Hilton Worldwide Manage Ltd. v. Burak Yılmaz
Claim Number: FA2208002010137
Complainant is Hilton Worldwide Manage Ltd. (“Complainant”), represented by Sarah H. Parker of Alston & Bird LLP, Georgia, USA. Respondent is Burak Yılmaz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hiltontur.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Aaron B. Newell as Panelist.
Complainant submitted a Complaint to Forum electronically on August 29, 2022; Forum received payment on August 29, 2022.
On August 30, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <hiltontur.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hiltontur.com. Also on August 31, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 20, 2022, however the Response was deemed deficient. The Response was written and filed in Turkish with no translation. The language of the proceedings is English. Respondent filed no obvious argument as to why its Turkish-language submissions should be accepted or as to why it could not file submissions in English. Panel has generated a machine translation of Respondent’s Response and relies on this where unequivocal as to its meaning. Further, Complainant has addressed the Response as if validly filed, and filed a second submission in reply on 25 September 2022. Panel considers that it should admit the Response to the extent that its meaning is clear and unequivocal from the machine translation and, in turn, admit the Complainant’s reply given that it contains probative information that assists the Panel with is consideration of the Complaint.
On 30 September 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Aaron B. Newell as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant states as follows:
i) it uses the well-known trade mark HILTON around the world for hotel and related goods and services, and has used this mark since at least as early as 1925;
ii) it owns numerous trade mark registrations for or containing HILTON in over one hundred countries around the world, including in Turkey where the Respondent resides;
iii) there are currently more than 596 HILTON-branded hotels in 93 countries around the world, eleven of which are in Turkey, including a property that has been in operation in 1955, has hosted celebrities and royalty, and has appeared in a James Bond film;
iv) the domain name hiltontur.com includes Complainant’s HILTON name and the word “tur”, which is Turkish for “tour”;
v) Respondent uses the domain name to promote a for-profit travel agency and hotel booking website;
vi) Complainant has opposed a trade mark application in Turkey filed by Complainant that contained HILTON TUR and claimed services including arranging of tours, travel reservation and related services;
vii) Respondent uses the domain name to lure Internet users to his website by mistake to generate profit through services that book hotel stays with Complainant’s direct competitors;
viii) the domain name is confusingly similar to HILTON;
ix) Respondent is not authorized by Complainant to use the HILTON trade mark and has no legitimate interest in the domain name, and is not making any legitimate non-commercial use of the domain name, as it is being used to load a website for a for-profit travel and accommodation booking service;
x) it is inconceivable that Respondent could have registered the domain name without knowledge of the Complainant;
xi) Respondent has registered the domain name to trade on the well-established consumer recognition and goodwill of the Hilton mark and therefore has registered and used the domain name in bad faith.
B. Respondent
Subject to the limitations of the machine translation, Respondent states as follows:
i) it offers a bona fide service as a trave club community and has done so under the HILTONTUR name since 2019;
ii) it offers a quality service using quality partners;
iii) there is no possibility of confusion between Respondent’s booking and travel agency services and Complainant’s hotel services;
iv) it has no malicious intent towards Complainant.
C. Additional Submissions
Complainant filed an additional submission. The key points are:
i) Respondent does not deny that it was aware of Complainant at the time that it registered the domain name;
ii) Respondent does not deny the similarity between the domain name and HILTON;
iii) Respondent admits that it is deriving profit from its use of the HILTON name;
iv) the Turkish trade mark office rejected Respondent’s HILTON TUR-formative trade mark application for, inter alia, arranging of tours, travel reservation following Complainant’s opposition.
The Panel finds:
i) the domain name was registered 8 December 2020;
ii) Complainant has prima facie valid registered trade mark rights in the word HILTON and has used this name since long before the registration of the domain name, such that the name has became one of the most internationally well-known brands in respect of hotel accommodation;
iii) Complainant has at all material times had a strong international reputation in the HILTON name, including in Turkey which is the location of Respondent;
iv) the parties are not affiliated in any way, and Complainant did not authorize Respondent’s use of the HILTON name;
v) the parties both operate in the tourism industry in Turkey;
vi) Respondent has industry knowledge of the Turkish tourism industry including in respect of hotels that operate in Turkey. It operates a tourism-focused hotel reservation business under the domain name, and obviously this business relies on Complainant having a degree of industry knowledge in the sector.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The domain name contains the Complainant’s well-known HILTON name in its entirety and as the dominant element of the domain name.
The inclusion of TUR does not distinguish the domain name from the HILTON name. Rather, there is a likelihood that it reinforces a connection with the Complainant given that TUR translates to “tour” which is a term that relates directly to the tourism, hospitality and holiday sectors in which the Complainant is well-known.
The domain name is accordingly confusingly similar to a name in which the Complainant has rights.
The Complainant must raise a prima facie case that Respondent lacks rights and a legitimate interest in the domain name. If the prima facie case is made out, Respondent must rebut and demonstrate its rights or legitimate interests.
Complainant notes, and the Panel agrees, that it is inconceivable that Respondent was unaware of Complainant’s well-known HILTON name at the time that it registered the domain name.
Further, the Panel finds that, on the balance of probabilities, the Respondent adopted the domain name in order to benefit from Complainant’s goodwill and reputation and did so despite not being authorized by Complainant to use the HILTON name, and despite having not affiliation or other commercial connection with Complainant.
Respondent does not deny any of the Complainant’s assertions in this regard, nor does it deny that it uses the domain name to market and sell services that compete with those of Complainant.
Whatever interest Respondent may have in the domain name, it cannot in the circumstances be said to be legitimate. Respondent is using Complainant’s identical HILTON name in competition with Complainant.
Again, Respondent is using Complainant’s identical and internationally-recognized name to offer and promote services that compete with Complainant’s business, and is doing so for profit.
Panel finds that by registering and using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of association with the Complainant’s mark, or a likelihood of confusion with the complainant’s mark in respect of the source, sponsorship, affiliation, or endorsement of the respondent’s business as marketed and promoted on its website.
This same conduct is one of the non-exclusive examples of bad faith use and registration set out under UDRP paragraph 4(b).
Accordingly, Panel finds that the domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hiltontur.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, Panelist
Dated: October 17, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page