ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Inter-Continental Hotels Corporation v. NOOR Advanced Technologies
Case No. D2011-1140
1. The Parties
The Complainant is Inter-Continental Hotels Corporation, of Atlanta, Georgia, United States of America,
represented by The GigaLaw Firm, of Atlanta, Georgia, United States of America.
The Respondent is NOOR Advanced Technologies, of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <continentalhurghada.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2011.
On July 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in
connection with the disputed domain name. On July 8, 2011, GoDaddy.com, Inc. transmitted by email to the
Center its verification response confirming that the Respondent is listed as the registrant and providing the
contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform
Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules,
paragraph 5(a), the due date for Response was August 1, 2011. On July 17 and 19, 2011, the Center
received email communications from the Respondent. Accordingly, the Center notified the parties about the
commencement of the panel appointment process on August 2, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 9, 2011. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
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4. Factual Background
The facts relevant to the findings and decision in this case are that:
The Complainant provides accommodation and hotel services around the globe under the registered trade
mark INTERCONTINENTAL.
The Complainant operates a hotel under the name INTERCONTINENTAL in Hurghada, Egypt.
The disputed domain name was registered on November 23, 2009.
There has been no commercial or other relationship between the parties.
At the time the Complaint was filed, a website corresponding with the disputed domain name promoted the
services of a hotel in Hurghada named “Continental Resort Hurghada”.
The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to
the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant asserts trade mark rights in INTERCONTINENTAL and alleges that the disputed domain
name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain
name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
In particular, it is alleged that until 2009 the hotel, now operated under the name “Continental Resort
Hurghada”, was part of the Complainant’s group of hotels and traded under the name “InterContinental
Hurghada Resort & Casino”.
B. Respondent
The Respondent made certain enquiries of the Center and asserted its good faith intentions in emails which
may or may not be properly regarded as a Response to the Complaint but, for the reasons which follow, the
determination of that issue has no ultimate bearing on the Decision and the Panel makes no findings in that
regard.
All that need be recorded here is that the Respondent asserted it’s bona fide on the basis that it had merely
registered the disputed domain name as an agent and service provider for another party who was
responsible for the website content associated with the domain name and referred to herein.
The Center pointed out that Respondent was the registrant of the disputed domain name according to
publicly available WhoIs information and that it was with the Panel to draw any different inferences or
conclusions. Again, for reasons which follow, it is unnecessary for the Panel to decide whether another party
might be the author of the website content and the Panel treats the named Respondent as the proper party
in these administrative proceedings.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i)
the disputed domain name is identical or confusingly similar to a trade mark or service mark in which
the Complainant has rights; and
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(ii)
(iii)
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
the disputed domain name has been registered and is being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a
complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is
identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights.
It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the
purposes of the Policy1. The Panel finds that it has trade mark rights in the term INTERCONTINENTAL
acquired through registration2.
The remaining question is whether the disputed domain name <continentalhurghada.com> is confusingly
similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic toplevel domain “.com” can be ignored.3 Countless earlier decisions under this Policy have held that the
addition of a non-distinctive integer to a complainant’s trade mark does little or nothing to avoid confusion. In
particular, former panelists have decided that the addition of a geographical placename to a complainant’s
trade mark will generally be of no source distinguishing value and will not obviate a finding of confusingly
similarity4.
This Panel endorses those general principles and determines that the essential comparison in this case is
that of the terms “intercontinental” and “continental”5.
The Complainant relies on both its reknown and on the website content at the place to which the disputed
domain name resolves in support of its assertion that there is confusing similarity but this Panel is content
1
See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s
registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the
STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No.
FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office
establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2
See, by way of one example only, United States Trademark Registration No. 890,271 for the word mark INTERCONTINENTAL
issued April 28, 1970.
3
See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of
every domain name.”).
4
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at 1.9:
http://www.wipo.int/amc/en/domains/search/overview2.0/1.9
5
Although it might be argued by some that the compared terms should be INTERCONTINENTAL and CONTINENTAL
HURGHADA, the Panel rejects that approach since it presupposes the Complainant’s reputation. Reputation is not properly to
be considered under paragraph 4(a)(i) of the Policy: see Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253, holding
that “The question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in
question might enjoy, the domain name and the trademark have confusing similarity.” Equally, any bad faith which might exist
or might be inferred from the evidence based on the Complainant’s prior trading activities in Egypt are irrelevant to
determination of this aspect of the policy.
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that neither of those factors are of dispositive relevance in the assessment of confusing similarity under
paragraph 4(a)(i) of the Policy6, in circumstances such the present in which the disputed domain name
incorporates only the second part of the term “inter continental”.
This Panel does not find the terms “continental” and “intercontinental” to be confusingly similar. The word
“continental” is not simply an attenuated form of the Complainant’s trade mark. It has an ordinary and
commonly understood word in the English language. It might be used in a variety of contexts and by a
number of traders7. Although there is a connection at one level between the words “continental” and
“intercontinental” insofar as it is grammatically and semantically appropriate to choose to use the prefix
“inter” before the word “continental”, that is insufficient in the opinion of this Panel to render the terms
confusingly similar for the purposes of the Policy.
It is not apparent to this Panel that the Complainant’s INTERCONTINENTAL trade mark is distinguishable as
such within the disputed domain name, and there appears to be little evidence of record to indicate the
“continental” component of Complainant’s INTERCONTINENTAL trade mark has acquired renown as a mark
on its own terms.
The Panel finds in these Policy proceedings that the disputed domain name <continentalhurghada.com> is
not confusingly similar to the Complainant’s INTERCONTINENTAL trade mark and so finds that the
Complainant has not established the first limb of the Policy.
B. Rights or Legitimate Interests
No findings required8.
C. Registered and Used in Bad Faith
No findings required.
7. Decision
Having failed to establish at least one of the three elements required under the Policy for the foregoing
reasons, the Complaint is denied.
Debrett G. Lyons
Sole Panelist
Dated: August 22, 2011
6
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at 1.2 which asks: What is the test
for identity or confusing similarity, and can the content of a website be relevant in determining this? :
http://www.wipo.int/amc/en/domains/search/overview2.0/1.2
7
As is evident by a simple Google search which reveals use of the term by companies providing goods and services as disparate
as airline transportation, soups and hot beverages, and rubber tyres.
8
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant
must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the
remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006)