WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sheraton LLC v. Susan Tibbets
Case No. D2006-0831
1. The Parties
The Complainant is The Sheraton LLC, New York, United States of America, of United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Susan Tibbets, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed Domain Names:
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2006. On June 30, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Names at issue. On June 30, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2006.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 16, 2006. 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
Sheraton is a subsidiary of Starwood Hotels & Resorts Worldwide, Inc. (“Starwood”). Starwood is one of the world’s largest hotel and leisure companies. Sheraton owns several trademarks and service marks for THE PHOENICIAN and THE PHOENICIAN RESORT (collectively, the “Phoenician Marks”).
Sheraton has used the Phoenician Marks since at least as early as 1988, in connection with its high quality hotel services. As a result of its unique style and standards of excellence, the Phoenician Resort, which is located in Phoenix, Arizona, is world-renowned.
Sheraton makes extensive use of the Phoenician Marks in connection with its hotel and leisure services. Through its widespread use in connection with hotel and leisure services, the Phoenician Marks have become uniquely associated with Sheraton and its services.
In addition to its extensive use of the Phoenician Marks, Sheraton has obtained several federally registered trademarks and service marks for the Phoenician brand in connection with its hotel and leisure-related goods and services. For example, the United States Patent and Trademark Office (“USPTO”) has granted to Sheraton federal trademark and service mark registrations in numerous classes of goods and services, including, without limitation, the following:
June 24, 2003
April 1, 1997
The Phoenician Resort
February 28, 1995
March 10, 1987
July 4, 1989
In connection with its hotel and leisure services, Sheraton has established a website located at “www.thephoenician.com,” which enables computer users to access information regarding Sheraton’s Phoenician Resort and related leisure services and to learn more about the Phoenician Resort itself.
Sheraton recently became aware that Respondent had registered the three Domain Names <phoenicianhotel.com>, <thephoenicianhotel.com>, and <thephoenicianresort.com> (collectively “the Domain Names”).
When a user types “www.phoenicianhotel.com” into the address bar of an Internet browser, he or she is directed to a page that says, “This is a free Starter Web Page courtesy of GoDaddy.com.”
When a user types “www.thephoenicianhotel.com” or “www.thephoenicianresort.com” into the address bar of an Internet browser, he or she is directed to a NetNation website that says, “the web site you requested is currently unavailable.”
On April 17, 2006, after Sheraton discovered Respondent’s Domain Names, Starwood’s Assistant General Counsel, Ainslee Schreiber, sent a cease and desist letter to Susan Tibbets informing her of Sheraton’s concerns and requesting that Tibbets immediately transfer the Domain Names to Starwood. She requested a response within seven days. Ms. Tibbets responded on April 25, 2006, stating that she would “consider relinquishing the names to Starwood Hotels for fair barter.”
Ms. Schreiber replied on May 4, 2006, explaining that Starwood does not barter for Domain Names incorporating its trademarks. She indicated, however, that Starwood would pay an amount certain in out-of-pocket expenses in acquiring the Domain Names, solely for the sake of settlement. Respondent did not respond to this message, and did not respond to two subsequent messages from Ms. Schreiber, explaining that, absent a signed transfer agreement, Starwood would to take action for recovery of the domain names.
5. Parties’ Contentions
A. The Domain Names Are Identical or Confusingly Similar to the THE PHOENICIAN Marks.
Complainant contends that Respondent’s Domain Names are identical or confusingly similar to the Phoenician Marks. Respondent has incorporated Complainant's exact Phoenician Marks into the Domain Names.
Internet users who intend to visit one of Complainant's websites to acquire information about the Phoenician Resort or to book a room at the resort may inadvertently type one of the Domain Names into the address bar of their web browser, only to be misdirected to one of Respondent’s websites. As a result, Internet users may be annoyed and confused by their inability to reach Complainant's real site directly. The confusing similarity is only compounded by the fact that the Complainant owns and uses the “thephoenician.com” Domain Name -- a name closely similar to Respondent’s Domain Names -- to direct Internet users to its official website.
Numerous WIPO panels have held that a Domain Name is confusingly similar to a trademark when the Domain Name incorporates the mark in its entirety. It is equally well-recognized that the adaptation of an established trademark in a Domain Name by the addition or insertion of words or acronyms does not escape a finding of confusing similarity.
B. Respondent Has No Rights or Legitimate Interests in the Domain Names.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Names. Respondent has no connection or affiliation with Sheraton or Starwood and has not received from Sheraton or Starwood any license or consent, express or implied, to use the Phoenician Marks in a Domain Name or in any other manner. Respondent has never been known by any of the Domain Names.
Finally, Respondent’s misappropriation of the Domain Names was no accident. Where a mark is famous, as in the case of the Phoenician Marks, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. Accordingly, a “trader” such as Respondent could have no legitimate interest in the Phoenician Marks. Respondent lives in Phoenix, the same city in which Complainant’s famous hotel, The Phoenician Resort, is located. Respondent registered “phoenician” in combination with “hotel” and resort” in an obvious attempt to trade upon the valuable goodwill associated with the Phoenician Marks in Phoenix and nationwide.
