Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Jingjing Tang of Beijing, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 19, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Response was filed with the Center on July 14, 2014.
On July 17, 2014, Complainant submitted a Supplemental Filing.
The Center appointed Yijun Tian as the sole panelist in this matter on July 22, 2014. 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.
Exercising its discretion under paragraphs 10 and 12 of the Rules, the Panel declines to consider the Complainant’s Supplemental Filing. 4. Factual Background A. Complainant
Complainants are Starwood Hotels & Resorts Worldwide, Inc., incorporated in Maryland, Sheraton International IP, LLC and Westin Hotel Management, L.P, incorporated in Delaware (collectively, “Complainant”). Complainant is one of the leading hotels and leisure companies in the world and owns, manages or franchises over 1,000 properties in approximately 100 countries.
Complainant owns numerous W HOTEL and W HOTELS trademark (“W Hotels Marks”) registrations across the world, including CTM Registration 5,719,067 since 2008, the US registration since 1999, and the Chinese registration since 2009. Complainant currently owns, manages or franchises forty-five (45) hotels under the W, W HOTEL and W HOTELS marks in twenty (20) countries.
Complainant also owns the WESTIN trademark (“WESTIN Marks”), among many others, which were registered worldwide, including CTM Registration since 2000, the US registration since 1985, and the Chinese registration since 1994 . Its WESTIN hotels, introduced in 1981, cater to both business and leisure travelers looking for spare treats and other comfort amenities.
Complainant also owns the ST. REGIS and other ST. REGIS related trademarks (“ST. REGIS Marks”) registration across the world, worldwide, including the US registration since 1995, and the Chinese registration since 1999 . Complainant has used its famous ST. REGIS Marks in connection with hotel services and related goods and services for more than a century.
In addition, Complainant operates domain names reflecting its marks in order to promote its goods and services, such as , , , and . B. Respondent
Respondent (identified as Jingjing Tang of Beijing, China) registered the disputed domain names , and all on May 9, 2014, well after the W HOTELS Marks, WESTIN Marks and ST REGIS Marks were registered. 5. Parties’ Contentions A. Complainant (a) The disputed domain names are identical to Complainant’s registered Marks
- The gTLD indicator “.club” cannot be taken into consideration when adjudging confusing similarity.
- Accordingly, for purposes of assessing similarity, the disputed domain name is identical to Complainant’s registered W HOTELS trademark, the disputed domain name is identical to Complainant’s registered WESTIN trademark and the disputed domain name is identical to Complainant’s ST. REGIS trademark.
- Upon seeing Respondent’s registrations of each of the disputed domain names, consumers will reasonably believe that these domain names are either owned by Complainant or are somehow related to or approved by Complainant, while that is not the case. (b) Respondent has no legitimate interest in the disputed domain names
- Respondent cannot demonstrate or establish any legitimate interest in the disputed domain names
- Since Complainant’s adoption and extensive use of the WESTIN, ST. REGIS, W, W HOTEL and W HOTELS marks predates Respondent’s registration of the disputed domain names, the burden is on Respondent to establish its rights or legitimate interests in the disputed domain names.
- Complainant has not granted Respondent any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s WESTIN, ST. REGIS, W, W HOTEL and W HOTELS marks.
- The disputed domain names are not, nor could they be contended to be, a name or nickname of Respondent, nor are they in any other way identified with or related to any rights or legitimate interests of Respondent.
- There is absolutely no basis for Respondent to claim that it has legitimately registered the disputed domain names, which use Complainant’s WESTIN, ST. REGIS, W, W HOTEL and W HOTELS trademarks in their entirety.
- Respondent was well aware of Complainant’s rights in the WESTIN, ST. REGIS and W HOTELS marks, as she received notice of Complainant’s rights in these marks from the Trademark Clearing House (“TMCH”) when it applied to register the disputed domain names (See Exhibit O to the Complaint).
- There is no reason that Respondent can point to that would support its need to register the disputed domain names as it has done. (c) Respondent registered and is using the disputed domain names in bad faith
- Complainant’s WESTIN, ST.REGIS, W, W HOTEL and W HOTELS marks are famous and enjoy international recognition.
- It is therefore inconceivable that Respondent was unaware of Complainant’s trademarks when it registered the disputed domain names.
