WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Starwood Hotels & Resorts Worldwide, Inc., And Westin Hotel Management, LP. v. Private Registrations Aktien Geselsschaft, Domain Admin Case No. D2010-0527 1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., and Westin Hotel Management, LP, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Private Registrations Aktien Geselsschaft, Domain Admin of Saint Vincent and Grenadines. 2. The Domain name and Registrar
The disputed domain name is registered with A (I) Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 7, 2010, the Center transmitted by email to A (I) Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On April 12, 2010, A (I) Pvt. Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 21, 2010. I n accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent did not submit Response. Accordingly, the Center notified the Respondent's default on May 18, 2010.
The Center appointed Kiyoshi Tsuru as the Sole Panelist in this matter on May 26, 2010 (the “Panel”). 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 owners, amongst others, of the following trademark registrations:
WESTIN, Trademark Registration No. 1,320,080, Class 42, date of registration February 12, 1985, United States;
WESTIN, Trademark Registration No. 1,720,799, Class 41, date of registration, September 29, 1992, United States;
WESTIN, Trademark Registration No. 2,257,629, Class 36, date of registration June 29, 1999,United States.
The Complainants are also the holders of the following domain names registered on July 8, 1997.
The disputed domain name was registered on November 4, 2006. 5. Parties' Contentions A. Complainants
The Complainants contend the following: I. Identical or Confusingly Similar
- That Complainants own one of the leading hotel and leisure companies in the world.
- That Complaints are fully integrated owners, operators and franchisors of hotels and resorts with the following internationally renowned brands: WESTIN, SHERATON, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT Hotels.
- That the domain name consists of nothing more than Complaints registered trademark, the geographical term “Crown Center” and the generic TLD “.com”
- That the term “Crown Center” comes from what is known as one of the most popular shopping malls in the Kansas City area. The shopping center derives its name from its proximity to the worldwide headquarters of Hallmark Cards, Inc. and their famous crown insignia.
- That the addition of such geographical term to the Complaintants' WESTIN trademark is a common method for indicating the location of a business enterprise, and cites Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244, Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136, and Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658, to claim that geographical descriptors increase the likelihood of confusion because they relate directly to places where the Complainant has developed or might develop its core business through hotels and other leisure services.
- That is it is well established that the gTLD “.com”, is not a distinguishing feature and does not have an impact on the likelihood of confusion, and cites Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723, to state that, the addition of the domain name extension does not remove the likelihood of confusion, and therefore the extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous mark and the domain name. II. Rights or Legitimate Interests
- That the Respondent knew or must have known Complainants' trademarks at the time it registered the disputed domain.
- That there is no evidence that Respondent has ever been known by the disputed domain name.
- That Respondent has not been authorized by Complainants to use and register their trademarks, or to seek the registration of any domain name incorporating said trademarks.
- That the domain name is confusingly similar to Complaints' trademark registrations.
- That Respondent only uses the domain name to misdirect Internet traffic to competing hotel and leisure companies and services so that it can generate pay-per-click revenue.
- That the domain name was registered after the Complainants had obtained numerous U.S. federal trademark registrations for their WESTIN mark and after Complainants had been extensively using said WESTIN mark. Therefore, Respondent clearly was on actual notice of Complainants´ rights before it adopted Complainants´ trademark as its domain name.
- That there is not bona fide or legitimate use of the domain name as the WESTIN trademark has been recognized by Courts and WIPO UDRP panels as being famous and has been used throughout the world.
- That there is no evidence suggesting that Respondent has been or is commonly known by the domain name.
- That the use of the domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services or a noncommercial or fair use.
- That Respondent is trading for commercial gain on the good name and worldwide fame and reputation of the Complainant's business and trademark and unfairly attracting to its own business and activities the substantial goodwill the Complainants have established over many years in its name and trademarks without any right or legal justification.
- That Respondent's website suggests that WESTIN is or may be associated with it. III. Registered and Used in Bad Faith
- That Respondent uses the domain name to pay-per-click revenue through links to Complainants ´competitors in the hotel and resort industry, which clearly establishes Respondent's bad faith.
- That the domain name incorporates Complainants' registered WESTIN mark and is confusingly similar to Complainants' WESTIN trademark.
- That consumers are likely to believe that the domain name is related to or associated with the Complainants.
- That the only reason for the Respondent to use the Complainants' trademark is to intentionally confuse consumers, to trade on Complainants'rights and reputation, and to drive traffic to its website all for its own commercial benefit.
- That the Respondent´s knowledge of the existence of Complainants' trademark when the disputed domain name was registered constitutes evidence of Respondent´s bad faith in the registration of said domain name, and cites Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134; Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenic Group Co.,WIPO Case No. D2000-0163. B. Respondent
The Respondent did not file any Response. 6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
(i) the domain name in question 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.
In the administrative proceeding, the Complainant must prove that each of these elements are present.
As the Respondent has failed to submit a Response to the Complainants' contentions, the Panel may choose to accept as true all of the allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Complainant is the holder of several trademark registrations for WESTIN in the United States.
This Panel admits the uncontested affirmations made by the Complainants, regarding the widespread publicity, fame and recognition of the trademark WESTIN.
The disputed domain name is confusingly similar to the Complainants' trademark WESTIN.
Said trademark WESTIN is entirely incorporated in the domain name . The addition of the words “crown” and “center” does not confer a distinctive character to the disputed domain name, in relation to Complainants' trademarks. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; see also, mutatis mutandis, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández,WIPO Case No. D2006-1506; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
Therefore this Panel finds that the disputed domain name is confusingly similar to the Complainants' trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have 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.” (Policy, paragraph 4(c)).
The Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has the Respondent proven that it has been commonly known as , or that it is making a legitimate noncommercial or fair use of the disputed name. In fact, the website to which the disputed domain name resolves offers hotel-related services which compete with those of the Complainants, and therefore said use cannot be in good faith, or legitimate or noncommercial, since parking and pay-per-click models generate revenue for the holders of the domain names used in said models. In this case, revenue is a consequence of the confusion of Internet users looking for WESTIN hotels and services, and who are being misdirected to a different site offering other hotels.
The Respondent has not contested the Complainants' statements and evidence arguing illegitimate, commercial use of the disputed domain name.
Panels acting under the Policy have held that registration of a domain name incorporating another's famous mark does not confer any rights or legitimate interests in the domain name to the Respondent, but rather indicates bad faith under paragraph 4(c) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Limited,WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v. Kownacki, NAF Claim No. 95079).
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the contested domain name . The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; 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 disputed domain name is parked and linked to a website that intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with Complainants' mark WESTIN, as to the source, sponsorship, affiliation or endorsement of said site, and the services offered in it. This conduct clearly falls within the scope of Paragraph 4 b)(iv) of the Policy and constitutes bad faith. See Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200; PNY Technologies Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0544; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Registration of a well-known or famous trademark constitutes bad faith for purposes of paragraph 4(b) of the Policy (see, mutatis mutandis, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489).
This Panel finds that the domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met. 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 Complainants.
Kiyoshi Tsuru
Sole Panelist
Dated: June 9, 2010
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