WIPO Domain Name Decision D2007-1764 for sheratonhotel.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Hong Yunju

Case No. D2007-1764

1. The Parties

The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC and Sheraton International, Inc., of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.

The Respondent is Hong Yunju, of Kwangju, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name is registered with HANGANG Systems Inc. dba D.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2007. On December 30, 2007, the Center transmitted by email to HANGANG Systems Inc. dba D a request for registrar verification in connection with the domain name at issue. On December 6, 2007, HANGANG Systems Inc. dba D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also informed that the language of the registration agreement was Korean. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 18, 2007. The Center verified that the Complaint (subject to determination of the Complainant’s language request by the Panel to be appointed) together with the amendment to 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 (the Center’s covering document being both in Korean and English), and the proceedings commenced on December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2008.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 25, 2008. 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 Complainant is one of the leading hotel and leisure companies in the world and owns, managers or franchises several hundred properties in approximately one hundred countries.

The Complainant owns the SHERATON trademark, among many others, which it has used in connection with its goods and services in the hotel and leisure industry for nearly eighty years.

The Complainant has obtained numerous registrations for its marks throughout the world in connection with its hotel services and related goods and services. For example, the Complainant owns 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

16

954,454

March 6, 1973

SHERATON

42

1,784,580

July 27, 1993

SHERATON

41

1,884,365

March 14, 1995

SHERATON

41,43,44

3,020,845

November 29, 2005

The Complainant also has developed a prominent Internet presence for the Complainant’s marks including in connection with its websites located at “” and “”.

5. Parties’ Contentions

A. Complainant

The domain name is confusingly similar to the Complainant’s marks because it consists of the Complainant’s mark, SHERATON combined with the generic word “hotel”, which represents the Complainant’s core business. The addition of such a non-distinctive word to the Complainant’s mark adds to rather than diminishes the likelihood of confusion.

Given that the Complainant’s adoption and extensive use of the SHERATON mark predates the Respondent’s registration of the domain name, the burden is on the Respondent to establish its right or legitimate interest in the domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s marks in a domain name or in any other manner.

The Complainant’s mark is one of the most famous trademarks in the world and enjoys international recognition. It is therefore inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the domain name.

The mere fact that the Respondent registered the confusingly similar domain Name without authorization is, in and of itself, evidence of its bad faith registration.

The format of the Respondent’s website, with links that lead visitors to other commercial sites indicates that the Respondent is obtaining “click-through” revenue from the domain name.

This exploitation of the Complainant’s goodwill for financial gain by creating confusion demonstrates the Respondent’s bad faith.

The Complainant submits that “Steve Kerry”, who has been the subject of numerous complaints under the Policy, is the true owner of the disputed domain name (Exhibits I and J to the Complaint)

The Respondent’s pattern of registering variations of other parties’ well-known trademarks is further evidence of this bad faith here.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Finding

A. Language of Proceedings

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, although available in both Korean and English on the website of the Registrar. The Complainant asserts that English should be the language of the proceeding.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, despite the Center’s invitation to indicate language difficulties with the Complaint in English, the Respondent failed to participate any further in this proceeding. The Respondent has been notified of its default.

Apparently, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, the Complainant must prove 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;

(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.

C. Identical or Confusingly Similar

The Complainant has registered the SHERATON marks in various countries in connection with numerous classes of goods and services. The domain name wholly incorporates the Complainant’s distinctive trademark and as such creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy). The Panel notes that the additional of the generic word “hotel” to the Complainant’s mark further adds to the confusing similarity (see ACCOR v. Steve Kerry / North West Enterprise, Inc.WIPO Case No. D2006-0649).

Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several decisions of WIPO Panels have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondent has no interests or legitimate rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806) and under the Policy (see Paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known worldwide, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that it was infringing the Complainant’s marks.

Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States of America would have made the Complainant’s registrations known to the Respondent.

The Respondent is, in using the domain name, forwarding Internet users to other websites. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day, NAF Case No. FA 93554). In addition, as the domain name is so obviously connected to widely known marks and products of the Complainant, its use by someone with no connection to the products is evidence of opportunistic bad faith (see Perfums Christian Dior v. Javier Garcia Quintas and Christiandior. net,WIPO Case No. D2000-0226).

In light of the above findings, which the Panel believes to be sufficient to prove the Respondent’s bad faith, the Panel need not address the Complainant’s argument as to whether the Respondent’s true identity is that of a notorious cybersquatter.

The conduct described above falls squarely within Paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name in bad faith.

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 name be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Dated: February 11, 2008

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