The Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International IP, LLC (hereinafter as "the Complainant") of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Lin Qing Feng (林清枫) of Guangzhou, Guangdong, China; YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2015. On June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2015, 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 June 8, 2015 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 June 10, 2015.
On June 8, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 10, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due 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 in both Chinese and English, and the proceeding commenced on June 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2015.
The Center appointed Sok Ling MOI as the sole panelist in this matter on July 13, 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. 3.1 The Complainant's Unsolicited Supplemental Submission
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not expressly provide for unsolicited submissions, under paragraph 10(a) of the Rules, the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. This is the consensus view of previous UDRP panels.
A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not. (See NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.,WIPO Case No. D2008-1984).
On July 16, 2015, after the Panel is duly constituted, the Complainant sought to admit a copy of the Singapore Court of Appeal judgment that supposedly highlights the Complainant's rights in respect of the REGIS portion of the ST. REGIS trade mark. The Panel notes that the said judgment is dated November 29, 2013 and is by no means a recently released judgement. The Complainant did not provide any reason for the non-inclusion of this judgment in the supporting materials when filing the Complaint. In any event, the Panel does not consider the content of the submission essential to reaching a fair decision on the facts. Accordingly, the Panel is not prepared to accept the Complainant's unsolicited supplementary submission. 4. Factual Background
The Complainant is a leading global hotel and leisure company with over 1,000 properties in about 100 countries. Currently, the Complainant owns, manages or franchises over 30 St. Regis hotels worldwide, and has approximately 20 St. Regis projects under construction or opening soon. The Complainant's St. Regis hotels include the St. Regis Shenzhen in Shenzhen, China.
The Complainant owns several trade mark registrations for the ST. REGIS trade mark throughout the world in connection with its hotel services and related goods and services, including the following trade mark registrations (according to an independent search conducted by the Panel):
Mark
Register
Class
Registration No.
Registration Date
ST. REGIS
United States
41, 43, 44
3039374
January 10, 2006
ST. REGIS
International
43
1116440
March 5, 2012
ST. REGIS
CTM
43, 45
10929065
May 31, 2012
ST. REGIS
China
35
5488714
September 21, 2009
ST. REGIS & DEVICE
China
43
6792166
October 28, 2011
The Complainant has a prominent Internet presence. It operates websites at its registered domain names and other location-specific domain names such as and . These websites enable computer users to reserve rooms at the Complainant's St. Regis hotels.
The disputed domain name was registered on January 23, 2013, well after the Complainant's ST. REGIS trade mark was first registered in China and more than a century since the ST. REGIS mark was first used in commerce. It currently resolves to a website which shows the ST. REGIS trade mark and the offer for reservation of rooms at the St. Regis Shenzhen Hotel. 5. Parties' Contentions A. Complainant
The Complainant has used its ST. REGIS mark in connection with hotel services and related goods and services for more than a century. The Complainant's ST. REGIS mark is world famous, and its St. Regis hotels and resorts have since 1904 been known worldwide as premiere luxury hotels. In addition to extensive use of the ST. REGIS mark, the Complainant has obtained numerous registrations for this mark throughout the world in connection with hotel services and related goods and services.
A.1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The disputed domain name consists of a combination of the Complainant's ST. REGIS trade mark without the "ST." portion, the descriptive word "hotel" plus the ".com" generic Top-Level Domain ("gTLD") indicator. The "regis" portion of the disputed domain name is confusingly similar to the Complainant's ST. REGIS trade mark. The addition of the term "hotel" adds to rather than diminishes the likelihood of confusion. The gTLD indicator ".com" cannot be taken into consideration when judging confusing similarity.
Consumers who search the Internet for legitimate reservations at the Complainant's hotels may be directed to the website to which the disputed domain name resolves, and hence be misled into believing that the said website is owned, controlled, or approved by the Complainant.
A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant's adoption and use of the ST. REGIS trade mark pre-dates the Respondent's registration of the disputed domain name by several decades.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent (express or implied) from the Complainant to use the ST. REGIS trade mark in a domain name or in any other manner. Furthermore, the Respondent has never been authorized by the Complainant to supply or provide hotel reservation services online. The Respondent's use of disputed domain name to purportedly offer reservations services at the Complainant's St. Regis Shenzhen hotel does not constitute a right or legitimate interest.
There is no evidence that the Respondent is ever commonly known by the names "Regis" or "Regis Hotel", or that the Respondent has any plans to use the disputed domain name in connection with a bona fide use.
A.3. The disputed domain name was registered and is being used in bad faith.
The Complainant's ST. REGIS trade mark enjoys international recognition. It is inconceivable that the Respondent was unaware of the ST. REGIS trade mark when it registered the disputed domain name. The Respondent's use on its website of the Complainant's trade mark ST. REGIS is clear proof that the Respondent is aware of the fame of the ST. REGIS trade mark.
