The Complainants are Starwood Hotels & Resorts Worldwide Inc. and Westin Hotel Management L.P. of the United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is PrivacyProtect.org of the Netherlands / Purple Bucquet of Panama.
The disputed domain name <westinbonaventure.com> (the "Domain Name") is registered with Power Brand Center LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 8, 2010, the Center transmitted by email to Power Brand Center LLC a request for registrar verification in connection with the disputed domain name. On April 9, 2010, Power Brand Center LLC. 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 in the Complaint. The Center sent an email communication to the Complainant on April 15, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint and a further amendment on April 15 and 16, respectively. The Center verified that the Complaint together with Amended Complaint and further amendment 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 April 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed Ian Lowe as the sole panelist in this matter on May 21, 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.
Starwood Hotels & Resorts Worldwide Inc. and Westin Hotel Management LP are for convenience referred to separately or together as the “Complainant”. The Complainant is one of the leading hotel and leisure companies in the world. It owns, manages and franchises several hundred properties in approximately 100 countries with a number of renowned brands including WESTIN, SHERATON, W and LE MERIDIEN. There are more than 160 WESTIN hotels in roughly 30 countries worldwide including The Westin Bonaventure Hotel & Suites, Los Angeles. The Complainant is the registered proprietor of a number of trademark registrations around the world comprising the word WESTIN including United States (US) trademark number 1,320,080 WESTIN registered on February 12, 1985 in Class 42; US trademark number 1,720,799 WESTIN registered on September 29, 1992 in Class 41 and Benelux trademark number 781,738 WESTIN HOTEL registered on December 6, 2005 in Class 43.
The Domain Name was registered on May 30, 2004. At the date of the Complaint, it resolved to a Sedo Parking web page featuring sponsored links to a number of websites including both the Complainant's official website and those of entities advertising hotel and travel services in competition with the Complainant. The web page also included a hyperlink "Buy this domain – The domain westinbonaventure.com may be for sale by its owner! More details…". This hyperlink leads to the “www.sedo.com” auction site where the Domain Name is advertised for sale.
A summary of the contentions on the part of the Complainant is as follows:
1) The Complainant has numerous registrations around the world in respect of the trademark WESTIN including those cited above. In addition, through its widespread, extensive use of the WESTIN mark in connection with hotel services and related goods and services and its substantial expenditure on promoting the mark on television, in the printed media and on the Internet, the WESTIN mark has become uniquely associated with the Complainant and its services. As a result, the Complainant has acquired enormous goodwill in the name.
2) The Westin Bonaventure Hotel & Suites in Los Angeles is a landmark building in downtown Los Angeles. The building is instantly recognizable and the hotel has featured prominently as a location and set in a popular television series.
3) The Domain Name is confusingly similar to the Complainant's WESTIN trademark. It comprises the mark together with the descriptive term "Bonaventure" and the “.com” suffix. The addition of “Bonaventure” adds to rather than diminishes the risk of confusion because it relates directly to the place where the Complainant has established a business under its WESTIN mark.
4) The Domain Name was registered after the Complainant had obtained numerous federal US trademark registrations for its WESTIN mark; after the Complainant had been extensively using its WESTIN mark; and after the mark had been recognized by the courts and in previous WIPO UDRP decisions as being famous and used throughout the world. There is no conceivable bona fide or legitimate use of the Domain Name by the Respondent. The Complainant has not given any license or permission to the Respondent to use the Domain Name incorporating the Complainant's mark and there is no evidence that the Respondent has been known by the Domain Name.
5) The Respondent registered and has used the Domain Name in bad faith. The Respondent has offered to sell the Domain Name to the Complainant or to any other interested party which is itself evidence of bad faith.
6) The mere holding of the Domain Name is itself bad faith use in view of the renown of the WESTIN mark and the absence of any likely legitimate uses by an unauthorized party like the Respondent. The Respondent's use of the Domain Name to draw traffic to its parking site containing links to the Complainant's competitors and others to earn pay-per-click revenue constitutes bad faith use of the Domain Name, trading on the Complainant's trademark and goodwill.
7) Given the fame of the Complainant's WESTIN mark and the confusing similarity of the Domain Name, consumers are likely to believe that the Domain Name is related to or associated with the Complainant. The only reason for the Respondent's use of the Complainant's mark is to confuse consumers, to trade on the Complainant's rights and reputation and to drive traffic to the Respondent's website for its own commercial benefit. This is a direct violation of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant has adduced uncontroverted evidence of a number of registrations in respect of the well-known trademark WESTIN. The Panel also accepts the Complainant's evidence of its use of the name “Westin Bonaventure” for its renowned hotel in Los Angeles. The Domain Name comprises the WESTIN mark together with the additional element “bonaventure”. Given the association of the term “bonaventure" with the business of the Complainant, its use as part of the Domain Name serves to increase the likelihood of confusion between the Domain Name and the Complainant's WESTIN trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent has not replied to the Complainant's contentions. It has not displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Complainant's arguments establishing its prima facie case are detailed above and the Respondent, although provided with an opportunity to reply, has not come forward to rebut these allegations. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
It is inconceivable that the Respondent could have registered the Domain Name without having in mind the Complainant and its WESTIN trademarks and the Complainant's well-known Westin Bonaventure Hotel in Los Angeles. The website to which the Domain Name resolves indicates that the Domain Name is for sale and includes a hyperlink to an auction site where the Domain Name is offered for sale.
The website includes pay-per-click links to other websites including those of competitors of the Complainant. The inescapable conclusion is that the Respondent registered and has used the Domain Name with the intention of confusing users into believing that the website to which it resolved was operated by or with the consent of the Complainant or was authorised by or associated with the Complainant . The Respondent's exploitation of the Complainant's trademarks and goodwill with a view to commercial gain including through advertising revenue and sponsored links clearly amounts to bad faith use for the purposes of the Policy.
In the circumstances the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <westinbonaventure.com> be transferred to the Complainant.
Date: June 4, 2010