The Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. of the United States of America (“US”), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is China, blesswarrior, of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 2012, 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.
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 proceeding commenced on July 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 19, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on August 20, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 28, 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 A. Complainant
The Complainant is a company incorporated in the State of Maryland in the US and the owner of numerous registrations worldwide for the trade marks FOUR POINTS and WESTIN (the “Trade Mark(s)”), including registrations in China, where the Respondent is based.
The Complainant has used the WESTIN Trade Mark in respect of its hotels since 1981. The Complainant’s earliest registration for the WESTIN Trade Mark dates from 1985 (a US registration), and its earliest registration in China dates from 1987. The WESTIN Trade Mark is a well-known mark worldwide in respect of hotels.
The Complainant has used the FOUR POINTS Trade Mark in respect of its hotels since 1995. The Complainant’s earliest registration for the FOUR POINTS Trade Mark dates from 1996 (a US registration), and its earliest registration in China dates from 2000. B. Respondent
The Respondent appears to be an individual with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on June 5, 2012.
The disputed domain name was registered on December 4, 2011. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises several hundred hotel properties in approximately one hundred countries.
The Complainant owns, operates or licenses more than 180 WESTIN hotels in almost 30 countries worldwide, including a hotel in Shanghai, China that operates under the name The Westin Bund Center, Shanghai. The Complainant also owns, operates or licenses more than 160 FOUR POINTS by SHERATON hotels in almost 30 countries worldwide, including a hotel in Shanghai, China that operates under the name Four Points by Sheraton Shanghai, Pudong.
Through the Complainant’s widespread use of the Trade Marks in connection with hotel services and related goods and services, and its expenditure of large sums in promoting the Trade Marks in print advertisements, on the Internet and in other media, the Trade Marks have become uniquely associated with the Complainant and its services, and have attained considerable fame and widespread acclaim worldwide.
The disputed domain names are confusingly similar to the Trade Marks. They comprise the Trade Marks in their entirety, together with the non-distinctive acronym “-sh”, a common abbreviation for “Shanghai”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent has provided false and incomplete registration information for the disputed domain names in order to hide the Respondent’s identity.
The disputed domain names have been used in respect of unauthorised websites which mimic the Complainant’s official websites (the “Websites”).
The website to which the disputed domain name is resolved uses photos and text copied from the Complainant’s website for its Four Points by Sheraton Shanghai, Pudong hotel.
The website to which the disputed domain name is resolved, in addition to using the WESTIN Trade Mark, uses photos and text copied from the website of the Complainant’s competitor’s hotel, the Hyatt on the Bund.
The disputed domain names have been registered and used in bad faith.
The Respondent is using the disputed domain names in order to to mislead Internet users to believe that the disputed domain names and the Respondent are somehow related to, endorsed by, or otherwise affiliated with the Complainant.
Upon seeing the Websites, consumers will reasonably but mistakenly believe they are the Complainant’s own websites or are somehow related to or approved by the Complainant. When visitors to the Websites mistakenly believe they can use those websites to book rooms at the Complainant’s hotels in Shanghai but are actually unable to do so, those mistaken visitors will then book a room at another hotel instead. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain names by many years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the disputed domain names contain the Trade Marks in their entirety. The Panel concludes that the addition of the generic and descriptive letters “-sh”, a common acronym for “Shanghai”, does not serve to distinguish the disputed domain names from the Trade Marks in any way, particularly given the content of the Websites purportedly relates to hotels in Shanghai.
The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by several decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names are being used in respect of the Websites which have not been authorised by the Complainant and which mimic the official hotel websites of the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Given the notoriety of the Trade Marks and the content of the Websites, the Respondent must have had knowledge of the Complainant and of its rights in the Trade Marks at the time it registered and commenced using the disputed domain names.
The Panel finds the Respondent’s conduct in registering the disputed domain names and setting up the Websites which mimic the Complainant’s official hotel websites, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Whilst it appears from the submissions of the Complainant the Websites are not in fact being used in respect of active hotels, and, for the purposes of paragraph 4(b)(iv) of the Policy, it is not therefore readily apparent how the Respondent is obtaining direct commercial gain from its registration and use of the disputed domain names, in all the circumstances of this case, and absent any submissions to the contrary from the Respondent, the Panel concludes there is sufficient evidence to support a finding, under paragraph 4(b)(iv), that the Respondent’s registration and use of the disputed domain names has given rise to commercial gain, whether indirectly through confusing potential customers of the Complainant and encouraging them to use third party hotels, or otherwise through obtaining some form of financial or monetary benefit through attracting Internet users and potential hotel customers to the Websites.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent has copied and reproduced on the Websites various images and text the copyright in which is owned by the Complainant or its competitor. The Panel finds this conduct amounts to further evidence of bad faith.
In all the circumstances of this case, the Panel finds the failure of the Respondent to file a Response, and also the failure to provide complete registrant contact information, are further indications of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 3, 2012
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