Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC and The Sheraton LLC of Stamford, Connecticut, United States of America (collectively referred to as “Complainant”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Robert Tokich, Harrison, Australian Capital Territory, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 5, 2015, 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 proceeding commenced on June 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2015. On June 29, 2015, Respondent submitted an email to the Center. On June 30, 2015, Complainant submitted an email commenting on Respondent’s email dated June 29, 2015.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 7, 2015. 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
Complainant is a group of companies active in the hotel and leisure business which is incorporated under the laws of Maryland, United States of America and Delaware, United States of America, respectively. Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the designation “Sheraton”, including the following, all of which predate the registration of the disputed domain names:
- Word mark SHERATON, United States Patent and Trademark Office (USPTO), Registration No.: 954,454, Registration Date: March 6, 1973, Status: Active;
- Word mark SHERATON, United States Patent and Trademark Office (USPTO), Registration No.: 1,884,365, Registration Date: March 14, 1995, Status: Active;
- Word mark SHERATON, IP Australia, Registration No.: 395555, Registration Date: August 15, 1983, Status: Active;
- Word mark SHERATON, IP Australia, Registration No.: 603033, Registration Date: May 24, 1993, Status: Active; and
- Word mark SHERATON, Office for Harmonization in the Internal Market (OHIM), Registration No.: 000154450, Registration Date: January 20, 1999, Status: Active; listed with the Trademark Clearing House (TMCH).
Moreover, Complainant has evidenced to be the owner, inter alia, of the domain names as well as which redirect to Complainant’s official websites enabling Internet users to make reservations at Complainant’s Sheraton Hotels and to access information on those hotels and related services.
The disputed domain names , , , , , as well as were registered between August 13, 2013 and October 26, 2014, each redirecting to an almost identical website set up by the Registrar.
Complainant requests that the disputed domain names be transferred to Complainant Starwood Hotels & Resorts Worldwide, Inc. 5. Parties’ Contentions A. Complainant
Complainant contends to be one of the leading hotel and leisure companies in the world that owns, manages or franchises over 1,100 properties in approximately 100 countries. Complainant reports to have used the SHERATON trademark in connection with its goods and services in the hotel and leisure industry for over 80 years and that the SHERATON brand, soon after being introduced to the public in 1928, proved to be so popular and relied upon that Complainant became the first hotel chain to be listed on the New York Stock Exchange. Complainant points to the fact that there are over 400 Sheraton Hotels worldwide nowadays and that the SHERATON trademark, as a result of its extensive use as well as the expenditure of large sums in promoting it on television, in print advertisements, on the Internet and in other media, has meanwhile attained considerable fame and wide spread acclaim in the United States of America, Australia, and throughout the world.
Complainant suggests that the disputed domain names are at least confusingly similar to Complainant’s SHERATON trademark since (1) generic Top-Level Domain (gTLD) indicators typically are not taken into consideration when judging confusing similarity, (2) each of the disputed domain names incorporates the SHERATON trademark in its entirety and (3) some of the disputed domain names merely add generic or highly descriptive terms “projects” or “group” which do not distinguish the disputed domain names from Complainant’s SHERATON trademark.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Complainant has not granted Respondent any license, permission or other right by which Respondent could own or use any domain names incorporating Complainant’s SHERATON trademark, (2) there is no evidence that Respondent intends to use the disputed domain names in any way that would create a bona fide right to have registered them and (3) since Complainant’s adoption and extensive use of the SHERATON trademark predates Respondent’s registration of the disputed domain names, the burden is on Respondent to establish his rights or legitimate interests therein.
Finally, Complainant asserts that the disputed domain names were registered and are being used in bad faith by Respondent since (1) it is inconceivable that Respondent was unaware of Complainant’s SHERATON trademark not only because the SHERATON trademark is one of the most famous trademarks in the travel and leisure industry with international recognition throughout the world, but also because Respondent received notice of Complainant’s rights in the SHERATON trademark from the TMCH when it registered the domain names , as well as , (3) the fact that Respondent registered identical or confusingly similar domain names without authorization is, in and of itself, evidence of bad faith and (4) the fact that the disputed domain names are not currently associated with active websites is not against the finding of bad faith since inaction is as well within the bad faith concept. B. Respondent
Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names , , , , , as well as are at least confusingly similar to the SHERATON trademark in which Complainant has shown to have rights.
All of the disputed domain names incorporate the SHERATON trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in numerous UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the URDP. Accordingly, the mere addition of the generic and descriptive terms “group” as well as “project” to the disputed domain names , , as well as is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s SHERATON trademark therein.
Finally, UDRP panels also agree that the applicable top level suffix in the disputed domain name would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration; in the case at hand, there is no reason to make an exception from this rule (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent makes a legitimate, noncommercial or fair use thereof.
Respondent has not been authorized to use Complainant’s SHERATON trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names.
Finally, Respondent so far has not made any use of the disputed domain names, neither for a bona fide offering of goods or services nor for a legitimate, noncommercial or fair use. It has been held by many UDRP panels that a passive holding of a disputed domain name in itself is typically not capable of creating any right of respondent therein (Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand in his email of June 29, 2015, Respondent did not specifically address Complainant’s allegations.
Therefore, the Panel finds that Complainant has also satisfied Paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
The Panel agrees with Complainant’s line of argumentation that it is inconceivable that Respondent was unaware of Complainant’s SHERATON trademark when he registered the disputed domain names. Many UDRP panels so far have found that the SHERATON trademark is one of the most famous trademarks in the travel and leisure industry, with international recognition throughout the world (see e.g. Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Wendy Webbe and Ancient Holding, LLC,WIPO Case No. D2014-0260; Starwood Hotels & Resorts Worldwide Inc., Sheraton International IP, LLC v. Subhi Abdul Khaleq d/b/a Sheraton Amman,WIPO Case No. D2012-1650). Moreover, Complainant contends that Respondent must have received notice of Complainant’s rights in the SHERATON trademark from the TMCH when registering the disputed domain names , as well as .
The Panel certainly takes notice of the fact that the disputed domain names so far only resolve to a standardized website set up by the Registrar and apparently have not been used by Respondent as such. There is, however, a consensus view among UDRP panels that such passive holding does not prevent a finding of bad faith if an examination of all the circumstances of a case still indicates that respondent is acting in bad faith; indicative circumstances may be that complainant has a well-known trademark and that respondent has not filed any response to the complaint or, as in this case, a substantive response to complainant’s contentions (see WIPO Overview 2.0, paragraph 3.2). Since all of these circumstances are fulfilled in the case at hand, and in the absence of any other reason as to why Respondent should rely on the disputed domain names, the Panel has no difficulty in finding that Respondent has registered and uses the disputed domain names in a manner which takes unjustified and unfair advantage of the SHERATON trademark’s fame and must, therefore, be considered as bad faith within the meaning of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under the Policy.
In relation to the above findings, the Panel has also taken into account the Parties’ pre-procedural correspondence (namely Complainant’s cease and desist letter of October 28, 2014 and subsequent e-mails of Respondent dated November 13, 2014 and of Complainant dated November 17, 2014) as well as Respondent’s e-mail directed to the Center on June 29, 2015 and Complainant’s response thereto of June 30, 2015. However, the exchanged letters and e-mails do not contain any relevant information that changes the Panel’s decision. 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 names , , , , , and be transferred to Complainant Starwood Hotels & Resorts Worldwide, Inc.
Stephanie G. Hartung
Sole Panelist
Date: July 22, 2015
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