The Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International IP, LLC, Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“US”).
The Respondent is Ryan G Foo, PPA Media Services, Santiago, Chile / Whois Privacy Corp. Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 24, 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 September 29, 2015.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2015.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 29, 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
The Complainant, Starwood Hotels & Resorts Worldwide, Inc. is a US hotel and leisure company registered under the laws of the State of Maryland and its affiliated entities are The Sheraton LLC and Sheraton International IP, LLC.
The Complainant submitted evidence that it holds national trademark rights for SHERATON (the “Trademark”) in the US, in the Bahamas and in many other countries throughout the world for several classes in connection with its hotel services and related goods and services.
The SHERATON Trademark has been used in connection with goods and services in the hotel and leisure industry for more than 80 years. There are more than four hundred hotels worldwide under the SHERATON Trademark. Throughout the extensive use of the SHERATON Trademark in promotion on television, in advertisement, on the Internet and other media, the Trademark has accumulated considerable fame throughout the world. Previous UDRP panels have considered the SHERATON Trademark as one of the most famous trademarks in the travel and leisure industry.
Further the Complainant’s domain name registrations include and , each of which is also accessible though other Complainant owned domain names and websites.
The disputed domain name was registered on June 4, 2002, well after the Complainant secured rights to the SHERATON Trademark around the world. The disputed domain name redirects visitors to a parked website corresponding to the domain name containing links to websites that directly compete with the Complainant.
On July 14, 2015, the Complainant sent a cease-and-desist letter by email to the Respondent. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to the registered rights in which the Complainant has rights. The disputed domain name incorporates in its entirety the Complainant’s marks and is identical but for the fact that the domain name replaces the “o” in the Complainant’s SHERATON Trademark with an “a”.
The Complainant further submits that the addition of a generic Top-Level Domain (gTLD) “.com” in the disputed domain name cannot be taken into consideration when adjudging confusing.
The Complainant refers to previous UDRP panels that held that in particular where the Complainant’s mark is well-known, a mere addition of a minor misspelling or typographical error of a mark, does not create a new or a different mark in which the Respondent has legitimate rights.
Lastly, the Complainant contends that the website corresponding to the disputed domain name will confuse consumers into believing the website is the Complainant’s website, or related to or approved by Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
First, the Complainant contends that through the adoption and extensive use of the SHERATON trademark predating the Respondent’s registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name.
The Complainant further demonstrates that it has trademark rights for SHERATON and a license or authorization was not granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.
Thirdly, the Complainant argues that there is no evidence that the Respondent ever has been known by the disputed domain name and therefore has no legitimate interest or rights in it.
The Complainant finally submits, on the basis of findings of other UDRP panels, that a domain name which is used to direct consumers to the Complainant's direct competitors demonstrates that the Respondent has no legitimate interests in the disputed domain name and the use of the disputed domain name as a parked website generating pay-per-click or referral revenue does not constitute a bona fide offering of goods or services nor a legitimate interest.
(c) The disputed domain name was registered and is being used in bad faith.
First the Complainant contends that due to the famous trademark and its widespread international recognition the registration by the Respondent of a confusingly similar domain name is evidence of bad faith registration.
Further, the Complainant refers to previous UDRP panels that found typosquatting a virtually per se registration and a use of bad faith.
The Complainant also refers to previous UDRP panels’ findings where a respondent is trading for the commercial gain on the good name and worldwide fame and reputation of the complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill the complainant has established.
The Complainant further submits that the fact that the website corresponding to the disputed domain name redirects automatically to a parked webpage that represents the same service – “hotel reservations” – offered by the Complainant and links to competitors of the Complainant, supports the Complainant’s conclusion that the Respondent knew of the Complainant and hopes to attract and confuse Internet users that are looking for the Complainant. Because the only use of the disputed domain name is to cause confusion with the Complainant, the Complainant alleges that the Respondent registration of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to a website creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has evidenced that it has registered trademark rights to SHERATON.
Secondly, the disputed domain name fully incorporates the Complainant’s SHERATON Trademark in which the Complainant has exclusive rights but for the fact that the disputed domain name replaces the letter “o” with an “a”. Where the disputed domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish identity or confusing similarity for purposes of the Policy. (EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.,WIPO Case No. D2000-0995). Also, previous UDRP panels have established that the SHERATON Trademark is a famous trademark (Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc., Westin Hotel Management, L.P. v. Caribbean Online International Ltd.,WIPO Case No. D2007-1406; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Wendy Webbe and Ancient Holding, LLC,WIPO Case No. D2014-0260). Previous UDRP panels have established that a domain name is confusingly similar to a trademark when it incorporates a well known mark in its entirety. (America Online, Inc v. Anson Chan,WIPO Case No. D2001-0004; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc., Westin Hotel Management, L.P. v. Caribbean Online International Ltd., supra).
A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10, and the relevant decisions cited therein). Accordingly, regarding the Complainant’s trademark SHERATON, this Panel finds that the disputed domain name which contains an obvious misspelling of the Complainant’s SHERATON Trademark is confusingly similar to such Trademark.
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s SHERATON Trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
This Panel finds in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. Thus, the Respondent has no rights in the trademark SHERATON.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The website corresponding to the disputed domain name directs Internet users automatically to a parked website containing links to the Complainant’s competitors. In particular, this Panel has considered the Complainant’s evidence of the website corresponding to the disputed domain name and finds that it redirects to a webpage corresponding to the domain name with pay-per-click links to similar services of competitors of the Complainant. Hence this Panel finds, similarly to other UDRP panels, that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name as it leads Internet users to the website of the Complainant’s direct competitors. (Alstom v. Yulei,WIPO Case No. D2007-0424).
This Panel finds, similar to other UDRP panels, that the use of a domain name to post parking and pay-per-click links does not of itself confer rights or legitimate interest arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. (Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
Accordingly, this Panel finds that the Respondent must have had full knowledge of the Trademark and that its only intention was to mislead Internet users to one or more other commercial sites and thus generate traffic and income by free-riding on the good reputation of the Complainant and its Trademark.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would evidence “registration and use of a domain name in bad faith.”
First of all, this Panel finds similar to other UDRP panels that in case of a famous and widespread internationally recognized trademark, it is inconceivable that the Respondent was unaware of the Complainant and its Trademark before registering the disputed domain name (Heineken Brouwerij B.V. v. Mark Lott,WIPO Case No. D2000-1487).
Secondly, this Panel asserts, similarly to other UDRP panels, that the use of misspellings alone may be sufficient to prove bad faith (AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937; Arthur Guinness Son & Co. (Dublin) Ltd. v. Dejan Macesic, WIPO Case No. D2000-1698). Such behavior is indicative of bad faith on the part of the Respondent.
Lastly, this Panel believes, after reviewing the website as evidenced by the Complainant that the Respondent must have known and been aware of the rights on the prior SHERATON Trademark, since the Respondent correctly provided links to the competitors of the Complainant offering similar services, on the web page corresponding to the domain name to which the web page corresponding the disputed domain name automatically redirects. Therefore the Respondent's activity violates paragraph 4(b)(iv) by intentionally attracting for commercial gain, Internet users to its parked website and other on-line locations through the referred links by creating a likelihood of confusion with the Complainant’s SHERATON Trademark.
In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under 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.
Benoit Van Asbroeck
Sole Panelist
Date: November 12, 2015
Full & Egal Universal Law Academy