section are indeed facts.
In many cases, as in this one, the principal disadvantage attached to failing to respond will be the loss of an opportunity for the Respondent to demonstrate, pursuant to paragraph 4 of the Policy, circumstances tending to show that the Domain Name is not an Abusive Registration. Where, as here, the Respondent has a case to answer (i.e. the Complainant has made out a prima facie case) and there is no answer, the Complainant must ordinarily succeed.

5 The Facts:

The Complainant is the well-known chain of hoteliers. It is the Proprietor of registered trade marks worldwide for the word "HILTON" or registrations in which the word "HILTON" is the dominant feature. The classes of registration include travel arrangements, travel and tour information and travel and tour ticket reservation services (Class 39) and hotels, accommodation and hotel reservation (Class 42).
At Annex 2 to the Complaint, the Complainant exhibits copies of the relevant trade mark registration certificates or trade mark registry database print-outs in respect of the following trademark registrations for the mark "HILTON":-
1. Community Trademarks 121343 and 121475 in Classes 16, 41 and 42.
2. UK Trademark 2165744 in Classes 16, 39, 41 and 42.
3. UK Trademark 2163597 in Classes 16, 39, 14 and 42 for the "H" device corporate logo.

The Complainant also has rights to the "HILTON" name elsewhere in the world. It has formed an alliance with Hilton Hotels Corporation, the owner of the Hilton name within the USA. Together they have a network of more than 2,000 hotels in 50 countries.
The Complainant has spent a substantial amount of money developing, advertising and promoting their hotels and related services throughout the world. As such, the Complainant enjoys extensive and widespread goodwill and repute in its trademarks worldwide. The Complainant asserts that the mark "HILTON" is one of the worlds best known trademarks for hotels and related services. The Complaint arises as a result of the Respondent registering the Domain Name "HILTON-HOTELS-LONDON.CO.UK" on 19 August 2002. In consequence of this the Complainant's solicitors Messrs Laytons wrote to the Respondents on 20 November 2002 complaining of trademark infringement and seeking a transfer of the Domain Name. This letter is exhibited at Annex 1 to the Complaint. It would appear that there was no response to that letter.

6 The Parties' Contentions:

Complainant:

The substance of the Complaint is as follows:-

6.1 The Complainant is the registered proprietor of the trademark "HILTON" and its H device logo as set out above. These trademark rights pre-date the Respondent's Domain Name registration. It is submitted that the Domain Name in dispute is identical to the trade mark "HILTON" save that the descriptive word "HOTELS" and the geographical location "LONDON" have been added to the trade mark. The Complainant points out that London is where many of the Complainant's world famous hotels are located including "The London Hilton on Park Lane", "Hilton London Hyde Park", "Hilton London Metropole", and "Hilton London Kensington".
6.2 The Respondent until 10 December 2002 used the Domain Name in dispute to direct Internet users to the Respondent's website at "londonhotels.co.uk" and other websites it operated including "hotel-assist.com", "hotel-uk.com" and "hotel-booker.com" where it allows Internet users to search and make bookings for hotels which have no connection with the Complainant.

6.3 Internet users who clicked on a link to a Hilton Hotel on the website operated at the "HILTON-HOTELS-LONDON.CO.UK." domain name were presented with a review of the hotel and the option to check availability or make an immediate booking. If they did so they were presented with a page which included the Complainant's H device logo.

6.4 At Annex 4 the Complainants appear to exhibit a copy of the Respondent's home page for the website it operated under the Domain Name in dispute until the 10 December 2002 as an example of the links provided in respect of one of the Complainant's hotels. In the Complaint the Complainant refers to Annex 4 as a copy of the "Complainant's home page". The Expert suspects that this is an error and considers that it should in fact be a reference to the Respondent's home page. The Expert proceeds on that basis.

6.5 The Complainant submits that the use of the Domain Name in this way creates the impression that the website was in someway sponsored, affiliated, endorsed or associated with the Complainant. It assets that the use of the Domain Name also takes unfair advantage of the Complainant's rights in the mark because it must be the intention of the Respondent to benefit from the use of a Domain Name which incorporates a mark in which the Complainant has established rights.

