The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC and Sheraton International, Inc., New York, United States of America.
The Respondent is Eddie Miller, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2011. On the same day, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain name. On August 17, 2011, GoD, Inc 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” or “UDRP”), 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 August 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2011.
The Center appointed Angela Fox as the sole panelist in this matter on October 25, 2011. 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 own and operate the well-known international Sheraton hotel chain. The Sheraton name was first used in 1928 and the Complainants now own over 400 Sheraton hotels worldwide, including throughout the United States, where the Respondent is based. These include the Sheraton Dallas Hotel and the Sheraton Dallas North Hotel, details of which were annexed to the Complaint.
The Complainants own numerous trademark registrations for trademarks comprising or incorporating SHERATON . Annexed to the Complaint were print-outs from the United States Patent and Trademark Office showing current details of the following registrations:
- United States Registration No. 679,027 for SHERATON, registered on May 19, 1959
- United States Registration No. 954,454 for SHERATON, registered on March 6, 1973
- United States Registration No. 1,784,580 for SHERATON, registered on July 27, 1993
- United States Registration No. 1,884,365 for SHERATON, registered on March 14, 1995
- United States Registration No. 3,020,845 for SHERATON, registered on November 29, 2005
All the above registrations stand in the name of the second Complainant, The Sheraton LLC.
Annexed to the Complaint was also a database print-out from the records of the Complainants’ attorneys listing registrations for trademarks comprising or incorporating SHERATON in numerous other countries around the world, in the name of the third Complainant, Sheraton International, Inc.
The disputed domain name was registered on October 6, 2006. A print-out from the website linked to it was annexed to the Complaint, showing that the disputed domain name has been used to host a parking page containing what appear to be pay-per-click links to third-party hotel booking websites and hotels operated by competitors of the Complainants. The Complaint was filed on August 16, 2011. 5. Parties’ Contentions A. Complainant
The Complainants contend that the disputed domain name is confusingly similar to their SHERATON trademark. The disputed domain name consists of the Complainants’ registered trademark combined with a geographically descriptive term. The Complainants submit that the addition of the term “dallas” only enhances the likelihood of confusion with the SHERATON trademark since place names relate directly to the Complainants’ business of providing accommodation in particular locales. Indeed, the Complainants are already operating hotels in Dallas under the names Sheraton Dallas Hotel and Sheraton Dallas North Hotel.
The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with or authorized by the Complainants to register or use the disputed domain name, and there is no evidence that it has been commonly known by a name corresponding to the disputed domain name. The Respondent’s use of the disputed domain name in order to derive pay-per-click revenue from links to websites operated by competitors of the Complainants is not, the Complainants submit, use in connection with a bona fide offering of goods or services, since the Respondent is essentially trading unfairly on the back of the fame of the Complainants’ SHERATON trademark, and is likely to mislead Internet users into believing that the website linked to the disputed domain name is associated with the Complainants. The Complainants contend that the SHERATON trademark was world-famous at the time the disputed domain name was registered, that the links to competitor hotel chains on the Respondent’s website show that the Respondent was well aware of the Complainants and their activities at the time of registration, and that there is no conceivable bona fide or legitimate use the Respondent could make of the disputed domain name.
Finally, the Complainants argue that the disputed domain name was registered and has been used in bad faith. The Complainants submit that given the fame of the SHERATON trademark, the confusing similarity of the disputed domain name and the use to which it has been put, the only conceivable reason for the Respondent’s registration of it was to intentionally confuse consumers and thereby to drive traffic to its linked website for its own pecuniary benefit in the form of click-through revenue. In the Complainants’ submission, the Respondent’s activity violates paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.
The Complainants seek the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainants have proved ownership of registered trademark rights in SHERATON in the United States dating from at least as early as 1959.
The disputed domain name contains the whole of the Complainants’ registered trademark, differing only in the addition of the word “dallas”, which corresponds to the name of a large American city, and the non-distinctive domain name suffix “.com”. When used in connection with the name of a hotel chain, a geographical descriptor such as “dallas” is likely to be seen by Internet users as denoting a place in which the hotel chain operates. Indeed, in this case it refers directly to a city in which the Complainants have shown that they do in fact operate hotels under the SHERATON trademark, namely the Sheraton Dallas Hotel and the Sheraton Dallas North Hotel. The additional non-distinctive elements within the disputed domain name are not, therefore, sufficient to distinguish it from the Complainants’ trademark; indeed, on the contrary, the presence of the geographical descriptor is likely to increase the risk that Internet users will be confused into associating the disputed domain name with the Complainants and their Sheraton hotels.
