It didn’t take long into the new year for a strange UDRP decision to be published and this time its the Trademark Holder that can complain.
Inter-Continental Hotels lost a UDRP on the domain name intercontinentalkabul.com.
Even more interesting is the domain name holder didn’t even respond to the UDRP
The decision doesn’t make much sense to me but I did find the following comment by the one member panelist to be most interesting:
“”Whatever else the Respondent may be it is not a typosquatter; nor is it using the Domain Name for a portal site; nor, in the view of the Panel, is it a typical cybersquatter.”
Here are some of the facts found by the panel
The Complainant (or a predecessor) licensed the hotel to use the trade mark INTERCONTINENTAL. The licence was terminated following the Russian invasion of Afghanistan in 1979 and since then the Complainant (and its predecessors) have had no association of any kind with the hotel.
The Domain Name was registered on March 23, 2005.
“”The Respondent’s hotel underwent a major refurbishment in the mid-2000s and, according to Wikipedia, is decorated to an international standard. In June 2011 the hotel was subjected to an attack by suicide bombers. The Complainant issued statements at the time informing interested parties that the Complainant had no association with the hotel.””
“”The Panel is of the view that the Respondent is unlikely to be the operator of the hotel and much more likely to be a website developer commissioned by the operator of the hotel. However, it seems to the Panel sensible that the practical realities be recognized and that principal and agent be treated as one. That is what the Panel proposes to do. For practical purposes therefore the term “Respondent” when used in this decision includes the operator of the hotel as well as the named Respondent.””
(No In don’t understand that paragraph either)
“”The Complainant makes out what appears on its face to be a strong case. Its InterContinental hotel brand has been well known internationally for many decades. It was well known in Kabul back in the 1970s when lawfully used in relation to the hotel from 1969 to 1979 prior to the Russian invasion of Afghanistan.”
“The Complainant has an Afghan trade mark registration pre-dating the registration of the Domain Name and the Respondent is using the Domain Name in relation to the services covered by the Complainant’s trade mark registration without the authority of the Complainant. The Panel agrees with the Complainant that the Respondent, which is engaged in the hotel industry, must at all material times have been aware of the existence of the Complainant and its internationally recognized brand.”
“Whether it will have been aware of the Complainant’s Afghan trade mark registration is another matter. There is no indication before the Panel that the Complainant has ever been in communication with the Respondent.”
“Clearly, the Respondent has a case to answer, but none has been provided.”
“The Respondent has not responded.”
“The Respondent and its predecessors have been trading under and by reference to the name “Hotel Inter-Continental [in] Kabul” for nearly 40 years, albeit only licensed by the Complainant to do so for the first 10 years.”
“The Panel does not know the name of the hotel operator, but that is neither here nor there.”
“The Panel in the present case is satisfied that the Respondent’s business, the Hotel Inter-Continental in Kabul, was commonly known by the name reflected in the Domain Name by the time the Respondent registered the Domain Name in 2005. ”
“The key issue for the Panel is whether that fact is to be ignored, notwithstanding the mandatory terms of paragraph 4(c) of the Policy, for the reason that the use of the name of the hotel had been unlicensed since 1979, when the Russians invaded Afghanistan.”
“”The Panel is satisfied that for many years the Respondent’s business has been commonly known in Afghanistan by the name “Inter-Continental Kabul”.””
“”Another puzzling aspect insofar as the Panel is concerned is what were the Afghan rights the Complainant had in the 24 years between 1979 (termination of the licence) and 2003 (date of the Complainant’s Afghan trade mark registration). Could the answer relate to why the Complainant has not sought to enforce such rights against the Respondent and/or its predecessors? “”
“Most puzzling of all is the apparent failure of the Complainant to have entered into any correspondence with the Respondent over the Respondent’s unauthorized use of its trade mark as the name of the hotel and, more recently, the use of the trade mark for the Domain Name.”
This is an excellent example of a panelist working alone and still taking his job very seriously. He thoroughly examined the case, and even in the absence of a Response, held the Complainant to the required threshold under the UDRP. The decision makes perfect sense to me, as it is a fundamental principle of the UDRP (traceable back to the original reports that formed the basis for the UDRP), that the UDRP is not intended to be a substitute for adjudication of trademark infringement claims before the courts. If the Complainant has trademark rights in Afghanistan, then that is where it ought to bring a trademark infringement proceeding if it feels it has a case. The UDRP is only meant to address simple cases of cybersquatting, not allegations of trademark infringement. Right on, Mr. Willoughby.
I’m sure this wasn’t necessarily an easy decision to make. Although it is a bit puzzling, I can understand why the panel would side with the current domain owner in the end. +1 for domain investors.
I agree it was a good decision. They were known by that name for 40 years.
I completely agree with Zak. You don’t see this type of well reasoned analysis often, especially in the absence of a response.
It’s often obvious how some trademark holders exploit the ease of UDRP filings with the same nonchalance as domainers exploit the ease of domain registration, neither paying any attention to relevant trademark law.
What did I-C Hotels do when the revoked their license to the I-C Kabul in 1979 and I-C Kabul kept using the name… for 30 years?
Filing UDRP’s is just really easy. Maybe too easy.
I agree with Zak and Yury, a well reasoned decision – as I would expect from Tony Willoughby.
Tony is the chair of the .uk panel of experts and (long ago) succesfully defended a small British business owned by a Mr Prince against a claim by the tennis equipment company that wanted Prince.com. He also once found the Queen to be a reverse domain name hijacker.
I have a lot of respect for Tony – and I am not just saying that because I have an appeal before him at the moment! 😉