The Complainant is Starwood Hotels & Resorts Worldwide, Inc. of Stamford, Connecticut, United States of America (“US”) and Westin Hotel Management, L.P. of Stamford, Connecticut, US, represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Hyper.Directory Inc. of Ocala, Florida, US. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2014. On August 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name (the “Disputed Domain Name”). On August 5, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 August 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2014.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 10, 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. 4. Factual Background
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its affiliated entity Westin Hotel Management, L.P., a Delaware limited partnership (hereinafter, collectively, the “Complainant”).
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages, and franchises over 1,100 properties in approximately 100 countries, including in the city of Berlin, Germany. The Complainant owns the WESTIN trademark and uses it in connection with its goods and services in the hotel and leisure industry. Its WESTIN hotels, introduced in 1981, cater to both business and leisure travelers. There are presently more than 120 WESTIN hotels in over 30 countries worldwide.
The Complainant owns the following trademark registrations for the mark WESTIN: Mark Country Class Registration No. Registration Date
WESTIN
US
42
1,320,080
Feb. 12, 1985
WESTIN
US
41
1,720,799
Sept. 29, 1992
WESTIN
US
36
2,257,629
June 29, 1999
WESTIN
Germany
42
553083A
April 17, 1990
WESTIN HOTELS
Germany
43
1053987
Sept. 27, 1983
WESTIN
European Union
25, 41, 42
194,142
March 16, 2000
The Disputed Domain Name was registered on June 18, 2014, to the Registrant organization Hyper.Directory Inc. (hereinafter, the “Respondent”). The Complainant’s trademarks were all registered before the Respondent’s registration of the Disputed Domain Name. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has rights in the WESTIN trademark. The Complainant contends that the Disputed Domain Name is identical to the Complainant’s marks because it consists of the WESTIN mark in its entirety, and that the only difference between the Complainant’s mark and the Disputed Domain Name is the addition of the generic Top-Level Domain (“gTLD”) “.berlin.” The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant further alleges that the Respondent registered and uses the Disputed Domain Name in bad faith in view of the renown of the WESTIN mark and absence of likely legitimate uses by an unauthorized party like the Respondent. Consequently, the Complaint seeks to have the Disputed Domain Name transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, the complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
As set forth above, the Complainant is the owner of numerous worldwide trademarks for the mark WESTIN, and has used the WESTIN trademark for over thirty years. There are presently more than 120 WESTIN hotels in over 30 countries worldwide, including in Berlin, Germany. By any measure, the mark WESTIN is world renown. Accordingly, the Panel finds that the Complainant has trademark rights in the mark WESTIN.
The Disputed Domain Name is identical to the Complainant’s WESTIN mark. It contains the Complainant’s WESTIN mark in its entirety. The only difference between the Complainant’s mark and the Disputed Domain Name is the addition of the gTLD “.berlin”. It is well established that the addition of a gTLD extension typically does not distinguish a domain name from a complainant’s mark. See, e.g., Koninklijke Philips Electronics N.V. v. Alan Horswill,WIPO Case No. DTV2002-0004, concerning the domain names and it was said “[w]hilst it is recognized that the g[TLD], used for a domain name in combination with a mark of the Complainant, cannot be taken into consideration as an element which would exclude or diminish confusing similarity, in the present case the g[TLD] ‘.tv’ even increases the confusing similarity, as users will generally not understand it as reference to Tuvalu, rather as the common abbreviation for ‘television’. […] The domain names and are therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.” Here, like in the Koninklijke case, the Disputed Domain Name constitutes the entirety of the Complainant’s mark WESTIN, and the gTLD “.berlin” further increases the confusing similarity because the Complainant indeed has a WESTIN hotel in the city of Berlin, Germany .
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The evidence shows that the Complainant has exclusive rights in the WESTIN mark, is not affiliated with or related to the Respondent, and has not authorized the Respondent to register and use the Disputed Domain Name or the WESTIN mark. There is no evidence to suggest that the Respondent is known under the WESTIN mark. Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. There is no evidence that the Respondent has used or uses the domain name for its own legitimate commercial or noncommercial activities, and has not demonstrated any preparations for such use. Accordingly, in the absence of any submission of the Respondent, the Panel therefore concludes that the Complainant has made out its unrebutted prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel therefore finds that the evidence in the record is sufficient to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and thus the Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and bad faith use separately below.
As already mentioned, the Respondent did not file a response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the Disputed Domain Name. Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts. See Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944.
First, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Bad faith can be inferred based on the fame of the Complainant’s marks, such that the respondent was aware or should have been aware of the complainant’s mark and claims of rights thereto (particularly in view of the complainant’s use of its mark on the Internet). Moreover, the registration of a domain name that is similar to a distinctive trademark by the Respondent, when the respondent has no relationship to that mark may suggest bad faith. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319. Here, given the undisputed facts, the Panel finds it highly doubtful that the Respondent, which has no relationship to the WESTIN mark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the WESTIN mark. The only reasonable conclusion to draw is that the Respondent deliberately sought to misappropriate the Complainant’s name with a view to using that name in some future venture, whether by selling or renting the Disputed Domain Names to others, by purporting to provide a business or service related to the Complainant, or by engaging in some other unlawful activity. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.
Second, whether the Respondent has usedthe Complainant’s name in bad faith is less clearly evident on the facts. Indeed, the Respondent’s conduct is distinctive in the fact that it has registered, but does not appear to have used, the Disputed Domain Name in any distinctive way. For example, there is no evidence that the Respondent has used the domain name to attract the Complainant’s customers to the Respondent’s business, nor even that the Respondent has any business at all, other than registering the Disputed Domain Name for some as yet undetermined design. There is no evidence that the Respondent sought to sell the Disputed Domain Name to others, including the Complainant, but instead has remained wholly silent in the face of the Complainant’s assertions about the registration of the Disputed Domain Name. Even so, given the undisputed facts, the Panel reasonably concludes that the Respondent is a cybersquatter even though its exact purpose is as yet undetermined, other than to deliberately misappropriate the Complainant’s well-known WESTIN mark. This is a classic case of passive holding. See Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615.
Indeed, the very act of having acquired the Disputed Domain Name raises the probability of the Respondent using it in a manner that is contrary to the Complainant’s legal rights and legitimate interests. Moreover, the Respondent’s registration of the Disputed Domain Name prevents the Complainant from reflecting its own mark in that corresponding domain name should it so wish. See, e.g., Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763.
For the above reasons, pursuant to the third criterion, paragraph 4(a) of the Policy, the Panel finds that Complainant has shown that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent. 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.
Andrew J. Park
Sole Panelist
Date: September 24, 2014
Full & Egal Universal Law Academy