C. Respondent Has Registered and Is Using the Domain Names in Bad Faith.
i) Respondent Registered the Domain Names in Bad Faith.
Complainant contends that Respondent registered the disputed Domain Names in bad faith by doing so with knowledge of Complainant’s rights in the Phoenician Marks. It is simply inconceivable that Respondent was unaware of Complainant’s rights in the Phoenician Marks when Respondent lives in Phoenix -- the site of Complainant’s Phoenician Resort. Respondent’s decision to combine “phoenician” with “hotel” and “resort” in her Domain Names to form the Phoenician Marks, when she could have chosen any other terms, is further evidence of her intent to trade on Complainant's goodwill in registering the three Domain Names at issue in this Complaint.
Even aside from Respondent’s close proximity to the resort itself, she would almost surely be aware of the Phoenician Marks since these marks achieved broad fame and have been used in connection with a resort that has garnered prestigious awards, including the Five Diamond Award and the Conde Nast award. An Internet search would have revealed Complainant’s extensive use of the Phoenician Marks as source identifiers.
Complainant’s rights in the Phoenician Marks also would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online. Respondent is thus deemed to have constructive notice of Complainant's trademark rights by virtue of Complainant’s public use and federal registrations of the Phoenician Marks.
Finally, Respondent has attempted to sell the Domain Names to Complainant for an unspecified amount, implicitly -- through her silence -- rejecting Complainant's offer to reimburse her for her out-of-pocket registration expenses. This attempt to extort money for registration of those names that rightfully belong to the Complainant's is further evidence of Respondent’s unlawful behavior in registering those names.
(ii) Respondent is Using the Domain Names in Bad Faith.
Complainant states that it is inconceivable that Respondent’s use of Complainant’s exact marks can be construed as anything but bad faith. Given Respondent’s complete incorporation of Complainant’s famous Phoenician Marks, it could not be more evident that Respondent intentionally registered confusingly similar Domain Names to divert Internet traffic to her sites. Additionally, Respondent’s method of infringement -- using the exact Phoenician Marks to lure consumers to competing websites -- demonstrates bad faith use under the Policy.
Respondent must have expected that any use of the Infringing Domain Names would cause harm to Complainant. The Infringing Domain Names -- which incorporate the exact Phoenician Marks -- are so “obviously indicative” of Complainant’s services that Respondent’s use of the Infringing Domain Names would “inevitably lead to confusion of some sort.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence of record supports that the Center sent the Complaint by courier service to the address shown in the registration data, as required, and that it was delivered. The evidence also shows that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules. The Panel thus concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate.”
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
The evidence demonstrates that Complainant possesses established legal rights in the registered marks THE PHOENICIAN and THE PHOENICIAN RESORT with respect to a hotel and resort. Respondent’s domain <thephoenicianresort.com> is identical to one of Complainant’s registered service marks, THE PHOENICIAN RESORT, except for the addition of the upper level domain “.com”. “The intentional registration of a Domain Name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999).
Respondent’s Domain Name <thephoenicianhotel.com> incorporates all of several of Complainant’s THE PHOENICIAN marks but adds the word “hotel.” Respondent’s <phoenicianhotel.com> Domain Name incorporates the word “Phoenician” from Complainant’s marks and adds the word “hotel.” In the Panel’s view, both Domain Names are confusingly similar to Complainant’s registered trade and service marks.
A Domain Name is confusingly similar to a trademark when the Domain Name incorporates the mark in its entirety. See, e.g., Am. Online, Inc. v. aolgirlsgonewild.com, NAF Case No. FA0207000117319 (September 19, 2002) (“aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”). “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087, quoting, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See, The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo!, Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark); Revlon Consumer Prods. Corp. v. Laurent D. Morel, WIPO Case No. D2002-0215 (the “neutral” addition of “girls” in the <revlongirls.com> Domain Name was a difference insufficient to avoid confusion with registered mark); Sony Corp. v. Park Kwangsoo, WIPO Case No. D2001-0167 (<newsony.com> confusingly similar to Complainant’s SONY mark).
Accordingly, Respondent’s addition of a descriptive word like “hotel” or "resort" to the word “Phoenician” does not negate the confusing similarity between the Domain Names and Complainant’s trademarks. The addition of such inconsequential material does not detract from the association between the word “Phoenician” and Complainant.
The Panel concludes that the Domain Names at issue are identical or confusingly similar to Complainant’s registered trade and service marks, and that Complainant has established the first element of its case.
B. Rights or Legitimate Interests
Respondent has not answered the Complaint and has done nothing to establish that she has rights or legitimate interests in the name “Phoenician” or any of the three disputed Domain Names. See Policy, paragraph 4(a)(ii). While the Panel might infer a lack of rights or legitimate interests from Respondent’s failure to come forward with a justification, there is also sufficient record evidence to establish that Respondent has none. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.