Other panels have reached similar views on similar facts. In Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244, the panelist stated that the “addition of a place name to a trademark […] is a common method for indicating the location of a business enterprise identified by the trademark or service mark […] even more so in the case of hotels”. In Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136, the panelist stated that “geographical descriptors […] actually increase” the likelihood of confusion with a complainant’s trademark, “because they relate directly to places where the Complainant has developed or might develop its core business through hotels and other leisure services.”
In the Panel’s view, the combination of elements in the disputed domain name is inherently likely to cause Internet users to assume it is linked to the Complainants and their Sheraton hotels, and, in particular, to the Complainants’ Sheraton Dallas Hotel and Sheraton Dallas North Hotel.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ registered SHERATON trademark. B. Rights or Legitimate Interests
The materials annexed to the Complaint show that the Respondent has used the disputed domain name to host a parking page for what appear to be pay-per-click links to websites operated by competitors of the Complainants and third-party hotel booking websites. The Respondent has not denied the allegation that it profits from click-through revenue arising from these links.
The elements comprising the disputed domain name, its use to host links to the Complainants’ competitors, and the long-standing use and reputation of the SHERATON trademark in the United States, where the Respondent is based, all point to the Respondent having conducted this activity in, and probably prompted by, full awareness of the Complainants’ Sheraton hotels.
The only distinctive element of the disputed domain names is the word Sheraton, which has no descriptive meaning, and which the Complainants have shown has been widely used for over 80 years in the hotel and leisure business in the United States and internationally. The attractiveness of the disputed domain name as an address for a pay-per-click landing page is based on the inclusion of the Complainants’ distinctive SHERATON trademark, and the use of the disputed domain name to host pay-per-click links to the Complainants’ competitors and to third-party hotel booking websites shows that the Respondent has sought to gain financially from the confusing similarity of the disputed domain name with the SHERATON trademark. Such activities do not, in the Panel’s view, amount to bona fide commercial use (see, inter alia, ACCOR v. Steve Kerry/North West Enterprise, Inc.,WIPO Case No. D2006-0649, “linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. See also mVisible Technologies Inc, v. Navigation Catalyst Systems, Inc,WIPO Case No. D2007-1141, “If the links on a given landing page [...] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting”. See, similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340 and Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353.
The disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate non-commercial or fair use given the presence on the linked website of pay-per-click links to the Complainants’ competitors and third-party hotel booking websites.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on Complainants, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of respondents (see, inter alia, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). In this case, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not attempted to refute the Complainants’ assertions.
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that it has none. C. Registered and Used in Bad Faith
At the time the disputed domain name was registered, the Complainants’ SHERATON trademark had been prominently used for nearly 80 years in the hotel and leisure field, including throughout the United States of America, where the Respondent is based.
The international fame of the SHERATON trademark has been widely recognized by other panels (see, inter alia, Sheraton International, Inc., Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Westin License Company. v. Services LLC,WIPO Case No. D2007-0829; Sheraton International, Inc., Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Westin Hotel Management, L.P. v. Caribbean Online International Ltd.,WIPO Case No. D2007-1406; Sheraton International, Inc,.Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC v. Sean Gerrity,WIPO Case No. D2009-0277; and Sheraton International, Inc., Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, v. Pearson Network, S.A. / President,WIPO Case No. D2009-0328).
Under Paragraph 4(b)(iv) of the Policy, a panel may find both registration and use of a disputed domain name where there is evidence that, by using it, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the linked website.
Given the renown of the SHERATON trademark and the presence of hotel-related links on the Respondent’s web page, it is implausible that the Respondent could have registered the disputed domain name without knowledge of the Complainants and their Sheraton hotel chain. Indeed, in the Panel’s view, that awareness is likely what prompted the registration of the disputed domain name since it is inherently likely to attract Internet users looking for a website relating to the Complainants and their Dallas-based Sheraton hotels, and thereby to give rise to click-through income for the Respondent through re-direction of Internet users to the Complainants’ competitors. The Panel concludes that the materials annexed to the Complaint show that the Respondent has used the disputed domain name in an intentional effort to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainants and their SHERATON trademark.
The Panel finds that the disputed domain name was registered and has been used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
The Complainants have sought transfer of the disputed domain name but have not specified to which Complainant the transfer should be made. The Panel notes, however, that the United States trademark registrations on which the Complaint and this decision are based stand in the name of the second Complainant, The Sheraton LLC.
Consequently, for 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 Sheraton LLC.
Angela Fox
Sole Panelist
Dated: November 8, 2011
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