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. Caribbean Online International Ltd.
Case No. D2007-1406
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International Inc., and Westin Hotel Management, L.P. of United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Caribbean Online International Ltd., of Bahamas.
2. The Domain Names and Registrars
The ten disputed domain names are: , , , , , , , , , , which are registered with the following registrars respectively, Capitoldomains, LLC, DomainDoorman, LLC, DomainDoorman, LLC, DomainDoorman, LLC, BelgiumDomains, LLC Capitoldomains, LLC, DomainDoorman, LLC, Capitoldomains, LLC, Capitoldomains, LLC, Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2007. On September 25, 2007, the Center transmitted by email to the Registrars, Belgium Domains, LLC, DomainDoorman, LLC and Capitoldomains, LLC, requests for registrar verification in connection with the domain names at issue. On September 27, 2007 the above-mentioned Registrars transmitted by email to the Center their verification responses confirming the Respondent was listed as the registrant and provided the contact and other details on record. 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 October 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2007.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 9, 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 Complainants are: the Starwood Hotels &Resorts Worldwide, Inc., a company incorporated under laws of Maryland, The Sheraton LLC, a Delaware limited liability company, Sheraton International Inc., a Delaware corporation and Westin Hotel Management, L.P., a Delaware limited partnership. In these proceedings all four entities are collectively referred to as “The Complainant”.
The Complainant is a leading hotel chain which owns, manages and franchises several hundred properties worldwide and uses the SHERATON and WESTIN marks in connection with its goods and services. The Complainant has numerous registrations for these marks throughout the world including the following registrations issued by the United States Patent and Trademark Office:
Mark
Class
Registration No.
Registration Date
SHERATON
42
679,027
May 19,1959
SHERATON
42
1,784,580
July27,1993
SHERATON
16
954,454
March 6,1973
WESTIN
42
1,320,080
February 12, 1985
WESTIN
41
1,720,799
September 29, 1992
WESTIN
36
2,257,629
June 29, 1999
The Complainant uses its marks for several of its websites. Some of which are: “”, “”, “” and “”. The websites are accessible through domain names owned by the Complainant.
The Respondent for all the ten disputed domain names is Caribbean Online International Ltd., Nassau, Bahamas.
5. Parties’ Contentions
A. Complainant
The Complainant states that in addition to its SHERATON, WESTIN marks it is the owner of several other well known marks in the hotel industry. These include, FOUR POINTS BY SHERATON,W, LE MERIDIEN, ST. REGIS, THE LUXURY COLLECTION and more recently the ALOFT and ELEMENT brands. The SHERATON brand was launched in the year 1928, and was one of the first hotel chains to be listed on the New York Stock Exchange. The Westin hotel, which caters to business and leisure travelers, was introduced by the Complainant in the year 1981. There are presently about 400 Sheraton hotels and 150 Westin hotels worldwide.
Due to its widespread and extensive use the Complainant’s marks have acquired enormous goodwill and acclaim in the United States of America and throughout the world. The Complainant states that it expends vast amounts to promote its marks through various media. The domain names in dispute contain the SHERATON and WESTIN marks and infringes the Complainant’s rights.
Further, the domain names are being used by the Respondent to mislead and divert Internet users. The Complainant’s potential customers who intuitively type in the domain names to reach the Complainants site are redirected to numerous other competitors’ sites which are not related to the Complainant.
The Respondent, according to the Complainant is a “serial Cyber-squatter” who has been recently involved in as many as fifteen domain name disputes, all of which have been decided against it. Further, a recent search has revealed a total of six thousand five hundred and thirty five (6,535) domain names registered in the name of the Respondent. Several of these domain names, as per the Complainant, are obvious infringements of well known trademarks, such as and .
The Complainant bases its case on the following grounds:
Firstly, the Complainant states that the disputed domain names are identical and confusingly similar to the marks in which it has rights. The domain names consist of at least one of the Complainant’s marks combined with either non – distinctive words commonly associated with the hotel industry as in the domain name , or with a geographic location , such as , , , , .
The Respondent has also registered names of specific WESTIN hotels such as which is located in Toronto, Canada or registered domain names with other variations of the Complainant’s marks, such as ,. The Complainant cites cases, Six Continental Hotels Inc v. Dkal WIPO Case No. D2003-0244, and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, KilWIPO Case No. D2000-1409, and states that, particularly in the case of hotels, addition of non-distinctive words or geographical indicators to the marks add to, rather than diminish the likelihood of confusion.
Secondly, the Complainant states that the Respondent has no legitimate rights or interests in the domain names, whereas the Complainant has superior rights due to its prior adoption and extensive use of the SHERATON and WESTIN marks. The burden lies with the Respondent to establish its rights and interest, and it is unlikely that the Respondent here can demonstrate any legitimate rights or interests. The Complainant cites Pepsi Co., Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, in this regard.
The Complainant further states that the Respondent has no affiliation with the Complainant nor any consent or license to use the marks. There is no evidence that the Respondent has ever been known by these domain names. The Respondent seems to be using the domain names for the sole purpose of misdirecting Internet traffic to its own website and to advertise links to other competing hotels. Such use has not been found a legitimate or bona fide offering of goods or services in previous cases under the Policy, and the Complainant cites the case of Fry’s Electronics Inc., v. Whois ID Theft Protection, WIPO Case No. D2006-1435.