- In any event, Respondent received notice of Complainant’s rights in the WESTIN, ST. REGIS and W HOTELS trademarks from the TMCH when it registered the disputed domain names.
- The fact that Respondent registered the identical and/or confusingly similar disputed domain names without authorization is, in and of itself, evidence of bad faith.
- Where, as here, Complainant’s trademarks are well known and recognized, the registration and commercial use of a domain name wholly incorporating the mark further evidences Respondent’s bad faith.
- The facts set forth above clearly demonstrate that Respondent is acting in bad faith.
- By registering and using the disputed domain names, Respondent is unfairly seeking to capitalize on the goodwill and fame of Complainant’s WESTIN, ST.REGIS, W, W HOTEL and W HOTELS trademarks and reap improper financial benefit in violation of the Policy, paragraph 4(b)(iv), which provides relief for a trademark owner when “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site. . ., by creating a likelihood of confusion” with Complainant’s Marks “as to the source, sponsorship, affiliation, or endorsement of [its] web site. . . or of a product or service on [its] web site….”
- The disputed domain names are not currently associated with active websites. “It has … been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use.”
- Respondent’s use of Complainant’s Marks is solely for the proposed trading on Complainant’s rights and reputation, a classic example of bad faith under the Policy.
- Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest in the WESTIN, ST.REGIS, W, W HOTEL and W HOTELS trademarks as evidenced by its use and registration of the trademarks, but also that Respondent has no legitimate interest in the disputed domain names and that Respondent’s sole basis for using and registering the disputed domain names must have been to profit unlawfully from the disputed domain names in bad faith. B. Respondent
Respondent’s contentions can be summarized (verbatim) as follows: (a)
- The letter “W” is one phonetic symbol of Chinese word “我” (Wǒ ), and the word “Hotels” is a very normal noun, one of them "" is very famous in the USA.
- is a common personal Blog, it is used for recording literature，sensibility and lifte (sic).
- Therefore we can consider easily that means “my personal hotel”.
- Actually this web is setting up right now. (b)
- "West+In" special means “in Chinese western”, "West is a normal noun, I”In”mean “在”,
- Many websites contain word “West”, such as (Chinese western web), and the owner of this web is in Shangxi Province, China. It is an official web.
- The website resolved by is now among the construction. (c)
- “Stregis”mean “Stre+GIS”. “Stre”is the abbreviation for “stress”, GIS is the abbreviation for "Geographic Information System".
- This web is just a club for geographic information.
Respondent does not intend to infringe trademarks deliberately, which are owned by other person or group.
Respondent did not register Email mala fide (sic). Litigation agent can search the domains which were registered by the email “xfblog@” because this email is a public email.
Respondent has many customers that register domain name in her company and use the same mode, including this email.
Respondent is not malicious to register the three disputed domain names;
It is not malicious use of these domain names, and there is no harm to Complainant’s brand;
What Respondent is doing is not for commercial purposes. The ‘club’ domain name itself is a circle and platform for who has a common interest. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by 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 Panel finds that Complainants have rights in numerous trademark registrations worldwide that consist of or contain the marks W HOTEL, W HOTELS, WESTIN, or ST. REGIS, including trademarks that are registered in China, since 1994. Complainants enjoy a widespread reputation as one of the leading hotels and leisure companies in the world and own, manage or franchise over 1,000 properties in approximately 100 countries.
The disputed domain name comprises the W HOTELS mark in its entirety. The only difference from the W HOTLES mark is the addition of the generic top-level domain (gTLD) “.club”. UDRP panels have consistently held that “[t]he applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 and cases cited therein). The Panel finds that the gTLD “.club” does do not eliminate the confusing similarity between Complainants’ registered W HOTEL mark and the disputed domain name .
In the same vein, the disputed domain name comprises the WESTIN mark in its entirety. The only difference from the WESTIN mark is the addition of the generic Top-Level Domain (gTLD) “.club”. The Panel finds that the gTLD “.club” does not eliminate the confusing similarity between Complainants’ registered WESTIN mark and the disputed domain name .
