The Complainants are Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. of Connecticut, United States of America (USA), represented by Fross Zelnick Lehrman & Zissu, P.C., USA (hereinafter “the Complainant”).
The Respondent is M On of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2012. On May 14, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 21, 2012.
The Center verified that the Complaint together with the amendment to 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 May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on June 20, 2012. 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 owns, manages and franchises properties and hotels in approximately one hundred countries.
The Complainant is the owner of the WESTIN trademark and uses it in connection with its goods and services in the hotel and leisure industry. The WESTIN trademark is registered in many countries throughout the world including the USA and China.
The Complainant has also developed a substantial Internet presence and is the owner of the domain names and and the websites enable Internet users to access information regarding the Complainant’s various WESTIN hotels. The Complainant operates and manages a hotel in Shanghai, China under the name “The Westin Bund Center, Shanghai”. The Complainant has registered as a domain name dedicated to this hotel and its services in China.
The disputed domain name was created on February 3, 2010. At the time the Complaint was filed with the Center, the website associated with the disputed domain name was virtually identical to the Complainant’s own site for its hotel in Shanghai except that the website was in Chinese. On July 13, 2011 the Complainant’s Chinese counsel sent a letter to the Respondent requesting for a voluntary transfer of the disputed domain name to the Complainant but the Respondent did not respond to this letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The reasons are as follows:
1. The disputed domain name incorporates without alteration the Complainant’s registered WESTIN mark.
2. The addition of a geographical indicator, i.e. “bund”, to the Complainant’s WESTIN mark increases rather than diminishes the likelihood of confusion created by the disputed domain name and the Complainant’s WESTIN mark.
3. Given the reputation of the Complainant’s WESTIN mark, most Internet users who see the disputed domain name are likely to recognize the Complainant’s mark and assume that the disputed domain name and the website associated with it are owned, controlled or approved by the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. There is no evidence that the Respondent has been known by the disputed domain name.
2. 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 mark in a domain name or in any other name.
3. The Respondent has used the disputed domain name to create a website which is virtually similar to the Complainant’s website except that it is in Chinese. This gives the impression that the Respondent is associated with the Complainant and its WESTIN mark which is evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The WhoIs information for the disputed domain name is incomplete and most likely false. It fails to disclose the registrant’s street address, the building, mail box or unit number and does not include the name of any person, business or other entity to which any package could be addressed. The Respondent’s failure to provide any such information is evidence of the Respondent’s bad faith.
2. The Respondent’s failure to respond to the Complainant’s letter of July 13, 2011 requesting for a voluntary transfer of the disputed domain name to the Complainant is further evidence of bad faith.
3. The Complainant enjoys international recognition of its WESTIN mark and therefore, it is inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the disputed domain name. The fact that the Respondent registered a confusingly similar disputed domain name without authorization is, in and of itself, evidence of bad faith registration.
4. Given the fact that the Respondent has created a website at the disputed domain name that is virtually identical to the Complainant’s own website for the same property is further evidence that the Respondent knew of the Complainant’s rights in the WESTIN mark and suggests bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis 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, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the WESTIN mark in connection with the hotel and leisure industry in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the WESTIN mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s WESTIN mark is a well-known mark in connection hotel and leisure services offered by the Complainant in many countries including China. The Complainant operates and manages a hotel in Shanghai, China under the name “The Westin Bund Center, Shanghai”.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s WESTIN mark in its entirety followed by an English word “bund” of a geographically-descriptive nature and the top level domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “westin” which is identical to the Complainant’s registered trademark WESTIN. Given the fame and notoriety of the Complainant’s WESTIN mark, the addition of the word “bund” does not provide sufficient distinction from the Complainant. The Panel agrees with the Complainant that on the contrary, the addition of the word “bund” increases the likelihood of confusion between the disputed domain name and the Complainant’s WESTIN mark particularly in view of the fact that the Complainant operates and manages a hotel in Shanghai, China under the name “The Westin Bund Center, Shanghai”. Internet users may be confused that the disputed domain name is the official website of the Complainant’s hotel in Shanghai. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s WESTIN mark as a result of its fame and notoriety; (b) the distinctive character of the Complainant’s WESTIN mark; and (c) the dominant component of the disputed domain name and the inability of the word “bund” to distinguish the disputed domain name from the Complainant’s WESTIN mark, the Panel therefore finds that the disputed domain name is confusingly similar to the WESTIN mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “westinbund” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the WESTIN mark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. On the contrary, the Respondent is using the disputed domain name to purportedly market the rooms in the Complainant’s hotel in Shanghai on his website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose his relationship with the Complainant on the website associated with the disputed domain name. The Respondent therefore does not have the right to use WESTIN mark in the disputed domain name. Such behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
5. The Complainant and its WESTIN mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with hotel and leisure services and is a registered trademark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the WESTIN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to any right or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint. In so doing, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) A respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its WESTIN mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has established a substantial presence on the Internet through the registration of a number of domain names, including which points to the Complainant’s website for its hotel in Shanghai. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the Contrary, the Respondent is using the disputed domain name to purportedly market the rooms in the Complainant hotel in Shanghai on his website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose his relationship with the Complainant on the website associated with the disputed domain name. The Respondent therefore does not have the right to use WESTIN mark in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained his choice of the disputed domain and his subsequent conduct. However, it did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s WESTIN mark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous mark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to purportedly market the rooms in the Complainant’s hotel in Shanghai without authorisation is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: July 4, 2012
Full & Egal Universal Law Academy