The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, and Sheraton International IP, LLC of United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Saresa Pulamai of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2013, 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. In response to a notification by the Center that Annex E to the Complaint appeared to be missing, the Complainant submitted the complete Complaint on August 26, 2013.
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 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2013.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on September 23, 2013. 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 is one of the leading hotel and leisure companies in the world and owns, manages or franchises almost 900 properties in approximately 100 countries. The Complainant owns the following trademark registrations:
Mark Country Class Registration No. Registration Date
SHERATON U.S. 42 679,027 May 19, 1959
SHERATON U.S. 16 954,454 March 6, 1973
SHERATON U.S. 42 1,784,580 July 27, 1993
SHERATON U.S. 41 1,884,365 March 14, 1995
SHERATON U.S. 41, 43, 44 3,020,845 November 29, 2005
SHERATON U.K. 42 1,282,953 October 1, 1986
SHERATON U.K. 16 B924957 May 9, 1968
SHERATON U.K. 24 B925959 May 9. 1968
SHERATON Thailand 42 SM23894 November 7, 2002
SHERATON Thailand 16 Kor126366 November 5, 1976
SHERATON Thailand 35 SM36521 December 21, 2007
(Note: United Kingdom of Great Britain and Northern Ireland (“U.K.”); United States of America (“U.S.”).)
The SHERATON trademark may be considered well-known and/or famous throughout the world.
The disputed domain name was registered on June 11, 2013. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it recently learned that the Respondent had registered the disputed domain name, which incorporates the Complainant’s SHERATON mark in its entirety, and that the Respondent is using the disputed domain name and/or its associated email servers, to facilitate a scam that involves the posting of fake job listings at various websites for non existent job openings at its client’s properties around the world. To effect the scam, states the Complainant, the perpetrators post fraudulent listings at job-search websites. Thus, individuals applying for the nonexistent jobs posted by the perpetrators are then directed to respond to an email address. Each applicant is then "hired" or scheduled for a job interview, after which the applicant is often directed to apply for a work visa via one of several non-existent visa services or immigration attorneys.
This visa requires the applicant to disclose all of their personal contact information and pay a substantial sum for processing of their visa applications.
Having said that and in respect of the first element, the Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s SHERATON trademark. The disputed domain name consists of nothing more than the Complainant’s registered trademark, the descriptive terms “skyline”, “hotel” and “ltd,” and the “.com” generic Top Level Domain (gTLD) extension.
The descriptive terms “skyline”, “hotel” and “ltd” do nothing to distinguish the disputed domain name from the Complainant’s SHERATON mark, rather they make confusion more likely.
In respect of the second element, the Complainant asserts that 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 domain names, email addresses, or in any other manner. Therefore, insists in the fraudulent job fraud Scam previously described.
And finally, in respect of the third element, the Complainant’s SHERATON mark is among the most famous trademarks in the travel and leisure industry and enjoys widespread international recognition. It is therefore inconceivable that the Respondent was unaware of the SHERATON mark when it registered the disputed domain name.
Besides, the Respondent’s use of the disputed domain name and its associated email servers to impersonate employees of the Complainant’s Sheraton Skyline Hotel London Heathrow is further evidence that the Respondent knew of the Complainant’s rights in SHERATON mark and suggests the Respondent’s opportunistic bad faith in registering the disputed domain name.
The Respondent’s exploitation of the Complainant’s goodwill for financial gain by perpetrating a fraud on unsuspecting job applicants demonstrates the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques.,WIPO Case No. D2000-0004). Here, since the Respondent has defaulted, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable marks since the Sheraton Hotel business started in 1928. Thus the Complainant has spent much time, money and effort promoting the marks and has established significant goodwill and these marks have to be recognized as well-known trademarks.
Previous UDRP panels have decided that the addition of a generic or descriptive term to an otherwise distinctive trademark name does not prevent a finding of confusingly similar to the trademark (Sanofi-Aventis v. US-M,WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not remove a domain name from being confusingly similar).
Accordingly, in the present case, the addition of the terms “skyline”, “hotel” and “ltd”, that indicate features of the Complainant’s London hotel, is not sufficient to distinguish the disputed domain name.
Moreover, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO overview 2.0”), paragraph 1.2 states: “[t]he first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name […]”.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant. There is no authorization to the Respondent to utilize the SHERATON mark under the disputed domain name since 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 SHERATON in domain names, email addresses, or in any other manner. Furthermore, there is no use in connection with a bona fide offering of goods or services since the Respondent is using the Complainant’s mark to generate revenue by attempting to collect personal information by falsely offering job offers which require applicants to apply for a work visa via one of several non-existent visa services or immigration attorney. This visa requires the applicant to pay a substantial sum for processing of the visa application.
Furthermore, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the disputed domain name in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the disputed domain name in bad faith.
Having the Complainant established that its trademarks are well-known throughout the world, it is very unlikely or inconceivable that the Respondent would have chosen the term “sheraton” as a domain name unless it knew either of the existence of the trademark SHERATON or that the disputed domain name might be of some type of economic advantage.
Therefore, the registration of a domain name incorporating a well-known or famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark may, in particular circumtances,constitute bad faith registration and this is the approach of the Panel in the present case (Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte,WIPO Case No. D2010-0456).
The Respondent’s exploitation of the Complainant’s goodwill for financial gain, apparently by perpetrating a fraud on unsuspecting job applicants, demonstrates the Respondent’s use in bad faith. Thus, in respect to the use of the disputed domain name, the Panel finds use in bad faith according to paragraph 4(b)(iv) of the Policy. The Respondent has registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
The Panel concludes that the Respondent’s registration and use of the disputed domain name are in bad faith. 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, Starwood Hotels & Resorts Worldwide, Inc.
Manuel Moreno-Torres
Sole Panelist
Date: October 1, 2013
Full & Egal Universal Law Academy