There is no evidence that Respondent is using the Domain Names in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c)(i). In fact, Respondent appears not to be offering any goods or services for sale and appears to be sitting on the names, i.e. she is cybersquatting.
In the absence of any response or controverting evidence, the Panel accepts Complainant’s verified contentions that Respondent has no connection or affiliation with Sheraton or Starwood and that Sheraton or Starwood has not granted Respondent any license or consent, express or implied, to use the Phoenician Marks in a Domain Name or in any other manner. There is no evidence that Respondent has ever been known by any of the Domain Names. See, Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610, (Respondent had no rights or legitimate interests in the Domain Name because there was no evidence that Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the mark; nor was Respondent commonly known by the Domain Name or making any legitimate noncommercial or fair use of the Domain Name).
The Panel agrees with Complainant’s contention that Respondent’s use of the “Phoenician” Domain Names was likely not accidental. Where a mark is famous, as in the case of the Phoenician marks, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, a “trader” such as Respondent could have no legitimate interest in the Phoenician marks. Id. In this case, Respondent lives in or immediately close by Phoenix (or Scottsdale), Arizona, where Complainant’s hotel, The Phoenician Resort, is located. There is an inescapable inference that Respondent registered the name “phoenician” in combination with the descriptive words “hotel” and resort” in an attempt to trade upon the valuable goodwill associated with the Phoenician marks in Phoenix and nationwide.
The record establishes that Respondent has no rights or legitimate interests in the word “Phoenician” as it pertains to hotels or resorts or in any of the three Domain Names at issue in this case. Complainant has established the second element of its case.
A. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that the following shall be evidence of registration and use of a Domain Name in bad faith:
Circumstances indicating that you [registrant] have registered . . . 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.
Such circumstances are present here. Respondent attempted to sell the Domain Names at issue to Complainant for an unspecified amount and then implicitly rejected Complainant's offer to reimburse her for her out-of-pocket registration expenses by failing or refusing to respond to that offer. This attempt to obtain money in excess of costs for names that rightfully belong to Complainant is evidence of Respondent’s bad faith both in registering and using those Domain Names. See World Wrestling Fed’n Entm’t, Inc. v. Bosman, WIPO Case No. D99-0001 (“Because respondent offered to sell the Domain Name to complainant ‘for valuable consideration in excess of’ any out-of-pocket costs directly related to the Domain Name, respondent has ‘used’ the Domain Name in bad faith as defined in the Policy.”).
There is other evidence of bad faith registration. Respondent registered the Domain Names with knowledge of Complainant’s rights in the Phoenician trade and service marks. There is a reasonable inference that Respondent, who apparently lives in or near Phoenix, Arizona, where Complainant’s hotel is located, was fully aware of Complainant’s use of and rights in the Phoenician marks.
Respondent’s combining “phoenician” with the words “hotel” and “resort” in her Domain Names to form the Phoenician marks is further evidence of her intent in registering the Domain Names to trade on Complainant's goodwill. Respondent would likely have been aware of the Phoenician marks because these marks have achieved fame and have been used in connection with a resort that has garnered notable awards in the travel and hospitality industry. See Bloomberg L.P. v. Boo Design Servs., NAF Claim No. FA97043. Even a simple Internet search would have revealed Complainant’s extensive use of the Phoenician marks as source identifiers.
Respondent also is deemed to have constructive notice of Complainant's trademark rights by virtue of Complainant's public use and federal registrations of the Phoenician marks. See Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Marconi Data Sys., Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice); Microsoft Corp. v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“it is not reasonable to expect the Respondent to register the disputed Domain Names if the Respondent had no knowledge of the Complainant’s trademark and services in connection thereto.”). Complainant’s rights in the Phoenician marks would have been obvious through basic Domain Name searches and other online searches of readily accessible USPTO records.
The Panel does not agree with Complainant’s contentions that Respondent has demonstrated bad faith by using the Domain Names to attract Internet users to her web site for commercial gain. It is unclear from the evidence that the web sites to which the user is diverted by mistaken use of Respondent’s Domain Names have any commercial purpose or value to Respondent. However, the fact that Respondent has not used the disputed Domain Names can be construed as further evidence of bad faith. The passive holding of a Domain Name has been held to evidence bad faith use of the names where there are other factors. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232; Marconi Data Sys., Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. Such factors exist here. Complainant’s trademark is a well known mark; there has been no response to the complaint and Respondent thus has provided no evidence of good faith use; and it is impossible to conceive of a good faith use by Respondent. Telstra, supra.
The Panel concludes that there is sufficient evidence that Respondent both registered and is using the Domain Names at issue in this case in bad faith, and that Complainant therefore, has established the third and final element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <phoenicianhotel.com>; <thephoenicianhotel.com>; and <thephoenicianresort.com> be transferred to the Complainant.
John R. Keys, Jr.
Date: August 30, 2006