In a decision last week, the World Intellectual Property Organisation (WIPO) upheld a bulk complaint by joint complainants Inter-Continental Hotels Corporation and Six Continents Hotels - both subsidiaries of the InterContinental Hotels Group - against a German individual who held 1,519 domain names which were found to contain terms which were the same, or very similar to, trade marks owned by the hotels, and which falsely appeared to be associated with the hotels.

ICANN's Uniform Domain Resolution Policy ("UDRP") allows for a single decision on many disputed domain names, if they are all held by the same person. The rules also permit multiple complainants to bring cases together against a domain name holder if they are related or have a common interest in the case. This case was identified as a "text book example" of the kind of case to which the UDRP is having to adapt to keep pace with developments and trends within the domain name system.

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In a decision last week, the World Intellectual Property Organisation (WIPO) upheld a bulk complaint by joint complainants Inter-Continental Hotels Corporation and Six Continents Hotels - both subsidiaries of the InterContinental Hotels Group (IHG) - against a German individual who held 1,519 domain names which were found to contain terms that were the same, or very similar to, trade marks owned by the hotels, and which falsely appeared to be associated with the hotels.

For an order to be made for the transfer of a domain name, a complainant must demonstrate that:

  • the domain name is identical to, or confusingly similar to, terms to which it has rights;
  • the current owner has no rights to the domain name; and
  • the domain name was registered, and is being used, in bad faith.

The respondent, Daniel Kirchhof, was found to hold some 70,000 domain names, and of those in dispute (1,542), the majority contained clear references to trade marks and locations of the hotels' businesses (such as holiday-inn-swindon.com). These websites were designed in such a way that an internet user would be likely to believe that they had arrived at an official website for one of the complainants' hotels. However, they actually linked through to other websites offering bookings at IHG as well as alternative accommodation in rival hotels at the same locations.

The WIPO panel found that "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", and that "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 WIPO panel also agreed with the complainants' assertions that the very fact that the respondent owned so many domain names that operated in this way was evidence, in and of itself, that he was acting in bad faith.

ICANN's UDRP allows for cases such as this (i.e. one case settling many disputes), if the same person holds all the domain names. The rules also permit multiple complainants to bring cases together against a domain name holder if they are related or have a common interest in the case. In this case, the WIPO Panel said that, despite the extremely large and unprecedented number of domain names at issue, it would be procedurally efficient to deal with all matters in one proceeding. Indeed, this case was identified as a "text book example" of the kind of case to which the UDRP is having to adapt to keep pace with developments and trends within the domain name system.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 05/02/2010.