Complainants are Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, and Sheraton International Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondents are Absolutee Corp. Ltd. / Anthonny, Network Service of Santiago, California, United States.
The disputed domain name <sheratonmontreal.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com of East Oakland, California, United States.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 7, 2010, the Center transmitted by email to the named registrar a request for registrar verification in connection with the disputed domain name.1 After several reminders, on April 30, 2010, OnlineNic, Inc. d/b/a China-Channel.com 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 originally alleged in the Complaint. The Center sent an email communication to Complainants' representative on April 30, 2010, advising of the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an Amended Complaint with the Center on April 30, 2010, which the Center acknowledged on May 3, 2010. 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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on May 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2010. Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 26, 2010.
The Center appointed Jonathan Hudis as the sole panelist in this matter on June 2, 2010. After clearing potential conflicts of interest, 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 following facts are uncontested: Complainants are a group of hotel and leisure companies that claim to own, manage or franchise almost 900 properties in approximately 100 countries. Complainants claim to own, operate and franchise the rights to operate of hotels and resorts under the SHERATON and FOUR POINTS BY SHERATON marks, as well as other marks not relevant to the present dispute.
Complainants assert ownership of the SHERATON mark, which they contend has been used in connection with goods and services in the hotel and leisure industry for over eighty (80) years. Soon after being introduced to the public in 1928, Complainants claim that the SHERATON was the first hotel chain to be listed on the New York Stock Exchange. Today, says Complainants, there are over four hundred (400) SHERATON hotels worldwide.
Complainants also claim that, through the widespread and extensive use of the SHERATON mark in connection with hotel services and related goods and services, and the expenditure of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the SHERATON mark has become uniquely associated with Complainants and their services.
Complainants further claim ownership of numerous registrations for the SHERATON mark throughout the world in connection with hotel services and related goods and services. Database abstracts from the United States (U.S.) Patent and Trademark Office of SHERATON marks registered in the name of The Sheraton LLC were submitted with the Complaint.
Complainants also claim ownership of registrations for the SHERATON mark throughout the rest of the world. A printout illustrating a small sampling of Complainants' non-U.S. trademark registrations for the SHERATON mark was submitted with the Complaint.
Complainants further assert that they have developed a prominent Internet presence for the SHERATON mark, including in connection with websites located at the URLs http://www.sheraton.com and http://www.sheratonhotels.com, both of which are also accessible through other Complainant-owned domain names. These websites enable computer users to make reservations at Complainants' SHERATON hotels and to access information regarding Complainants and their various SHERATON hotels and related services. Printouts of the homepages for the above-listed websites were submitted with the Complaint.
Complainants also operate two SHERATON properties in the Montreal, Canada area, the Sheraton Laval Hotel (in Laval, Quebec) and Le Centre Sheraton Montreal Hotel (in downtown Montreal). Photos and details for these properties made available to consumers online were submitted with the Complaint.
Complainants' rights in the SHERATON Mark have been recognized in several WIPO decisions that ordered the transfer of disputed domain names to Complainants. See, e.g., Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Worldwide Franchise Systems, Inc., Westin License Company v. Digi Real Estate Foundation, WIPO Case No. D2007-0107 (April 17, 2007) (transferring twenty-three Sheraton-formative domain names, including <sheratonboston.com> and <sheratonpalace.com>); Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services, LLC, WIPO Case No. D2007-0829 (August 30, 2007) (transferring fourteen Sheraton-formative domain names, including <orlandosheraton.com> and <sheratonbostonhotel.com>); Starwood Hotels & Resorts Worldwide, Inc. v. KerryWeb Enterprise, Inc , North West Enterprise, Inc. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150 (October 8, 2007) (transferring twenty-four Sheraton-formative domain names, including <hotelsheraton.com> and <hotels-sheraton.net>); 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 (November 23, 2007) (transferring twenty-four Sheraton-formative domain names, including <sheratonbalharbor.com> and <sheratonparkridge.com>); Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Hong Yunju, WIPO Case No. D2007-1764 (February 11, 2008) (<sheratonhotel.com>); Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Sean Gerrity, WIPO Case No. D2009-0277 (April 16, 2009) (<sheratondeirahotelandtowers.com> and <sheratonjumeirahbeachresort.com>); and Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Pearson Network, S.A. / President, WIPO Case No. D2009-0328 (May 14, 2009) (<sheratonphiladelphia.com>).
