The Complainant is Starwood Hotels & Resorts Worldwide, Inc. and Sheraton International IP, LLC both of Stamford, Connecticut, United States of America (“US”), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Subhi Abdul Khaleq d/b/a Sheraton Amman of Amman, Jordan. 2. The Domain Name and Registrar
The disputed domain name is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2012. On August 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2012, the Registrar 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 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012.
The Respondent sent an email communication to the Center on August 22, 2012, stating that: the disputed domain name means “Sherat on Amman”, where Sherat is a name and Amman a city; the Complainant is well-known under another domain name; the Respondent holds the disputed domain name since September 16, 2003, and; that the Respondent has not used the disputed domain name for any kind of advertisement or commercial use.
On August 24, 2012, the Center informed the Respondent on the time limits and requirements for filing a formal Response. The Respondent did not file a formal Response within the stated time limit. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 12, 2012.
The Center appointed Petter Rindforth as the sole panelist in this matter on September 19, 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any formal Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is one of the leading hotel and leisure companies in the world and the Complainant’s SHERATON trademark is registered in a number of countries worldwide, such as:
Registrations issued by the United States Patent and Trademark Office (“USPTO”):
SHERATON (word), Reg. No. 679,027, registered May 19, 1959 for services in Class 42
SHERATON (word), Reg. No. 954,454, registered March 6, 1973 for goods in Class 16
SHERATON (word), Reg. No. 1,784,580, registered July 27, 1993 for services in Class 42
SHERATON (word), Reg. No. 1,884,365, registered March 14, 1995 for services in Class 41
SHERATON (word), Reg. No. 3,020,845, registered November 29, 2005 for services in Classes 41, 43 and 44
Registrations in Jordan, the home country of the Respondent:
SHERATON (word), Reg. No. 14,505, registered May 10, 1977 for goods in Class 16
SHERATON (word), Reg. No. 14,506, registered May 10, 1977 for goods in Class 21
SHERATON (word), Reg. No. 68,073, registered September 3, 2002 for services in Class 43
SHERATON (in Arabic), Reg. No. 95,148, registered September 16, 2007 for services in Class 43
SHERATON (in Arabic) Reg. No. 95,149, registered September 16, 2007 for services in Class 36
SHERATON AMMAN AL NABIL HOTEL & TOWERS, Reg. No. 66,654, registered May 22, 2002 for services in Class 42
(Printouts showing the above registrations are provided by the Complainant as Exhibits F and G of the Complaint).
The disputed domain name was registered on September 16, 2003. No detailed information is provided about the Respondent’s activities, apart from what is mentioned above under Procedural History, and below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant owns, manages or franchises over 1,000 properties in approximately 100 countries, and is a fully integrated owner, operator and franchisor of hotels and resorts with internationally well-known trademarks such as SHERATON, WESTIN, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT. The Complainant introduced the SHERATON trademark to the public in 1928, and today there are over 400 SHERATON hotels worldwide, including the Sheraton Amman Al Nabil Hotel & Towers in Amman, Jordan.
According to the Complainant, the SHERATON trademark has become uniquely associated with the Complainant and its services, and has attained considerable fame and widespread acclaim in the US, Jordan and throughout the world. As a result, the Complainant’s SHERATON trademark represents enormous goodwill. The Complainant also refers to a number of prior WIPO UDRP proceedings, showing that the Complainant has exclusive rights in its SHERATON trademark.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s SHERATON trademark, as it consists of nothing more than the Complainant’s registered trademark and the geographical term “Amman”.
Further, the Complainant argues that the Respondent has no legitimate interests or rights in the disputed 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 trademark in the disputed domain name or in any other manner. There is no evidence that the Respondent ever has been known by the disputed domain name.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant states to that SHERATON is among the most famous trademarks in the travel and leisure industry and it is therefore inconceivable that the Respondent was unaware of the SHERATON trademark when the disputed domain name was registered. Further, the Respondent has offered to sell the disputed domain name to the Complainant or any other interested party. When Internet users are looking for legitimate services offered under the Complainant’s SHERATON trademark, they are directed to a website listing the disputed domain name along with several others that are available for sale.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the SHERATON trademark, registered and well-known in a number of countries, including Jordan – the home country of the Respondent.
The relevant part of the disputed domain name is “sheratonamman”. The Panel concludes that the disputed domain name consists of the Complainant’s trademark SHERATON, with the addition of the geographical term “Amman”. As stated in many UDRP cases, the addition of generic or geographical terms does not necessarily distinguish a domain name from a trademark. In this case it in fact rather increases the likelihood of confusion as it both describes one of the places where there exists a SHERATON hotel, as well as being the first part of the Complainant’s registered trademark SHERATON AMMAN AL NABIL HOTEL & TOWERS. See Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136 (“[T]he geographical descriptors … actually increase” 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”); see also Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (“[T]he addition of the suffix ‘Michigan’ is apt to suggest that the Complainant’s [Holiday Inn Hotels] are provided in that particular location.”).
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s SHERATON trademark. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overiview 2.0”), paragraph 2.1.
By not submitting a formal Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
However, even considering the Respondent’s informal email communication to the Center, the Panel cannot find that the Respondent has presented any convincing arguments or any evidence to show rights or legitimate interests.
The Respondent is not an authorized agent or licensee of the Complainant’s goods or services and has no other permission to apply for any domain name/s incorporating the trademark SHERATON.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
On the contrary – the only use of the disputed domain name has been to offer it for sale to the Complainant and/or to other interested parties, for an amount that is likely in excess of the Respondent’s out-of-pocket expenses directly related to the disputed domain name. Such use does not establish rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant holds several trademark registrations for SHERATON in Jordan, the home country of the Respondent, the oldest registration dated back to 1977.
Further, the Panel notes that the Complainant registered the trademark SHERATON AMMAN AL NABIL HOTEL & TOWERS in Jordan in May 22, 2002. The Respondent registered the disputed domain name on September 16, 2003.
Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic/geographical word “Amman” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
Also, the use of the disputed domain name primarily for the purpose of selling it to the Complainant or any other interested party, as alleged by the Complainant, for a monetary consideration that is likely in excess of the Respondent’s out-of-pocket expenses directly related to the disputed domain name, in this Panel’s opinion, is a further evidence of registration and use of the disputed domain name in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy. 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.
Petter Rindforth
Sole Panelist
Dated: October 2, 2012
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