The disputed domain name comprises the essential part of ST. REGIS mark in its entirety. The only difference from the ST. REGIS mark is the missing of “.”, and the addition of the generic Top-Level Domain (gTLD) “club”. The Panel finds that these do not eliminate the confusing similarity between Complainants’ registered ST. REGIS mark and the disputed domain name .
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, 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).
The Panel therefore holds that Complainant fulfils 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 circumstances, any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate non commercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with 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 of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 and cases cited therein).
In the present case, Complainants have rights in the W HOTELS, WESTIN and ST. REGIS marks in many countries, including in China (Exhibits D-L to the Complaint). According to the information provided by Complainants, Respondent is not an authorized agent of the W HOTELS, WESTIN, or ST. REGIS branded hotels. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using or has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided persuasive evidence of legitimate use of the disputed domain names or credible reasons to justify the choice of the term “W HOTELS”, “WESTIN”, or “ST. REGIS”. In the Response, as to , Respondent argues that “the letter ‘W’ is one phonetic symbol of Chinese word ‘我’ (Wǒ), and the word ‘Hotels’ is a very normal noun”, and means ‘my personal hotel’”. As to , Respondent argues that “’West+In’ special means ‘in Chinese western’”. As to , Respondent argues that “’Stregis’ mean ‘Stre+GIS’... ‘Stre’ is the abbreviation for ‘stress’, GIS is the abbreviation for ‘Geographic Information System’”. The Panel finds these arguments are wholly unconvincing, and Respondent has not provided sufficient supporting evidence to back up its claims. Even if it had, the credibility of Respondent’s claims would in any event have been in doubt in the face of Complainant’s well-known marks (see SAP AG v. Pipeline Software, Inc. / Raju Patel,WIPO Case No. D2013-0502). Moreover, there has been no evidence to show that Complainants have licensed or otherwise permitted Respondent to use the W HOTELS, WESTIN, or ST. REGIS marks or to apply for or use any domain names incorporating the W HOTELS, WESTIN, or ST. REGIS marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names were registered on May 9, 2014, which is well after the date Complainants registered the W HOTELS, WESTIN, and ST. REGIS marks in China (since 2009, 1994 and 1999 respectively). The disputed domain names are identical or confusingly similar to Complainant’s W HOTELS, WESTIN, or ST. REGIS marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the evidence submitted by Complainant, the disputed domain names are not currently associated with active websites.
The Panel finds that Respondent has failed to produce any sufficient evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complainant fulfils the second condition of paragraph 4(a) of the Policy. 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 disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s web site or location. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the W HOTELS, WESTIN, and ST. REGIS marks with regard to its hospitality services. Complainant has registered the W HOTELS, WESTIN, and ST. REGIS marks in many countries, including in China. Based on the information provided by Complainant, Complainant is one of the leading hotels and leisure companies in the world and owns, manages or franchises over 1,000 properties in approximately 100 countries. Moreover, according to the information provided by Complainant, Respondent should have received notice of Complainant’s rights in the WESTIN, ST. REGIS and W HOTELS trademarks from the Trademark Clearinghouse (“TMCH”) when she registered the disputed domain names. As such, Respondent would have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names in 2014. The Panel finds that the Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. (See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610).
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s W HOTELS, WESTIN, and ST. REGIS marks. b) Used in Bad Faith
Based on the information provided by Complainant, the disputed domain names , and are currently inactive. In terms of inactive domain names, the WIPO Overview 2.0 provides: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” (Paragraph 3.2.) The WIPO Overview 2.0 further stated: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant is one of the leading hotels and leisure companies in the world and owns, manages or franchises over 1,000 properties in approximately 100 countries (as introduced above). Complainant registered W HOTEL Marks since 1999 (including the Chinese registration since 2009) (Exhibits D-F to the Complaint), registered the WESTIN Marks since 1985 (including the Chinese registration since 1994) (Exhibits G-I to the Complaint), and registered the ST. REGIS Marks since 1995 (including the Chinese registration since 1999) (Exhibits J-L to the Complaint). As such, Complainant’s W HOTELS, WESTIN, and ST. REGIS, arguably, are widely known trademarks. Taking into account all the circumstances of this case, the Panel concludes that the disputed domain names are used by Respondent in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: August 19, 2014
Full & Egal Universal Law Academy