The Complainants are Starwood Hotels & Resorts Worldwide, Inc. ("Complainant Starwood") and Westin Hotel Management, L.P. ("Complainant Westin"), of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Gabe Mejia of Miami, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2015, originally involving only the disputed domain names and . On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 25, 2015 the Complainants filed an Amended Complaint adding the disputed domain name to this proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 21, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 28, 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainants are well-known providers of hotel services and related goods and services. The Complainant Westin owns numerous registrations for the mark WESTIN in connection with these goods and services (the "WESTIN Mark"), including U.S. Registration No. 1,320,080 for hotel and restaurant services, such registration alleging January 5, 1981 to be the date the mark was first used in interstate commerce for those services.
The Respondent registered the disputed domain names on July 5, 2015. The websites currently appearing at the Internet addresses associated with the disputed domain names display parking pages with sponsored links provided by the Registrar, each soliciting users to purchase the Registrar's services. 5. Parties' Contentions A. Complainants
The Complainants assert, among other things, that (i) the disputed domain names are identical to the registered WESTIN Mark; (ii) the Respondent lacks rights or legitimate interests in the disputed domain names because it has never been known by the disputed domain names and has received no license or consent to use the WESTIN Mark in any manner; and (iii) the Respondent registered and has used the domain names in bad faith by passively holding them when there are no conceivably legitimate uses for such disputed domain names that comprise such a well-known mark. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings 6.1 Preliminary Issue – Multiple Complainants
This Complaint has been brought by two Complainants, neither of which has clearly articulated its respective rights or ownership of the WESTIN Mark. Before addressing the merits of the claims under the three elements of paragraph 4(a) of the UDRP, the Panel will first evaluate whether it is proper to hear this dispute as one being brought by both Complainants.
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") summarizes the consensus view of UDRP panels on the consolidation of multiple complainants as follows:
UDRP panels have articulated principles governing the question of whether a complaint filed with the Center by multiple complainants may be brought against one or more respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation. In order for the filing of a single complaint brought by multiple complainants which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.
The Complainants have not requested that the claims of both of them be consolidated in this action. And the Complaint does not provide details about the relationship between the two Complainants other than to say that the Complainant Westin is an "affiliated entity" of the Complainant Starwood.
But guided by paragraph 10(c) of the Rules, which requires that the administrative proceedings take place with "due expedition," the Panel will consolidate the claims of both of the Complainants. The Panel notes that the records of the United States Patent and Trademark Office (e.g., in the record for Registration No. 1,320,080) identify the Complainant Westin as the owner of the WESTIN Mark, and that the Complainant Starwood is a general partner in the Complainant Westin's company (which is a Delaware partnership). The Respondent raises no arguments against consolidation (indeed, he has made no arguments at all), and the Panel finds that the Respondent will not suffer any prejudice from consolidation. 6.2 Substantive Issues
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that all three elements have been met in this case. A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainants must first demonstrate that they have rights in a trademark, and secondly, must demonstrate that the disputed domain names are identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainants are the owners of the WESTIN Mark, including a number of registrations for it. The Panel therefore turns to the second part of the inquiry and notes that the second levels of the disputed domain names incorporate the WESTIN Mark in its entirety with no additional elements. This is sufficient for the Panel to find identity between the disputed domain names and the Complainants' trademark, as the applicable Top-Level suffix in a domain name is usually disregarded under this test, except thus far generally in certain cases where the applicable Top-Level suffix may itself form part of the relevant trademark (see paragraph 1.2 of the WIPO Overview 2.0); Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206.
The Complainants subscribe to the principle expressed in paragraph 1.2 of the WIPO Overview 2.0, namely, that the generic Top-Level Domain ("gTLD") should be disregarded in this portion of the analysis. The Complainants also make the additional argument that the gTLDs in the present case, ".center," ".global" and ".support", exacerbate confusing similarity. The Panel finds that, given the introduction of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the Top-Level suffix of a domain name for the purpose of the assessment of identity or confusing similarity in a given case. There is nothing in the wording of the Policy that would preclude such an approach. The Panel considers, however, that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is "a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint" (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). The Complainants' case on this element of the Policy, with which the Respondent does not take issue, meets this threshold.
In these circumstances, the Panel finds that the disputed domain names are identical to a trademark in which the Complainants have rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in a domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. In the present case, the Panel finds that the Complainants have made out such a prima facie case through their assertions that the Respondent has never been known by the disputed domain names and has received no license or consent to use the WESTIN Mark in any manner. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain names. Having brought forth no such evidence, the Respondent has failed to meet its burden, and the Panel finds that the Complainants have established this second element under the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish a domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a Panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location."
The Panel is of the view that by placing the disputed domain names with a domain name parking service with sponsored links, the Respondent deliberately attracted, for commercial gain, Internet users to the webpage created by the Registrar by creating a likelihood of confusion with the WESTIN Mark. Moreover, given how widely known the WESTIN Mark is, and that registration of the WESTIN Mark predates registration of the disputed domain names by three decades, the Panel finds the Respondent could make no commercially legitimate use of the disputed domain names. Accordingly, the Complainants have met their burden under this third UDRP element. 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 the Complainant Starwood.
Evan D. Brown
Sole Panelist
Date: January 5, 2016
Full & Egal Universal Law Academy