The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, and Sheraton International Inc. of White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Hieu Doan of Stockholm, Sweden.
The disputed domain names <sheraton-nhatrang.com> and <sheratonnhatrang.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 17, 2009. On December 18, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 19, 2009, GoDaddy.com, Inc. 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”).
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 December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 11, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on January 18, 2010. 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.
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its affiliates, Sheraton LLC and Sheraton International Inc. (both incorporated under the laws of Delaware) (hereinafter referred to, collectively as “the Complainant”).
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages or franchises almost 900 properties in approximately 100 countries. The Complainant owns the well-known SHERATON trade mark, amongst others, which it has used in connection with the hotel and leisure industry since its inception in the 1920's. There are currently more than 400 Sheraton hotels worldwide.
The Complainant has registrations for the SHERATON trade mark throughout the world in connection with its hotel services and related goods and services, including registrations in the United States of America and Vietnam.
The Complainant has a prominent Internet presence in respect of the SHERATON trade mark. Its websites located at “www.sheraton.com” and “www.sheratonhotels.com” are also accessible through other domain names owned by the Complainant. These websites enable computer users to make reservations at Sheraton hotels and access information regarding the Complainant and its various Sheraton hotels and related services.
The Complainant operates a hotel, the “Sheraton Nha Trang Hotel & Spa”, in Nah Trang City in Vietnam.
The Respondent registered both disputed domain names on September 12, 2007. On at least two occasions, the Respondent offered to sell the disputed domain names to the Complainant. The Respondent requested the sum of USD 1,500 on one of those occasions. The disputed domain names <sheratonnhatrang.com> and <sheraton-nhatrang.com> at one time resolved to websites displaying the identical announcement “Sheraton Nha Trang The Sheraton furniture shop in Nha Trang will be opened soon! [e-mail address]@namlong.se”.
The Complainant asserts as follows:
(i) The disputed domain name is confusingly similar to the Complainant's SHERATON trade mark as it consists of nothing more than the said trade mark, the geographical term “Nha Trang” and the generic top level domain, “.com”. The gTLD should be disregarded when considering the issue of confusing similarity. Furthermore, the addition of the geographical indicator to the trade mark SHERATON adds, rather than diminishes, the likelihood of confusion as it relates directly to the location where the Complainant has developed and/or might develop hotels and other leisure services.
(ii) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use the Complainant's marks in a domain name or in any other manner. There is no evidence that the Respondent has ever been known by any of the disputed domain names. The websites at the disputed domain names, at the time of the filing of the Complaint, simply reflected a bare statement that “The Sheraton furniture shop in Nha Trang will be opened soon!”. However, there is no evidence of such a furniture store actually existing, whether in Nha Trang City, Vietnam, or elsewhere. Even if such a shop did exist, the use of the SHERATON trade mark in the name of the shop would be an infringing use as the SHERATON trade mark has been registered in Vietnam for a variety of goods and services since as early as 1985. It is not possible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain names.
(iii) The Respondent has registered and is using the disputed domain names in bad faith. The Respondent has no connection with the Complainant or any of its hotel brands nor has he any licence or consent from the Complainant to the use of the SHERATON trade mark in a domain name or any other manner. It is clear that he registered the disputed domain names with the intention of selling them. His repeated offers to sell the disputed domain names constitute evidence of use in bad faith. The registration of a domain name that is confusingly similar to a famous trade mark by an entity that has no relationship to that mark is also evidence of use in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Complainant clearly has rights in the trade mark SHERATON. In the context of this case, the additional word “nhatrang” / “-nhatrang” in the disputed domain names does not in any way serve to distance the domain names from the trade mark. Nha Trang is the name of a city in Vietnam and the addition of this name to the trade mark SHERATON gives Internet users the impression that the websites to which these domain names resolve relate to the Sheraton hotel in that location (the Sheraton Nha Trang Hotel & Spa), or are otherwise endorsed or sponsored by the Complainant. The Panel agrees with the assertion made by the Complainant that the addition of this geographical name adds to the likelihood of confusion.
As for the gTLD, “.com”, it has long been held that this element in the domain name is to be disregarded when considering the issue of confusing similarity.
In the circumstances, the Panel finds that the first requirement under paragraph 4(a) of the Policy has been satisfied.
Paragraph 4(c) of the Policy sets out how one may demonstrate one's rights and legitimate interests in a domain name in responding to a complaint. In this case, the Respondent did not file a Response. Nevertheless, the Complainant is still required to establish his case with appropriate evidence, as the default on the part of a respondent does not automatically result in a decision in favour of the complainant. Bearing in mind though, the difficulty complainants would generally have in proving a negative, i.e. the absence of lack of rights or legitimate interests on the part of the respondent in a domain name (which information is often primarily within the knowledge of the respondent), panelists have taken a pragmatic approach and adopted a principle that where a prima facie case has been made out by the complainant that the respondent lacks rights or legitimate interests, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant would be deemed to have satisfied paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests. There is no evidence of any of the following:
(i) that the disputed domain names have, prior to any notice to the Respondent of the dispute, been used by the Respondent in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain names <sheraton-nhatrang.com> and/or <sheratonnhatrang.com>; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
In the circumstances, the Panel finds that the second requirement under paragraph 4(a) of the Policy has been satisfied.
The Panel is of the view that the disputed domain names have been registered and used in bad faith. The circumstances presented in this case fall squarely within paragraph 4(b)(iv) of the Policy. The Panel believes that the Respondent's choice of the disputed domain names must have been made in the hope to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant's SHERATON mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. Whilst the Panel is of the view that the available evidence falls short of constituting unequivocal proof that the Respondent had registered the disputed domain names primarily for the purpose of selling or otherwise transferring them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names (paragraph 4(b)(i) of the Policy), it agrees that the overall conduct of the Respondent, viz. his specific choice of the disputed domain names incorporating a well known trade mark, the subsequent offer to sell the disputed domain names to the Complainant for USD 1,500, as well as the lack of evidence of a legitimate noncommercial or fair use of the disputed domain names, is such that one cannot but conclude that registration and use of the disputed domain names have been in bad faith. It is not conceivable how the Respondent would have been able to provide a plausible explanation of his choice of, or proven that he had a legitimate interest or right to use, the disputed domain names incorporating the Complainant's well-known trade mark.
The Panel therefore finds that the third requirement under paragraph 4(a) of the Policy has been satisfied.
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, <sheratonnhatrang.com> and <sheraton-nhatrang.com> be transferred to the Complainant.
Dated: January 20, 2010