The disputed domain name <sheratonmontreal.com> was registered on June 29, 2008, long after Complainant's SHERATON trademarks were registered in the U.S. and elsewhere. At no time did Complainants authorize or permit Respondents' registration of the disputed domain name. Further, there is no relationship between any of the Complainants and Respondents that would give rise to any license, permission or authorization for Respondents to use or register the contested domain name.
Respondents appear to be using the <sheratonmontreal.com> domain name to attract users to their “www.sheratonmontreal.com” website so that Respondents can generate “pay-per-click” revenue. When Internet users looking for legitimate services offered under the SHERATON mark type the URL for the contested domain name into their Internet browsers, they are directed to a “parking” website. The parking website contains links to websites of entities not associated with Complainant, many of which advertise other travel and leisure companies and who are Complainants' competitors, including, without limitation, links that lead to advertisements for Hyatt hotels, Sandals resorts, Beaches.com resorts, Travelocity and Orbitz.
Complainants contend that the contested domain name <sheratonmontreal.com> is confusingly similar to the SHERATON trademark in which Complainants have rights; that Respondents have no rights or legitimate interests with respect to the domain name; and that the domain name has been registered and is being used by Respondent in bad faith. Complainants request a transfer to them of the contested domain name.
Respondents did not reply to Complainants' contentions.
Complainants have the burden of proving all three of the following elements under Paragraph 4(a) of the policy:
(i) That the domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondents have no rights or legitimate interests regarding the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
The failure to prove any one of these factors is fatal to the Complaint.
Respondents had the opportunity to respond and present evidence that they have rights or legitimate interests in respect of the contested domain name. Respondents chose not to do so. Complainants are not entitled to relief simply by reason of Respondents' default. However, the Panel can and does draw evidentiary inferences from Respondents' failure to respond.
As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview” available at http://www.wipo.int/amc/en/domains/search/overview/index.html)2 makes clear, “the Respondent's default does not automatically result in a decision in favor of the Complainant. Subject to [the minimum prima facie case to be asserted by the Complainant that the Respondent lacks rights or legitimate interests], the Complainant must establish each of the three elements required by Paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the Respondent's default, Paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.” WIPO Decision Overview at Sections 2.1 and 4.6.
Paragraph 14 of the Rules provides that:
(a) in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel must now decide whether Complainants have come forward with sufficient evidence to satisfy the requirements of paragraphs 4(a)(i), (ii) and (iii) the Policy.
The contested domain name <sheratonmontreal.com> is confusingly similar to the SHERATON trademark in which Complainants have shown they have rights. Complainants' rights to the SHERATON trademark have been demonstrated to the satisfaction of the Panel through federal registrations of the mark issued in the United States and elsewhere, as well as through use of the mark in connection with hotel, leisure and resort services.
The contested domain name consists of nothing more than Complainants' SHERATON trademark, the geographical term “Montreal” and the “.com” generic top level domain (“gTLD”) extension. The gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity. Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723 (November 11, 2004).
Further, the addition of a geographical indicator to Complainants' SHERATON trademark “add[s] to rather than diminish[es] the likelihood of confusion” because “[t]he addition of a place name to a trademark … is a common method for indicating the location of a business enterprise identified by the trademark or service mark…. even more so in the case of hotels.” Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 (June 9, 2003); see also Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136 (April 17, 2006) (“[T]he geographical descriptors … actually increase” likelihood of confusion “because they relate directly to places where the Complainant has developed or might develop its core business through hotels and other leisure services”); Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (October 16, 2003) (“[T]he addition of the suffix ‘Michigan' is apt to suggest that the Complainant's [Holiday Inn Hotels] are provided in that particular location.”).
The Panel finds, therefore, that the Complainants have met their burden under paragraph 4(a)(i) of the Policy.
Complainants state that Respondents have no connection or affiliation with them and that Respondents have not received any license or consent, express or implied, to use Complainants' SHERATON marks in a domain name or in any other manner.
Given that Complainants' asserted adoption and use of the SHERATON mark predates Respondents' registration of the contested domain name, the burden was on Respondents to establish their rights or legitimate interests in the contested domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003). Because of Respondents' default, they have not come forward to demonstrate or establish that they have such rights or legitimate interests.