The Respondent is using the disputed domain name in connection with a website that is intended to look like the Complainant's official website for the St. Regis Shenzhen hotel. The Respondent appears to have registered the disputed domain name with the intention of leading the Complainant's customers to the Respondent's website purporting to offer reservation services at the St. Regis Shenzhen hotel.
The Respondent has unfairly capitalised on the goodwill and fame of the Complainant's ST. REGIS trade mark to lure consumers to its website and has improperly benefited financially in violation of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The disputed domain name is in the English language and refers to the English name for the property in question, The St. Regis Shenzhen.
(b) Prior UDRP proceedings (e.g., Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, WIPO Case No. D2013-0840and Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Lin Qing Feng, WIPO Case No. D2014-0261) involving the same parties have been conducted in the English language with no objection from the Respondent. In Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, supra, the panel decided that English shall be the language of the proceeding for the reason that "[t]he Respondent has communicated with counsel for the Complainant in English, clearly having read the demand letter that was sent to the Respondent in the English language."
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. There is no actual evidence before the Panel to indicate that there has been prior communication between the parties in English, nor is there evidence to conclusively establish that the individual respondent in Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, supra is the same person as the Respondent in the present case. On the other hand, requesting the Complaint to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and would cause delay to the proceeding.
Having considered all the circumstances of this case, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. In arriving at this decision, the Panel took the following factors into consideration:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the content of the Respondent's website reproduces various copyrighted images and logos of the Complainant, and reads almost like a Chinese translation of the Complainant's official website of its St. Regis Shenzhen Hotel. This suggests that the Respondent has sufficient knowledge of English;
(c) the Center has notified the Respondent of the proceeding in both Chinese and English;
(d) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(e) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Accordingly, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint as filed in English; (ii) that English shall be the language of the proceeding and the decision will be rendered in English. 6.2 Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the ST. REGIS trade mark by virtue of use and registration.
The disputed domain name is confusingly similar to the ST. REGIS trade mark because it incorporates a significant and dominant part of the Complainant's trade mark (i.e., "regis") in its entirety. The Panel agrees with the Complainant's argument that the use of the word "hotel" compounds the confusion, as it suggests connection to the Complainant's hotel business. The addition of the gTLD ".com" and hyphen "-" does not detract from the confusing similarity. The Panel therefore has no difficulty in finding that the disputed domain name is confusingly similar to the ST. REGIS trade mark in which the Complainant has rights.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974)
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Indeed, by claiming to accept reservations for rooms in the Complainant's St. Regis Shenzhen hotel despite the lack of affiliation or association with or authorization from the Complainant, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website "www." is somehow connected with the Complainant.
The Respondent has failed to respond. Since no response was filed, the prima facie case has not been rebutted.
Accordingly, the Complainant has satisfied the requirements of the second element under 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 name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or location or of a product.
The Panel finds that the Respondent has registered the disputed domain name in bad faith. The Respondent was clearly aware of the Complainant and of its ST. REGIS trade mark and hotels when it registered the disputed domain name. The fact that the Respondent purports to offer valid reservation services at the Complainant's St. Regis Shenzhen hotel, and that its website reproduces copyrighted images from the Complainant's official websites, augments this conclusion.
Moreover, the Respondent registered the disputed domain name with a privacy shield service to conceal its identity. Also, the contact information of the Respondent in the WhoIs database appears to be invalid as evidenced by the communication records provided by the Center. The Panel finds that the deliberate concealment of identity and provision of false contact information is yet further evidence of the Respondent's bad faith.
The Panel agrees with the Complainant's assertion that the Respondent is using the disputed domain name to take advantage of the similarity with the Complainant's ST. REGIS trade mark, to unfairly attract customers to its website. Further, by purporting to offer valid reservation services at the Complainant's St. Regis Shenzhen hotel despite the lack of affiliation or association with the Complainant, it is clear that the Respondent has intent to mislead consumers and Internet users into believing that its website "www." is owned by or somehow connected with the Complainant. In the Panel's opinion, there is therefore a high possibility that consumers and Internet users would be confused as to the sponsorship, affiliation and endorsement of the Respondent's website, and to the source of the products/services offered on the Respondent's website.
Whilst the Panel notes the inclusion of a disclaimer "非官方网站" (translated as "non-official website") in fine print in the footer of the Respondent's website, the Panel finds that this is insufficient to disassociate the Respondent from the Complainant and/or to dispel any potential confusion and/or deception in light of the other implicating factors (for example, the Respondent refers to the St. Regis Shenzhen hotel as "our hotel").
Accordingly, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain.
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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.
Sok Ling MOI
Sole Panelist
Date: July 27, 2015
Full & Egal Universal Law Academy