Lastly, the Complainant states the Respondent has registered and used the domain names in bad faith. The Complainant alleges that the Respondent had knowledge of the Complainant’s well known marks at the time of registration. When an internationally famous mark is used in a domain name, particularly if it is used by someone with no connection with the mark or product, it precludes a finding of innocent registration. In Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, such registration was found to be “opportunistic bad faith”.
The Complainant states that, the Respondent’s consistent pattern of registering domain names using well known trademarks is again indicative of bad faith. The Respondent’s intentional use of the goodwill of the Complainant’s marks to generate traffic and diverting it to other unrelated sites or to competitor hotels, shows bad faith. Doctor Ing. h.c F. Porsche AG v Stoneybrook Investments Limited, WIPO Case No. D2001-1095; Ameriquest Mortgage company. v. Phayze Inc ,WIPO Case No. D2002-0861.
The Complainant refers to the format of the Respondent’s website, and contends that it strongly suggests that the Respondent is obtaining click through revenues. It cites the cases Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102 and Nintendo of America Inc. v. Pokemon , Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020, which held that using the complainant’s goodwill to generate click through revenues is bad faith use. Furthermore, in Etro S.p.A v. Domain Registrations, WIPO Case No. D2006-0207, if the featured links directly compete with the Complainant’s services, bad faith use is manifest.
The Complainant finally states that the Respondent’s bad faith is apparent, as the domain names use geographical descriptors combined with the Complainant’s mark. This is done with the intention of targeting Internet users who are looking for hotel bookings in a particular city. The Complainant therefore requests for the transfer of the domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has to satisfy the three essential aspects set out in paragraph 4(a) of the Policy to obtain the transfer of the disputed domain names.
(i) The domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names;
(iii) The domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant has to establish its rights in the marks and demonstrate that the disputed domain names are either identical or confusingly similar to its marks.
The Complainant has provided ample evidence of its well established prior rights in the SHERATON and WESTIN marks. There is no doubt that the SHERATON and WESTIN are world famous marks that signify the hotel chain operated by the Complainant. The Panel finds that each of the domain names in issue, without exception, make use of either one of these famous marks and even uses specific names of the Complainant’s property, such as . It is well established that a domain name is confusingly similar to a trademark when it incorporates a well known mark in its entirety. America Online, Inc v. Anson Chan,WIPO Case No. D2001-0004.
Furthermore, the Panel finds the Respondent has deliberately tried to create confusing similarity with the marks of the Complainant by adding geographic descriptors, like “Tokyo” or “Detroit” or terms like “hotel”. It has been found in previous cases that the addition of such terms or geographic indicators increases rather than diminishes the likelihood of confusion; see Starwood Hotels & Resorts Worldwide Inc., Sheraton LLC and Sheraton International Inc .v. Jake Porter,WIPO Case No. D2007-1254. Given the importance of on-line bookings, the increasing use of Internet in the hotel industry, the Panel finds that domain names with geographical identifiers heighten confusing similarity to the Complainant’s marks.
The Panel finds that the domain names in issue are confusingly similar to the Complainant’s mark and the requirements of paragraph 4 (a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to make out a prima-facie case that the Respondent lacks rights or legitimate interests in the domain names.
The Complainant has submitted printouts of the Respondent’s websites and its featured links which redirect users to other competitor sites. The selection and use of domain names by the Respondent with well known trademarks to link and redirect to other websites does not confer rights or legitimate interests; see Media General Communications Inc. v. RareNames, WebReg, WIPO Case No. D2006-0964 and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, which discusses the use of trademarks in domain names to generate advertisement revenue.
The Complainant states that it has not authorized the Respondent to use its marks in any manner. There is no evidence that the Respondent is known by these domain names. It is unlikely that the Respondent has any trademark or other rights in the names. The Respondent has registered these names with full knowledge of the Complainant’s marks for the purposes of diverting Internet traffic, which is neither fair use or non commercial use. The Panel is satisfied that there is nothing on record to show any rights or legitimate interests in the domain names favoring the Respondent.
The Complainant has established that the Respondent is using the Complainant’s marks in the domain names without having any rights or legitimate interests and has made out a prime facie case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has to establish that the domain names are registered and used in bad faith under Paragraph 4(a)(iii) of the Policy.
In the absence of any contrary evidence, inference can be drawn that the Respondent had knowledge of the Complainant’s well known marks at the time of registration, Parfums Christian Dior v. Javier Garcia Quitas and C,WIPO Case No. D2000-0226. The Registration of domain names by the Respondent using famous marks itself constitutes bad faith, see PepsiCo. Inc, v. Paul J. Swider,WIPO Case No. D2002-0561.
The Panel finds the Respondent has registered the domain names to misdirect the Complainant’s customers for the purpose of commercial gain. Redirecting potential customers of the Complainant to competing website or entities constitutes bad faith use under the Policy. See Verisign, Inc, v. jumbo domains,WIPO Case No. D2006-1582.
The Panel recognizes the evidence furnished by the Complainant to show the Respondent is a notorious cyber-squatter and has been engaged in a pattern of registering domain names that prevent the trademark owner from using its mark in a corresponding domain name. Further, it is evident that in several domain name disputes the Respondent has been ordered to transfer domain names to its legitimate owners.
The Complainant has successfully established that the domain names are registered and used in bad faith under 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, , , , , , , , , , be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: November 23, 2007
Full & Egal Universal Law Academy