South African Hotel Reservation Company Claims The Leading Hotels of the World Conducting Effort to Prevent Use of Their Domain Name
|November 2003 - In 1998, the company The Leading
Hotels of the World applied for registration of the trademark THE LEADING
HOTELS OF THE WORLD in respect of hotel services in South Africa. Online
Travel Group, a South Africa based company, are opposing the South African
application on the basis that the trademark is not distinctive. The matter
will be set down for hearing within the next two months.
Online Travel Group (http://www.leadinghotels.com/), who offer online hotel reservation services worldwide, registered the domain name leadinghotels.com in early 1997.
The website became operational that same year.
According to Online Travel Group, since 1998, The Leading Hotels of the World have conducted a concerted campaign to interfere with or to prevent Online Travel Group from using the domain name leadinghotels.com.
In April 2002, in an attempt to obtain the domain name, Leading Hotels of the World initiated proceedings through the World Intellectual Property Organization. They lost the proceedings when the WIPO panel ruled in favor of Online Travel Group, stating that "...the phrase 'leading hotels' is highly descriptive, is not distinctive, thus on its own would not be capable of acting as a trademark". Furthermore, the WIPO administrative panel did not find that Online Travel Group were operating in bad faith, nor did it find that the company registered the domain name to prevent The Leading Hotels of the World from using its mark in a domain name. It was found that use of the domain name by Online Travel Group had always been bona fide and had always been used legitimately in connection with the development and expansion of the company's online hotel reservation services.
Earlier this year, The Leading Hotels of the World demanded that World Choice Travel, the company through which Online Travel Group obtain their hotel data, block all member hotels of The Leading Hotels of the World from the data supplied to Online Travel Group, despite having no legal right to do so and regardless of WCT's contractual obligation to Online Travel Group to supply this data. World Choice Travel conceded on the basis that The Leading Hotels of the World are an important supplier of inventory and that they did not want to damage their relationship with the company.
The LHW has successfully registered trademarks in several countries. However, in 2000 an application to register the trademark in New Zealand was refused. The Examiner did not accept the applications on the ground that the marks were not eligible under ss14 and 15. Ms Sian Roberts, Assistant Commissioner of Trade Marks held that the words THE LEADING HOTELS OF THE WORLD were so likely to be used for general description that even if extensive evidence of use were supplied, it would be difficult to justify granting a monopoly in the mark. Both South Africa and New Zealand fall under British Commonwealth Law.
WIPO ARBITRATION -
NEW ZEALAND RULING -
COWAN LIEBOWITZ & LATMAN
|Also See:||Las Vegas Sands, Inc.(Venetian Resort-Hotel-Casino) Wins Web Site Domain Name Dispute / December 2001|
|MeriStar the Company that Owns the Doral Name for Use in the Hospitality Industry, in Trademark Dispute / August 2003|