WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter
Case No. D2007-1254
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc., White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Jake Porter, Atlanta, Georgia, United States of America.
2. The Domain Names and Registrar
Three Domain Names are disputed:
Each of the Domain Names is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2007. On August 28, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 30, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 the Respondent of the Complaint, and the proceedings commenced on September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. The Response was filed with the Center on September 24, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 1, 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.
The Complainant subsequently submitted a Reply on October 5, 2007, and the Respondent submitted a Response to the Reply on October 10, 2007.
4. Factual Background
The Complainant Starwood Hotels & Resorts Worldwide, Inc. (“Starwood”) is a hotel and leisure company incorporated under the laws of the State of Maryland. It owns, operates, and franchises hotels and resorts under several brands, including some thirteen ST. REGIS luxury hotels and resorts. Some of the ST. REGIS properties include condominium residence units that can be purchased wholly or on a fractional time-share basis.
A related Complainant, The Sheraton LLC, is a Delaware limited liability company. This Complainant is shown as the current owner of record of the United States registered trademarks at issue.
The third Complainant, also affiliated with the other two Complainants, is Sheraton International, Inc., a Delaware corporation. It holds the Community Trademark for the ST. REGIS mark in the European Union, as well as the United Kingdom registered trademark listed below.
The Complaint is grounded on the following registered, standard-character trademarks:
MARK
REG. NO.
REG. DATE
FIRST USE IN COMMERCE
THE ST. REGIS
US 1897870
June 6, 1995
Sep. 1904
THE ST. REGIS LIBRARY LOUNGE AND RESTAURANT
US 2757310
Aug. 26, 2003
May 22, 2002
ST. REGIS
US 2893705
Oct. 12, 2004
Jan. 2004
ST. REGIS RESIDENCE CLUB
US 2991460
Sep. 6, 2005
Jan. 2004
ST. REGIS
CTM 743880
July 5, 1999
N/A
ST. REGIS
Madrid 901786
Aug, 16, 2006
N/A
ST. REGIS
UK 2029625
June 13, 1997
N/A
The Complainant Starwood operates a website advertising its ST. REGIS hotels at “.” which is also linked from its principal website at “”. The Complainant Starwood operates, in addition, two websites that feature a single ST. REGIS property, using domain names that indicate the location of the hotel: “” (Aspen, Colorado) and “” (Monarch Beach, California).
On November 16, 2005, the Complainant Starwood issued a press release announcing its plans to build a five-star ST. REGIS hotel with 150 rooms and 50 condominium residence units in Buckhead Plaza, Atlanta, Georgia. This development has been repeatedly publicized in Atlanta-area advertising and media reports since the initial announcement.
The Respondent is an individual in Atlanta, Georgia. The Respondent characterizes himself as an “Internet developer, entrepreneur, established HOA [homeowners association] blogger and direct navigation provider.” He states in his supplemental filing that he owns more than 100 domain names, which he typically points to a domain parking website with pay-per-click advertising links until he sells the domain name or develops a corresponding website.
The Respondent registered the Domain Names and on January 17, 2006, and the Domain Name on July 25, 2006. The Domain Names were registered through the Registrar’s domain privacy service, so the Respondent’s name was not disclosed until the Complainants contacted the Registrar concerning this dispute.
The Domain Names all currently resolve to a page on the Respondent’s website at “,” discussed below. The record shows that before July 2007, however, the Domain Names all resolved to essentially identical “domain parking” websites operated by domain reseller S, LLC (“Sedo”) at “.” The Domain Name appeared at the head of each page, followed by the notation, “This domain may be for sale by its owner!” Text in the right-hand frame under the heading “Buy this domain” notified visitors that the owner of the domain “is offering it for sale for an asking price of 2000 $US!” in the case of ; the asking price was $3000 for each of the other two Domain Names.
