No vacancy: hotel giant tries (and fails) to hijack domain name

The Indian Hotels Company Limited (IHC) has owned and operated hotels in India since 1902.

In 2016, Mr Roger Price, an individual unrelated to IHC, purchased the domain name (Domain) from an open auction for $1,260.00 (USD). Mr Price used the Domain to promote hotel bookings as an affiliate for Booking.com (for which he received a fee).

Upon registering the Domain, Mr Price became bound to the terms of the Uniform Domain-Name Dispute-Resolution Policy (Dispute-Resolution Policy).

Subsequently, IHC became interested in obtaining the Domain from Mr Price.

Relying on the terms of the Dispute-Resolution Policy, IHC applied to the WIPO Arbitration and Mediation Centre for an order that the Domain be transferred from Mr Price to IHC.

Although IHC did not own a registered trade mark for “Indian Hotels”, it sought to rely on “common law” trade mark rights.

To succeed in its claim, the IHC had to persuade the appointed panellists that:

  • the Domain was identical or confusingly similar to a trade mark in which IHC had rights;
  • that Mr Price had no rights or legitimate interest in respect of the Domain; and
  • the Domain was registered and used in bad faith.

The decision

IHC could not establish that “Indian Hotels” was a “distinctive identifier” associated with its goods and services.

Although incorporated as “The Indian Hotel Company Limited” since 1902, IHC traded under the names “TAJ group of Hotels” and “TAJ Hotels Palaces and Resorts”. It was only in 2018 (at the same time it became aware of Mr Price’s registration of the Domain) that IHC started using “Indian Hotels” in its marketing. 

Further, Mr Price used the Domain to promote hotel bookings (in India). Accordingly, his claim to the Domain (and the use of the words “Indian Hotels”) was legitimate, and not in bad faith.

The Panellists found that IHC’s case was largely grounded on conclusory submissions, with no supporting evidence. The evidence that IHC did provide counted against its case, as it proved that it had not used “Indian Hotels” as a trade mark during the relevant time.

Accordingly, IHC’s claim failed, and the panellists declared that IHC had abused the proceeding and engaged in reverse domain name hijacking.

Lavan comment

The Dispute-Resolution Policy strikes a balance between the interests of trade mark holders, and those of registrants.

If a registrant obtains a domain name in bad faith, and with no legitimate interest in the same, the Dispute-Resolution Policy will permit an aggrieved party to apply for a transfer.

However, if a groundless claim is brought, panellists may declare that the complainant has engaged in reverse domain name hijacking.

The declaration has not real practical effect besides disclosing the complainant’s improper conduct to the public.

With the benefit of hindsight, IHC could have purchased the Domain long before Mr Price ever registered ownership. As this case shows, once you miss an opportunity to obtain a domain name, you may be out of luck.

If you require advice in relation to domain names, or your trade mark rights, do not hesitate to contact Iain Freeman or Andrew Sutton.