WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services LLC
Case No. D2007-0829
1. The Parties
Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management, L.P., New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Services LLC, Roseau, Dominica.
2. The Domain Names and Registrar
The following disputed domain names are registered with Moniker Online Services LLC:
.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2007. On June 8, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On June 8, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the domain names under dispute 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”), 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 Respondent of the Complaint, and the proceedings commenced on June 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2007.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 16, 2007. 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.
4. Factual Background
The first Complainant is Starwood Hotels & Resorts Worldwide, Inc., a company with a strong presence in the hotel and vacation market and has as subsidiaries The Sheraton LLC, Sheraton International, Inc. and Westin Hotel Management, L.P., entities that are also Complainants in this procedure.
Complainants’ brands such as Sheraton, Westin, Le M�ridien, St. Regis, The Luxury Collection, A Loft, Element and others are known by the offer of services in the lodging industry. Complainants have approximately 266,000 rooms located in 100 countries around the world.
The expressive presence of Complainants in the hotel and leisure industry was achieved with years of investments that started in 1928 with the introduction of the Sheraton brand in the market and, later, the introduction of the brand Westin.
Complainant’s expansion strategy resulted in the construction and marketing of 275 hotels worldwide, promoting the wide-knowledge of the marks in the market.
Complainants have several registers for the trademarks above in several countries, including United States of America, as shows the list below:
Federal trademark registrations issued by the United States Patent and Trademark Office:
Trademark
Class(es)
Registration No.
Registration Date
SHERATON
42
679027
May 19, 1959
SHERATON
42
1784580
July 27, 1993
SHERATON
16
954454
March 6, 1973
SHERATON SUITES
42
1493704
June 21, 1998
WESTIN
42
1320080
Feb. 12, 1985
WESTIN HOTELS & RESORTS (and Design)
42
1428848
Feb. 10, 1987
WESTIN
41
1720799
Sept. 29, 1992
Finally, Complainants also owns numerous domain names containing the marks SHERATON and WESTIN, such as , , , and .
5. Parties’ Contentions
A. Complainant
Firstly, Complainants argue that Respondent is using the infringing domain names , , , , and to promote the advertisement of entities which have no relation to Complainants by providing a hotel and car rental search engine that shows as result a list of several links for web pages of Complainant’s competitors. This same conduct is present on the page related to the domain name , which leads the internet user to another web page containing sites offering hotel booking.
In connection with the domain names , , , , , , and , Complainants affirm that Respondent is using the above mentioned domain names to reroute the users to other pages with search engines or links related to lodging business, some of them belonging to Complainants’ competitors.
Additionally, Complainants affirm that Respondent is a recurrent cybersquatter, which has been part in other seven domain name dispute proceedings regarding other famous marks, and also that Respondent owns 132 domain names that are mostly composed by the imitations of other well-known marks.
Complainants state that the domain names under dispute are confusingly similar to their registered trademarks in view of the fact that all of them reproduce partially or integrally Complainants’ trademarks, and that the addition of non-distinctive words or the practice of typo squatting cannot represent a significant difference to avoid confusion by internet users.
Complainants point out that Respondent has no legitimate interest or rights in the infringing domain names since he has never received any license or consent from Complainants to use their trademarks as domain names.
Complainants indicate the presence of bad faith in connection with Respondent’s conducts since he could not be unaware of the fame of Complainants’ trademarks, and even if he was unaware he should have searched on Whois database for colliding domain names. Complainants also mention that Respondent’s conduct of using the domain names under dispute to redirect users to other commercial sites proves that Respondent aims to gain profit from the “click-through” from one page to another.
As a final remark, Complainants affirm that Respondent’s bad faith is proved by its option of combining a geographical indicator and Complainants’ trademarks, in view of the fact that said practice is common in the hotel industry.
B. Respondent
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy Complainants must prove each of the following:
(i) that the domain names registered by Respondent are identical or confusingly similar to the trademarks or service marks in which Complainants have rights;
(ii) that Respondent has no rights or no legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are used in bad faith.
A. Identical or Confusingly Similar
The domain names registered by Respondent and discussed herein include, with no exception, one or other of Complainants’ widely-known trademarks SHERATON or WESTIN. The addition of geographic indicators, non-distinctive words or misspellings to said trademarks are not enough to avoid internet users’ confusion between Complainants’ widely-known services and the disputed domain names.
For that reason, the Panel finds that domain names , , , , , , , , , , , , , and are confusingly similar to Complainant’s registered trademarks SHERATON and WESTIN and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Respondent registered the domains names in a period between the years of 2002 and 2005, therefore, a long time after Complainant registered and started making commercial use of the trademarks SHERATON and WESTIN. Complainant’s indicates that it has not authorized or entered into any relationship with Respondent in relation to use of its SHERATON and WESTIN trademarks. Respondent has not sought to demonstrate any rights or legitimate interest in the disputed domain names. The Panel finds in the circumstances that Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It has been proven to the Panel’s satisfaction that Complainant’s trademarks SHERATON and WESTIN are well-known in many countries, and the Panel accepts that Respondent could not reasonably ignore the marks high reputation of the hotel services they identify. The fact that Respondent’s conduct was willful and in bad faith is also evidenced by the large number of domain names registered containing Complainant’s trademarks and by the offer under said domain names of services similar to those rendered by Complainant.
It has been proven that in the websites in operation under the disputed domain names Respondent hosts “link farms”, i.e., lists of sponsored links, which in the circumstances amounts to unduly taking advantage of the well-known nature of Complainant’s mark to attract more internet users and generate revenue presumably to Respondent’s benefit in the form of “pay per click”.
In this sense, there is little doubt that Respondent intended to earn profit from the confusion created in internet users, which believes to be accessing Complainant’s websites. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177:
“Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant’s trademark.”
Another interesting point that should be noted is the fact that Respondent has also been party in eight other procedures and the disputed domain names were transferred to the complainant in all of them, which indicates that Respondent is an habitual infringer of third parties’ rights through the registration of domain names (see Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Services LLC, WIPO Case No. D2007-0524; ITT Corporation, Goulds Pumps, Incorporated v. Services LLC, WIPO Case No. D2007-0387; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; Associated Banc Corp. v. Services LLC, WIPO Case No. D2007-0335; Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC, WIPO Case No. D2007-0169; Rapaport USA, Inc. v. Registrant [230341] Moniker Privacy Services and Registrant [499481] Services LLC, WIPO Case No. D2007-0136; Authorize.Net Corporation v. Services LLC, WIPO Case No. D2007-0021; A.G. Edwards & Sons Inc. v. Services LLC, WIPO Case No. D2006-1651).
Thus, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. The Panel therefore, concludes that Complainant has proven Respondent’s bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , , , , , , , , , , , and be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: August 30, 2007
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