Sedo’s website at “www.s” claims an inventory of over 8 million domain names, 3 million of which are directed to parking websites hosted by Sedo “to earn revenue while promoting [their] sale.” As Sedo explains on its website, “The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements, you earn money.” Domain name owners using Sedo’s pay-per-click parking program may select the page layout and graphic images from Sedo’s catalogue. The domain name owner may also choose advertising keywords or categories. Sedo’s “self-optimization tools” use these to search the online affiliate advertising networks of partners such as Google, with the aim of automatically displaying potentially relevant, sponsored advertising links on the parking website. The parking website also includes a search box, in which a site visitor may type a search query. In that case, Sedo’s software automatically retrieves and displays advertising links that are potentially relevant to the specific query, rather than the selected keywords or category. Monthly pay-per-click revenues from advertisers are split between Sedo and the domain name owner, in amounts varying not only according to the number of “clicks” on advertising links but also according to the rates that merchants and intermediate advertisers have agreed to pay under their respective affiliate advertising agreements with Sedo or its partners.
Consistent with Sedo’s described practices, printouts of the Sedo parking websites to which the Domain Names formerly resolved show that they each displayed a list of “sponsored results,” third-party advertising links generated by Sedo’s advertising search engine. Printouts furnished by the Complainants show that some of these displayed links were for hotels that may compete with the Complainants’ ST. REGIS hotels, or for hotel search websites that include advertisements for competing hotels and hotel chains.
According to Sedo’s statistical data, furnished by the Respondent, the Domain Names attracted only 0 to 20 visitors per month. The Respondent reports that click-through advertising revenues never covered his costs for the Domain Names. The Respondent indicates that Sedo deactivated his parking pages not long after the Complainants communicated their trademark claims at the end of May 2007.
By July 2007, then, the Domain Names no longer resolved to parking pages but to the Respondent’s own website at “” (the “CondoG” website). The Respondent controls a Georgia limited liability company, CondoG LLC, which was registered in January 2007. His “” website publishes news, blogs, and advertising directed to residents (or potential residents) of condominium developments in several metropolitan areas in the United States and Canada.
One of the pages on this website advertises the “beta version” of the Respondent’s “Community Tools” software, described as collaboration tools for the managers and members of homeowner associations (commonly termed “HOAs”). The Respondent states that he has been developing this HOA management software since May 2006. He released the beta version for public testing on the “” website on July 4, 2007, as reflected in an announcement with that date on the CondoG website.
All three Domain Names currently resolve to a “St. Regis HOA” page on the Respondent’s “” website. This page allows users to “start collaborating for free!” by using the Respondent’s “Community Tools” software. Users may post repair or maintenance tickets, rental permit requests, club room reservation requests, and suggestions for the HOA board of directors. There is no evidence in the record that the St. Regis HOA or residents have used the Community Tools or posted any content or communications on the website. The only listed Community Tools “task” is a test issue recently created by the website administrator (presumably the Respondent).
The Complainants’ counsel sent a cease-and-desist letter dated May 29, 2007 to the Registrar concerning the Domain Name . The Registrar promptly informed the Respondent, who replied by email to the Complainants’ counsel on May 31, 2007, denying any trademark infringement or violation of the Policy and pointing to numerous other uses of the name “St. Regis,” including the St. Regis HOA in Atlanta. The Respondent concluded by advising the Complainants, “If you still dispute this matter, please initiate a UDRP hearing.” Three months later, the Complainants did so.
5. Parties’ Contentions
A. Complainants
The Complainants argue that the Domain Names are confusingly similar to its well-established ST. REGIS trademarks, and that the Respondent’s stated reasons for selecting the Domain Names are spurious.
The Complainants argue that their marks are famous and infer bad faith from the timing of the Domain Name registrations, shortly after the Complainants announced plans to build a ST. REGIS hotel and residences in the Buckhead district of Atlanta. The Complainants also find signs of bad faith in the Respondent’s offering the Domain Names publicly for sale, using them for advertising (including advertisements by the Complainants’ competitors), and registering the Domain Names through a registration privacy service to avoid disclosure of the Respondent’s name in the Registrar’s WHOIS database.
