The Complainant is Starwood Hotels & Resorts Worldwide, Inc. of Stamford, Connecticut, United States of America ("US"), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Whois Privacy Protection Service Inc. of Kirkland, Washington, US / Alexander Vasquez, Personal of La Union, El Salvador. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended 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 November 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2014. The Center received an informal email communication from the Respondent on November 22, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on December 1, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 3, 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 Complainant is a hotel and leisure company incorporated in the United States of America with operations in approximately 100 countries. In particular, it operates the W Barcelona, a well-known hotel which has awarded several prizes such as the Best International Urban Hotel by Condé Naste Traveler and Spain's Leading Hotel by the World Travel Awards (Exhibit D to the Complaint).
The Complainant is the owner of the trademarks W, W HOTEL and W HOTELS, which are protected in several countries around the world in connection with hotel and related goods (Exhibits E and F to the Complaint). In particular the Complainant is the owner of the United States of America trademark Reg. No. 2,289,607 for W, dated October 26, 1999, covering services in class 42, as well as of the European Community Trademark No. 5,719,067, dated January 30, 2008 for W HOTELS in class 43 (Exhibit E to the Complaint).
The disputed domain name was registered by the Respondent on July 5, 2014 and currently does not resolve to an active webpage. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is one of the leading hotel and leisure companies in the world, owning, operating, managing or franchising over 1,000 properties in approximately 100 countries under the famous names W, SHERATON, WESTIN, ST. REGIS, among others.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant's well-known hotel in Barcelona as well as to its reputable trademarks W, W HOTEL and W HOTELS, creating a likelihood of confusion.
Moreover, the website that was associated with the disputed domain name was nothing more than an informational website on the Complainant's W Barcelona hotel, reproducing most of the images from the Complainant's own website, without any authorization as well as without any disclaimer indicating that the website was not authorized or otherwise affiliated with the Complainant (Exhibit I to the Complaint).
Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(a) the Respondent is not affiliated with the Complainant in any way nor has it been licensed or authorized by the Complainant to register and use the Complainant's trademarks in the disputed domain name;
(b) the Respondent is not commonly known either by the "W" or "W Barcelona" names;
(c) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;
(d) the Respondent knowingly violated the Complainant's rights in the W, W HOTEL and W HOTELS trademarks without any legitimate interest in the disputed domain name.
As to the registration of the disputed domain name in bad faith the Complainant asserts that the combination of the famous W, W HOTEL and W HOTELS trademarks with the geographic term "Barcelona" in addition with the reproduction of images from the Complainant's own websites of its W Barcelona hotel in the website that resolved from the disputed domain name shows that the Respondent was evidently aware of the Complainant at the time of registration of the disputed domain name.
Lastly, also according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant's trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, fostered or recommended by the Complainant, what is not true. B. Respondent
The Respondent did not formally reply to the Complainant's contentions, having merely sent on November 22, 2014 an email to the Center stating that he would "remove the website from my [his] server to avoid problems". 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established rights in the W, W HOTEL and W HOTELS trademarks duly registered in several countries around the world (Exhibits E and F to the Complaint).
In this case, the addition of the geographic term "Barcelona" does not avoid a likelihood of confusion considering that the Complainant operates a "W hotel" in that city.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Panel notes that the Respondent's communication with the Center clearly indicates that he makes no claim whatsoever to any rights or legitimate interests in the disputed domain name.
As decided in past similar UDRP cases where "an exchange of e-mails between the Center and the Respondent subsequent to the initiation of the dispute and at a time when the Respondent had been served with the Complaint" in which "exchange of e-mails the Respondent makes no claim whatsoever to rights or legitimate interests in the domain name", the Panel can establish "on the balance of probabilities that the domain name in issue can only refer to the Complainant's […] trademark and that the Respondent has no rights or legitimate interests in the domain name in issue". (Produits Berger v. Matthew ShewchukWIPO Case No. D2004-1083).
Furthermore, the reproduction on the website that resolved from the disputed domain name of information on the Complainant's W Barcelona hotel, as well as of images from the Complainant's own websites, without any authorization as well as without any disclaimer indicating that the website was not authorized or otherwise affiliated with the Complainant are further indications that the Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met. C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith use and registration of the disputed domain name given that:
a) the Complainant's trademark is registered worldwide and is well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
c) the Respondent has taken active steps to conceal his true identity, by choosing to operate under a privacy shield/privacy protection service;
d) the Respondent's address made available at the WhoIs database was false or incomplete;
e) the Respondent evidently was aware of the Complainant and its trademarks in view of the contents of the website that resolved from the disputed domain name;
f) the Respondent did not make any disclaimer in the website that resolved from the disputed domain name stating that it is not affiliated with the Complainant albeit reproducing images and information from the Complainant's websites.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 9, 2014
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