For example, due to Respondents' default, no evidence has been provided to the Panel that Respondents ever have been known by the contested domain name <sheratonmontreal.com>.3 This is further evidence that Respondent has no legitimate interests or rights in the domain name. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000). Accordingly, “it is not possible to conceive of a plausible circumstance in which Respondents could legitimately use the [contested] domain name.” BellSouth Intellectual Property Corporation v. Melos aka Thomas Stergios, Case No. DTV2001-0013 (September 16, 2001) (quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Respondents' only apparent reason for having registered the contested domain name was and is in connection with generating “pay-per-click” revenue from web users that have been misdirected to Respondents' web site when searching for Complaints' SHERATON properties in Montreal, Quebec, Canada. This does not constitute having rights or legitimate interests in the contested domain name.
The Panel therefore is satisfied that Complainants have met their burden under paragraph 4(a)(ii) of the Policy.
Examples recited in the Policy of Respondents' bad faith registration and use of a domain name include proof that: Respondents registered or acquired the disputed domain name primarily for the purpose of sale to Complainants for profit in excess of costs; Respondents registered the domain name to prevent Complainants from registering their SHERATON mark in a corresponding domain name (and Respondents have engaged in a pattern of such conduct); Respondents registered the contested domain name primarily for the purpose of disrupting Complainants' business as a competitor; and Respondents intentionally intended to attract, for commercial gain, Internet users to Respondents' website by creating a likelihood of confusion with Complainants' SHERATON mark as to the source, sponsorship, affiliation, endorsement of Respondent's website or the products or services on Respondent's website. Policy, paragraphs 4(b)(i) and (iv).
Of these recited examples, the Panel finds that Respondents registered the contested domain name primarily for the purpose of disrupting Complainants' business as a competitor; and Respondents have intentionally intended to attract, for commercial gain, Internet users to Respondents' website by creating a likelihood of confusion with Complainants' SHERATON mark as to the source, sponsorship, affiliation, endorsement of Respondent's website or the products or services on Respondent's website. See, e.g., Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207 (April 27, 2006) (intentional use of confusingly similar domain name to attract internet users to website with links to sites offering goods similar to complainant's goods establishes bad faith); PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (March 20, 2006) (same); Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102 (April 18, 2000) (same).
In the absence of contrary evidence, Respondents are using the <sheratonmontreal.com> domain name to attract users to their website so that Respondents can generate “pay-per-click” revenue. Respondents' website contains links to websites of entities who are Complainants' competitors in the travel and leisure business.
The “bad faith factors” specified in paragraph 4(b) of the Policy are not exclusive or exhaustive. Therefore, the Panel finds additional facts and circumstances indicating bad faith registration and use of the subject domain name on the part of Respondents. Complainants' representative states that Complainants attempted to contact Respondents prior to initiating this proceeding, but received no response. From this fact alone, Complainants request that the Panel infer bad faith. The Panel declines to do so. However, Respondents' failure to respond to Complainants' correspondence, plus the additional bad faith factors noted above, as well as Respondent's constructive notice of Complainants' SHERATON mark being registered with the U.S. Patent and Trademark Office and elsewhere together provide additional circumstances of bad faith adoption and use of the contested domain name. A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Gordon Rahschulte, WIPO Case No. D2001-0901 (September 17, 2001) (“[T]he Panel declines to infer bad faith from Respondent's failure to respond to Complainants' correspondence alone. Silence, without more, cannot prove that Respondent acted in bad faith. However, at the time Respondent registered the domain name, Respondent had constructive, if not actual, notice of Complainants' rights to its marks. The Panel therefore infers that Respondent registered the domain name in bad faith.”). See also, WIPO Decision Overview at Section 3.2.
Therefore, the Panel is satisfied that Complaints have met their burden under paragraph 4(a)(iii) of the Policy.
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 <sheratonmontreal.com> be transferred to Complainants.
Dated: June 14, 2010
1 Meanwhile, on April 16, 2010, the Center transmitted by email to Complainants' representative a Deficiency Notification regarding the Mutual Jurisdiction clause in paragraph 39 of the Complaint. This Deficiency was cured by Complainants' subsequent filing with the Center, also on April 16, 2010.
2 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency in UDRP decisions. Fresh Intellectual Properties, Inc. v. 800 Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005), at n. 3.
3 “While the overall burden of proof rests with Complainants, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Decision Overview at Section 2.1.