B. Respondent
The Respondent argues that the ST. REGIS name is not exclusively or primarily associated with the Complainants and offers an alternative explanation for his registration and use of the marks as mentioned above, thus asserting a legitimate interest in the Domain Names and good faith in registering and using them.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Multiple Complainants
Three Complainants are named in the Complaint. Neither the Policy nor the Rules expressly contemplates multiple complainants, and some panels have rejected complaints filed in the name of more than one complainant on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. In other cases, panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.
A UDRP proceeding must be predicated on a trademark or service mark in which a complainant has rights pursuant to paragraph 4(a)(i) of the Policy. The Complainant Starwood uses in its business several trademarks owned by the Complainants The Sheraton LLC and Sheraton International, Inc., respectively. Thus, each Complainant manifestly has an interest in the marks.
The Complaint does not detail the nature of the affiliation or licensing arrangements among the Complainants, but allowing all three companies to appear as Complainants is unlikely to result in prejudice to the Respondent. Therefore, the Panel accepts the Complaint as submitted. However, any order directed to the Registrar will, in the interest of avoiding confusion, refer only to the Complainant Starwood, the party that makes use of each of the marks on which the Complaint is grounded.
B. Supplemental Filings
The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The parties’ Supplemental Filings (the Complainants’ Reply and the Respondent’s Response to the Reply) largely repeat arguments made in the initial submissions, but they also include additional evidence on disputed facts. The Panel does not find that the Supplemental Filings have caused undue delay or prejudice, and the Panel accordingly accepts the Supplemental Filings for consideration in this proceeding.
C. Identical or Confusingly Similar
It is undisputed that the Complainant Starwood uses the marks ST. REGIS, THE ST. REGIS, THE ST. REGIS LIBRARY LOUNGE AND RESTAURANT, and ST. REGIS RESIDENCE CLUB. The Complainant The Sheraton LLC owns the United States registered trademarks listed above, and the Complainant Sheraton International, Inc. owns the United Kingdom and Community Trademarks listed above, both presumably licensing the use of their trademarks to the Complainant Starwood.
The International Madrid Protocol Trademark listed above is not held by one of the Complainants but rather by The Sheraton Corporation. As that company is not a party to the proceeding and the Complaint does not explain the nature of the Complainants’ interests in the mark, it will be disregarded for purposes of this proceeding.
Each of the Domain Names incorporates the distinctive features of the ST. REGIS mark in its entirety. The variations in punctuation and spacing are not distinctive for UDRP purposes, particularly given the technical limitations of URL addresses in the Domain Name System. Each Domain Name adds a geographical indicator (“Atlanta” or “Buckhead”) that appears relevant to the mark, because the Complainants are in fact building a ST. REGIS hotel and residences in the Buckhead district of Atlanta. Thus, the addition of these descriptive geographic terms is not distinctive and increases rather than diminishes the likelihood of confusion as to source.
The Domain Names are less similar to the other trademarks listed by the Complainants, but there remains a likelihood of confusion, especially with the mark THE ST. REGIS. In any event, it is unnecessary to rely on other marks, given the Domain Name’s confusing similarity to the ST. REGIS mark.
The Panel concludes that the Complainants have established the first element of their UDRP Complaint. D. Rights or Legitimate Interests
The Complainants state without contradiction that they have never authorized the Respondent to use any of the ST. REGIS marks. The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence in the record that the Respondent has been known by a name corresponding to any of the Domain Names. His website and billboard advertising feature the “CondoG” name of the Respondent’s limited liability company and website, and the Respondent’s HOA management software is currently branded “Community Tools.” The “St. Regis HOA” page recently added to the Respondent’s website refers not to the Respondent but to the St. Regis Homeowners Association, with which he claims no affiliation.
The record shows that the Respondent has made use of the Domain Names for multiple commercial purposes. The Domain Names were first offered for sale and directed to pages on a parking website with paid advertising links. It is immaterial that these did not produce satisfying levels of revenue from the Respondent’s perspective. After notice of this dispute, the Respondent employed the Domain Names to redirect Internet users to the Respondent’s website at “,” which expressly offers space for paid advertising aimed at condominium residents and others interested in condominium properties in several American and Canadian cities.
