The Complainant is Starwood Hotels & Resorts Worldwide, Inc., White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Dariusz Herman, Nuernberg, Germany.
The disputed domain name <whotels.net> is registered with Cronon AG Berlin, Niederlassung Regensburg.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted by email to Cronon AG Berlin, Niederlassung Regensburg a request for registrar verification in connection with the disputed domain name. On September 17, 2008, Cronon AG Berlin, Niederlassung Regensburg transmitted by email to the Center its verification response confirming that the 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”).
On September 18, 2008, the Center informed the parties that the Complaint has been submitted in English although the language of registration agreement for the disputed domain name is German. The Center set a deadline to both parties to take position on this issue. The Respondent did not react.
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 September 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 6, 2008. 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.
Complainant Starwood Hotels & Resorts Worldwide, Inc. is one of the leading hotel and leisure companies in the world. Complainant has used the W and W HOTELS marks in connection with hotel and resort services and various related goods and services since 1998. Since then, its W brand of hotels has become well-known for innovative design, world-class restaurants and fashionable bars and lounges.
In addition to its extensive use of the W and W HOTELS marks, Complainant has obtained numerous trademark registrations for these marks throughout the world in connection with its hotels, resorts and related goods and services, notably in the United States of America and in the European Union.
After Complainant acquired exclusive rights in its W and W HOTELS trademarks, Respondent registered the domain name <whotels.net> and linked it to a parking web site containing the indication “Buy this domain - The domain <whotels.net> may be for sale by its owner!” as well as a list of other web sites linked to competitors of the Complainant.
The Complainant contends that the domain name <whotels.net> is identical and therefore confusingly similar to its trademark W HOTELS.
The Complainant alleges that it is not related in any way whatsoever to the Respondent. In addition, the Respondent is not known by “whotels” and does not make a bona fide offering of goods or services. The Complainant contends that the Respondent therefore has no rights or legitimate interests in the domain name.
The Complainant claims that the domain name was registered in bad faith as it is difficult to conceive that the Respondent could have been unaware of the famous trademarks W and W HOTELS at the time it applied for the registration of the confusingly similar domain name <whotels.net>. The Complainant contends that the domain name was registered without its authorization which is in itself an evidence of bad faith. Moreover, the Respondent's pattern of registering domain names that include other companies' well-known trademarks also demonstrates his bad faith. Finally, the Respondent purchased the domain name with the intention of selling it.
The Complainant further claims that the domain name was used in bad faith considering Respondent's offer to sell the domain name. Furthermore, the advertisement of links to Complainant's competitors for the purpose of generating “click-through” revenue further establishes his bad faith. The current passive holding should be viewed as well as bad faith use.
The Respondent did not reply to the Complainant's contentions.
The Registration Agreement is in German.
In accordance with paragraph 11(a) of the Rules, the default language of the proceedings would be German.
The Complainant has requested for English to be the language of the proceedings considering that the domain name at issue is in the English language, the contents of the web site were entirely in English, and the Respondent was involved in other UDRP proceedings conducted in English.
The opportunity was given to the Respondent to challenge this point of view. However, the Respondent did not react.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances. With regard to paragraphs 10(b) and (c) of the Rules, the Panel must ensure fairness to the parties and maintenance of a cost-efficient and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden to the Parties and undue delay to the proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Panel notes that both parties have been given a fair opportunity to present their case. The Respondent has chosen not to use the said opportunity. Sufficient indications have been given by the Complainant to show that the Respondent is competent in English. There is thus no objective reason in the present case to disadvantage the Complainant by making him translate his complaint.
Under the circumstances, the Panel concludes that the language of proceedings shall be English.
Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant owns trademark registrations for W and W HOTELS and for using the said marks in relation to hotel services in several countries, notably in the United States of America and in the European Union.
The disputed domain name <whotels.net> is obviously identical to the Complainant's trademark W HOTEL.
The Panel thus concludes that the first condition of paragraph 4(a) of the Policy is established.
The Respondent has pointed the domain name to a web page offering sponsored links to commercial web sites of companies active in the Complainant's field of business, i.e., competitors.
Use of a domain name in connection with such sponsored links is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interests in the domain name (see for example MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550; Fry's Electronics, inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435).
Indeed, several other panels have admitted that the operation of sponsored link services of this type designed to divert Internet users to other commercial sites by the use of domain names identical or confusingly similar to a complainant's trademark, do not confer a legitimate right to or interest in a domain name, see Deloitte Touche Tohmatsu v. Henry Chan ( WIPO Case No. D2003-0584); Minka Lightinh, Inc. d/b/a v. Lee Wongi ( WIPO Case No. D2004-0984); Bridgestone Corporation v. Horoshiy, Inc. ( WIPO Case No. D2004-0795).
In addition, the Respondent has not disputed the facts as presented by the Complainant and there is no evidence before the Panel to suggest that the Respondent either is commonly known by the domain name or is making a legitimate or noncommercial use of the domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the contested domain name.
The second condition of paragraph 4(a) of the Policy is therefore fulfilled.
The record shows that the Complainant is active and famous in relation to hotel services and has an extensive presence on the Internet notably through its official web site “www.whotels.com”.
Furthermore, the domain name is identical to the Complainant's trademarks and to the Complainant's main domain name <whotel.com>.
It is therefore very unlikely that the Respondent could have been unaware of the trademarks “W” and “W HOTEL” and of the Complainant's web site “www.whotel.com” when registering the domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487).
Moreover, the Complainant has shown that the Respondent previously registered other domain names containing well-known brands. The Panel agrees that this is also an indication of bad faith.
The Respondent uses the domain name to advertise sponsored links relating to the field of hotels, which are of the Complainant's business. The Respondent has not disputed the Complainant's contention that such use is generating revenue for the benefit of the Respondent.
The Complainant has demonstrated that the Respondent offered to auction the litigious domain name on the Sedo.com web site which is indeed an evidence of use in bad faith according to several previous UDRP decisions (Amanresorts Ltd. v. Tomacruz, WIPO Case No. D2006-1219; Cyber Cyrriculum Vitai, S.L v. ActiveIdeals.com, WIPO Case No. D2006-0830; Playboy Enters. Int'l v. Global Media Domain Trust, WIPO Case No. D2006-1543).
The Panel is therefore of the view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site linked to the domain name, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site (Paragraph 4(b)(iv) of the Policy).
Considering the above, the Panel concludes that the Respondent registered and is using the domain name in bad faith.
The third condition of paragraph 4(a) the Policy is thus established.
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 name, <whotels.net> be transferred to the Complainant.
Theda König Horowicz
Dated: November 24, 2008