6.6 The Complainant also submits that Internet users who type in the Domain Name in dispute are almost certainly looking for a site operated by the Complainant, rather than the Respondent. It asserts that the Respondent is not known by the name nor is it legitimately connected with the mark "HILTON" and that the Complainant has neither licensed nor authorised the Respondent to use the mark. It also submits that the fact that the Respondent incorporated the Complainant's "H device" corporate logo on the page where Internet users could check availability or book increased the likelihood of Internet users believing that the website was in someway sponsored, affiliated, endorsed or associated with the Complainant.

6.7 The Complainant points out that at the time that it printed what became Annex 4 on the 10 December 2002 for the purposes of this Complaint it was apparent that the Respondent was deleting the website that it was operating. However at the time of making the Complaint no reply to the Complainant's solicitor's letter has yet been received.
6.8 In summary the Complainant submits that the Domain Name in dispute in the hands of the Respondent is an abusive registration.

Respondent

The Respondent has not responded.

7 Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy, on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark, identical or similar to the Domain Name in dispute and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
In this case the Complainant adduces evidence that the Complainant is the proprietor of registered trademark rights in the name or mark "HILTON". The Domain Name in dispute comprises the name or mark "HILTON" with the addition of the descriptive word "HOTELS" and the geographical description "LONDON". The Expert accepts the Complainant's contentions that with these descriptive exceptions the Domain Name is otherwise identical to the Domain Name in dispute. The Expert therefore finds that the Complainant has rights in respect of a name or mark which is identical to or similar to the Domain Name in dispute.
Abusive Registration
The Expert must consider the second limb of the Policy. Is the Domain Name in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:
"a Domain Name which either:-
(i) was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
(ii) has been used in a manner, which took unfair advantage of or was unfairly
detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 (a) of the Policy.

The Complainant relies on paragraph 3 (a) (i) B and C of the Policy which provides that factors which may be evidence that the Domain Name is an Abusive Registration include:-

"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. Primarily for the purpose of unfairly disrupting the business of the Complainant;"

The Complainant submits that the use which the Respondent has made of the Domain Name is such that the Respondent must have known of the existence of the Complainant and of its rights in the mark "HILTON" at the time it registered the Domain Name in dispute. It relies upon the evidence of use of the Domain Name in dispute to direct Internet users to the Respondent's websites.

In the absence of any evidence to the contrary from the Respondent the Expert accepts the Respondent's submissions and in particular the evidence that Internet users who clicked on a link to a Hilton hotel on the website operated by the Respondent using the Domain Name in dispute were presented with a page which displayed the Complainant's "H" device corporate logo. The Expert finds that this use is detrimental to the Complainant's rights because such use of the Domain Name creates the impression that the website is in someway sponsored by affiliated, endorsed or associated with the Complainant.

The Expert also accepts as is submitted by the Complainant that it must have been the intention of the Respondent to benefit from the use of a Domain Name which incorporates the Complainant's trademark rights. Internet users who type in the Domain Name are, as is put by the Complainant, "almost certainly looking for a site operated by the Complainant rather than the Respondent". In support of this view is the fact that there is no evidence that the Respondent is known by the name "HILTON" or in anyway legitimately connected with the mark "HILTON". The Complainant points out that the Respondent has not been licensed nor authorised to use the mark.

The Expert finds that the Respondent has registered or otherwise acquired the Domain Name "primarily for the purpose of unfairly disrupting the business of the Complainant within paragraph 3 (a) (i) C of the Policy. It is therefore unnecessary for the Expert to consider the Complainant's alternative submission that the Respondent's registration is a "blocking registration" within Paragraph 3 (a) (i) B of the Policy.

Given that the Respondent has not filed a Response the Expert considers it appropriate to comment upon paragraph 4 of the Policy. Paragraph 4 of the Policy is headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration." Ordinarily the onus is upon the Complainant to prove what needs to be proved to show evidence of abusive registration and it is open to the Respondent within paragraph 4 to demonstrate that the Domain Name is not an Abusive Registration. There is no evidence before the Expert which provides an answer to the finding of Abusive Registration and the Expert is not able to suggest a response within paragraph 4.

Accordingly the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place took unfair advantage of or was unfairly detrimental to the Complainant's rights.

8 Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name and the Domain Name in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name, "HILTON-HOTELS-LONDON.CO.UK" be transferred to the Complainant.

CLIVE D THORNE

12 February 2003