The Respondent argues that temporarily parking the Domain Names with Sedo for resale and advertising purposes should be deemed a use in connection with a bona fide offering of goods or services. In a UDRP proceeding, this claim must be judged in light of the totality of the circumstances. A legitimate interest in a domain name held for resale and used for pay-per-click advertising is more likely to be found when the Respondent is regularly engaged in such business, the domain name is comprised of common (dictionary) words, the trademark in question is not famous, and there is no evidence of the Respondent’s actual knowledge of the mark. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964.
Here, the Respondent (who says he holds more than 100 domain names) does buy, sell, and park domain names. The Domain Names at issue, however, incorporate a name, “St. Regis,” which is not a common word or phrase. The record suggests that “St. Regis” is an uncommon surname and occasionally a place name, one from which a Native American tribe, for example, has derived its English name. The record does not establish that there is a “St. Regis” town or district in the Atlanta area, although there is a “St. Regis” street and a “St. Regis” housing development with a “St. Regis” HOA. There is no evidence in the record that the advertising links displayed on the parking websites to which the Domain Names formerly resolved had anything to do with any of those uses of “St. Regis,” however, belying the Respondent’s claimed interest in the domain names for their “generic” value.
The record shows, on the other hand, that the Complainants’ ST. REGIS mark has long been associated with highly publicized, award-winning, luxury hotels and residences in the United States and elsewhere. However they were generated, the advertising links on the parking pages to which the Domain Names formerly resolved indisputably included links to hotels in the Atlanta area and elsewhere, but not to persons or places (or tribes) named “St. Regis.” Thus, the advertising use of the Domain Names does not appear to represent generic use of a common word or phrase, as claimed by the Respondent. Rather, the parking pages less innocently displayed links to competitors precisely in the Complainants’ industry and geography. See, e.g., Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277.
The Respondent remains ultimately accountable for the use of his Domain Names, even if an employee (or, more likely, an algorithm) of an online affiliate advertising network selected the particular advertisements to display. The Respondent states that he merely selected the “Consumer Goods / General” category of advertisements offered by the Sedo advertising network, but this did not eliminate his responsibility for the use of the Domain Names. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” (Emphasis added.)
This provision has not been read as routinely requiring registrants to conduct a trademark search. But it does suggest that the Respondent had some obligation, when registering an uncommon name for potential resale and using it to generate revenue from third-party advertising, to avoid a likelihood of confusion with the trademarks of others. This possibility would have been revealed with a simple search engine query, as the leading results on the most popular search engines highlight the Complainants’ ST. REGIS properties, even if the Respondent did not already have actual knowledge of the marks (an issue discussed further below). Indeed, the Respondent should have paid attention to the “Domain Name Legal Issues” notice on Sedo’s website when listing the Domain Names for resale and parking them for interim pay-per-click advertising:
“Domain name sellers should be aware that it is their responsibility to ensure that their domain name is free from possible trademark infringements before listing it for sale. Ignorance of the law is no excuse! Use the links and information provided here to inform yourself about your rights and the legalities governing domain name ownership to reduce the risk that you will lose your domain.”
Sedo’s website even provides links to free online trademark searches in the United States, Canada, and the European Union.
For all these reasons, the Panel does not accept the Respondent’s contention that listing these particular Domain Names for resale and parking them on an advertising directory web page represented a bona fide offering of goods and services in the circumstances of this proceeding.
Beyond the interim parking of the Domain Names, the Respondent’s ultimate purpose for registering the Domain Names, by his own account, was to provide “direct navigation” to a relevant website (or relevant pages on the Respondent’s existing website) by persons interested in a “St. Regis” homeowners association:
“Respondent specifically intends to use some or all of the domains to provide the St Regis Homeowners Association(s) a link to Respondents online HOA management software. As well as future HOA’s that may employ the St Regis generic name. Respondent would also like to provide domains for bloggers related to the St Regis HOA and future HOA’s that use the St Regis generic name.”
The Respondent states that he has an undisclosed business plan that would involve offering his Community Tools software on the “” website and on multiservice “community center” websites using domain names associated with specific HOAs. Therefore, one of his “potential customers” is the St. Regis Homeowners’ Association, Inc., unrelated to the Complainants, which operates the St. Regis HOA in Alpharetta, Georgia, the Atlanta suburb where the Respondent works. The Respondent states that in 2006 he registered the Domain Names in furtherance of this business plan, along with several other “homeowner association domains” relevant to local HOAs, including , , , , and .
The Respondent’s HOA management software and related services are reportedly in the “beta” stage. Thus, site visitors can test the beta version on the Respondent’s website, but the software and services are not yet offered for sale or license. The Respondent claims to offer a “home page” for the St. Regis HOA, but he does not demonstrate that he has an agreement with the St. Regis HOA to do so, or that the St. Regis HOA management makes use of his “Community Tools” software.
The “St. Regis” pages on the Respondent’s website are evidence of the Respondent’s demonstrable preparations to use the Domain Names in connection with an offering of goods or services, even if those preparations have not yet come to fruition. Whether these preparations began before notice of the dispute is less certain. The Complainants’ initial cease-and-desist letter was sent on May 29, 2007, but there is no evidence of a “St. Regis HOA” page on the Respondent’s website before July 2007, and the Respondent indicates that his “Community Tools” announcement and demonstration pages were first published on that website on July 4, 2007. The Respondent provided copies of receipts from a programmer working on the Respondent’s “Community Tools” software, but these are also dated after the Complainants’ first letter. In his supplemental filing, the Respondent argues that it would not have been possible to publish the beta version of Community Tools on his website on July 4, 2007 without months of prior development work.
The Panel accepts the likelihood of such prior planning and efforts before the end of May 2007, even though the record does not include direct evidence of “demonstrable preparations” before “any notice” of the dispute. But the Respondent’s legitimate commercial interest in developing and promoting online HOA management tools does not necessarily legitimize the associated use of Domain Names confusingly similar to the Complainant’s ST. REGIS mark. If the Domain Names were chosen in a bad-faith effort to capitalize on the Complainants’ marks, then the Panel could not find that the Domain Names were used in connection with a “bona fide” commercial offering. That issue is addressed below, in assessing the Complainants’ claims of bad faith. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, or [. . . ]”
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent attempted to sell the Domain Names, but there is no evidence that he approached the Complainants or their competitors or that he has a pattern of attempting to extort excessive payments from trademark holders. Rather, the more apposite charge is that he used the Domain Names to mislead Internet users into visiting an advertising parking website, from which he had arranged to receive pay-per-click revenues, and that he now uses the Domain Names to divert traffic to his own “” website for potential commercial gain from the advertising and HOA software and services featured on that website.
At first blush, the Respondent offers plausible reasons for choosing Domain Names relating to St. Regis and Atlanta, because he hopes to make the St. Regis HOA (in the Atlanta neighborhood where the Respondent regularly works) a customer. He currently offers a beta version of his HOA management tools on his website page naming the St. Regis HOA.
However, the Respondent’s claimed interest in offering HOA management services to “the St. Regis Homeowners Association(s)” and “future HOA’s that may employ the St Regis generic name” is disingenuous. He has furnished evidence of only one “St. Regis” residential development, and no evidence of even contacting this entity. He did not publish a page on his website concerning the “St. Regis HOA” until after notice of this dispute. Moreover, that St. Regis HOA concerns a housing subdivision and not a condominium complex, yet the entire focus of the Respondent’s “” website is otherwise on condominiums. Despite the Respondent’s assertions to the contrary, the Response and supplemental filing also do not establish that “St. Regis” is a generic name, or a geographic name that is likely to be reflected in other Atlanta-area residential developments – apart from the Complainants’. This casts doubt on the Respondent’s stated intentions.
It is particularly telling that the Respondent registered not only Domain Names with the name “Atlanta” added to “St. Regis,” but also a Domain Name adding the name “Buckhead.” The St. Regis HOA to which the Respondent refers is in the Alpharetta district, not in Buckhead. There is no evidence in the record of a “St. Regis” place name in Buckhead, nor any “St. Regis” residential development in Buckhead apart from the Complainants’. The Respondent has given no plausible reason for registering a Domain Name linking “St. Regis” and “Buckhead,” which suggests that the motivation was, in fact, to take advantage of the Complainants’ marks in connection with their construction of a ST. REGIS hotel and residences in Buckhead.
The timing of the Domain Name registrations also tends to support the inference of bad faith. The record demonstrates that the Complainants publicized their plans for a ST. REGIS hotel and residences in the Buckhead district of Atlanta in November 2005. This was reported in the Atlanta news media, including reports months later that the residential units were nearly all sold in advance. The Respondent registered the Domain Names and roughly three months after the Complainants’ initial announcement, on January 17, 2006. He registered the Domain Name six months after that, on July 25, 2006.
The Respondent’s self-described practice of registering other domain names in 2006 based on the names of prominent Atlanta-area condominium properties, as part of his business plan for an eventual online HOA management and web-hosting business, suggests that he kept abreast of large condominium developments in the Atlanta area. Thus, it is unlikely that he entirely missed the publicity, over a period of months, concerning the Complainants’ planned development of a ST. REGIS luxury hotel and residences in nearby Buckhead.
In sum, several facts lead to a conclusion of bad faith in the registration and use of the Domain Names:
- the distinctiveness of the Complainants’ well-established marks
- the lack of evidence of a “generic” or relevant geographic sense of the name “St. Regis”
- the timing of the Domain Name registrations following the Complainants’ announcement of plans to build a ST. REGIS luxury hotel and residences in the Buckhead district of Atlanta, and the likelihood that the Respondent was aware of this local development
- the unexplained registration of a Domain Name combining “Buckhead” with “St. Regis,” with no evidence of a Buckhead development (other than the Complainants’) associated with the name “St. Regis”
- the initial use of the Domain Names to direct Internet users to an advertising parking website that prominently featured advertising links to third parties, including those operating hotels in competition with the Complainants
- the subsequent use of the Domain Names to redirect Internet users to a new (and somewhat anomalous) “St. Regis HOA” page on the Respondent’s CondoG website, shortly after notice of the dispute, and with no evidence of an association with the St. Regis HOA.
These facts lead the Panel to conclude that, while the Respondent does appear to have made preparations to offer HOA management software and related website services, he has also attempted to exploit the Complainants’ trademarks. Despite his denial of prior knowledge of the marks, the facts outlined above strongly suggest that he was aware of the Complainants and their plans for a development in the Buckhead district of Atlanta. He had reason to hope that the Domain Names would become more valuable because of that development, and that they might attract Internet traffic to a pay-per-click advertising portal. The fact that these hopes were not fulfilled does not negate the element of bad faith in registering and using the Domain Names. After this dispute arose, the Respondent used the Domain Names to direct traffic to his own commercial website. These are not legitimate uses of Domain Names that are confusingly similar to registered trademarks, where the balance of the evidence indicates knowledge of the marks.
The Panel does not conclude, as do the Complainants, that the Respondent’s use of a domain privacy service further supports an inference of bad faith in this case. The anonymized domain name registrations did not prevent the delivery of notice to the Respondent, and the Respondent replied promptly to the Complaint in this proceeding. The Panel finds, however, that the other circumstances cited above warrant a finding of bad-faith registration and use of the Domain Names.
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 the Complainant Starwood Hotels & Resorts Worldwide, Inc. 1
___________________________
W. Scott Blackmer
Sole Panelist
Date: October 23, 2007
1 The Respondent advances irrelevant arguments against the Complainants’ requested remedy in this proceeding. He contends that the holder of an unrelated ST. REGIS trademark has a stronger interest in the Domain Names. That issue is not properly before this Panel; any such trademark owner would have to submit its own claims and establish that they satisfy the elements of a UDRP complaint. The Respondent also contends that the Complainants have themselves shown bad faith in requesting transfer rather than cancellation of the Domain Names. The Policy provides for both remedies as alternatives, however, and transfer is in fact the more commonly requested form of relief. The Panel fails to see how requesting this remedy is in itself abusive or illegitimate, and the Respondent has not stated (much less established) a claim for reverse domain name hijacking under Rule 15(e).
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