WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc. v. Domain Administrator
Case No. D2010-1140
1. The Parties
Complainant is Starwood Hotels & Resorts Worldwide, Inc. of New York, United States of America represented by Fross Zelnick Lehrman & Zissu, PC of United States of America (herein after Ü.S.”).
Respondent is Domain Administrator of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <paradisestream.com> (“Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2010. On July 12, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On July 12, 2010, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2010.
The Center appointed Keith Gymer as the sole panelist in this matter on August 19, 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.
On inspection, the Panel noticed that one of the Exhibits referred to in the Complaint had not been included in the papers received by the Panel. This Exhibit related to screenshots of Respondent’s website, which the Panel was able to check directly in any event. The Center provided a copy of the missing Exhibit to complete the file for the Panel on August 24, 2010.
4. Factual Background
Complainant, Starwood Hotels and Resorts Worldwide, Inc., is an international hotel and leisure resort company which owns several hotel chains and a number of special resort hotels, including the Paradise Stream Resort in the Pocono Mountains of Pennsylvania. The Paradise Stream Resort has been in business since at least 1960.
Complainant operates a website at “www.starwoodhotels.com”, where details of the Paradise Stream Resort may be found.
Complainant has a US Trademark Registration 1,173,637, dating from its filing date 1979, for the word mark PARADISE STREAM.
Respondent, Domain Administrator, is recorded with a post box address in Hong Kong, SAR of China. However, when attempting to deliver a mail copy of the Written Notice for the Center, UPS reported that the recorded post box address and contact telephone numbers were incorrect.
According to the Moniker.com WHOIS records, the Domain Name <paradisestream.com> was first registered as of December 22, 2002.
5. Parties’ Contentions
The following comprises edited extracts of the submissions made by Complainant:
Complainant’s PARADISE STREAM mark
Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises several hundred properties in approximately one hundred countries. Complainant, together with its affiliates, is a fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: Westin, Sheraton, Four Points By Sheraton, W, Le Méridien, St. Regis, The Luxury Collection, Aloft and Element Hotels. In addition to these branded hotels, Complainant also operates additional historic properties under their historic names, such as the three properties in Pennsylvania’s Pocono Mountains -- the Pocono Palace Resort, the Cove Haven Resort and the Paradise Stream Resort.
Complainant and its predecessors in interest (hereafter, collectively, “Complainant”) have used the PARADISE STREAM mark in connection with a hotel and various hotel-related goods and services since at least as early as 1960. Complainant’s Paradise Stream Resort caters to couples and features suites with in-room swimming pools and hot tubs, as featured in the Complainant’s website.
Through the use of the PARADISE STREAM mark in connection with hotel services and related goods and services, and its expenditure of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, Complainant’s PARADISE STREAM mark has become uniquely associated with Complainant and its services, and has attained considerable fame and widespread acclaim in the United States and throughout the world. As a result, Complainant’s PARADISE STREAM mark represents enormous goodwill.
In addition to its extensive use of Complainant’s mark, Complainant has obtained U.S. Trademark Registration No. 1,173,637 for services in classes 39, 41 and 42. This registration issued on October 13, 1981.
Complainant also has developed a prominent Internet presence for the PARADISE STREAM mark, including in connection with its website located at “www.starwoodhotels.com”, which is also accessible through other Complainant-owned domain names. The abovementioned website enables computer users to access information regarding Complainant’s Paradise Stream Resort and related services and to learn more about Complainant and its trio of Poconos Mountain resorts.
Respondent’s Registration and Use of the Domain Name
Complainant recently learned that Respondent has registered the Infringing Domain Name, which incorporates Complainant’s PARADISE STREAM mark in its entirety, and that Respondent is using the disputed Domain Name to mislead Internet users to believe that the Domain Name and its owners are somehow related to, endorsed by, or otherwise affiliated with Complainant.
Respondent is using Complainant’s mark to attract users to its website so that Respondent can generate “pay-per-click” revenue. When Internet users looking for legitimate services offered under Complainant’s mark type the URL for the Domain Name into their Internet browsers, they are directed to a “parking” website. The parking page contains links to websites of entities not associated with Complainant, many of which advertise the hotel and leisure services of companies in competition with the Complainant.
The Domain Name is Identical and/or Confusingly Similar to Complainant’s Mark
The Domain Name is confusingly similar to Complainant’s PARADISE STREAM trademark. The Domain Name consists of nothing more than Complainant’s registered trademark and the generic “.com” generic top level domain (“gTLD”) extension. The gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity.
Prior panels have repeatedly found domain names to identical when they incorporate the complainant’s entire trademark and nothing more.
The Domain Name incorporates without alteration Complainant's registered PARADISE STREAM mark, making it confusingly similar to Complainant's PARADISE STREAM mark.
Respondent Has No Right or Legitimate Interest in the Domain Name
Since Complainant’s adoption and extensive use of the PARADISE STREAM mark predates the registration of the Domain Name by decades, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name. Complainant argues that Respondent cannot do so here.
Respondent’s only use of the disputed Domain Name is in connection with the conduct described above, i.e., to misdirect Internet traffic to competing hotel and leisure companies and services so that it can generate pay-per-click revenue. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name which incorporates in whole Complainant's PARADISE STREAM mark, and Complainant has never licensed, permitted, or authorized Respondent to registered or use the Domain Name or the PARADISE STREAM mark. Under the circumstances, Respondent cannot show legitimate rights or interests in the Domain Name.
There is no evidence to suggest that Respondent has been or is commonly known by the Domain Name.
Furthermore, the use of the Domain Name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services or a noncommercial or fair use. Essentially, “Respondent is trading for commercial gain on the good name and worldwide fame and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill the Complainant has established over many years in its name and marks . . . without any right or legal justification for doing so.” Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-1105.
Respondent lacks the right to use Complainant’s PARADISE STREAM mark in or as part of its Domain Name since by doing so the Domain Name falsely suggests that PARADISE STREAM is or may be associated with the website at the Domain Name.
Respondent Registered and is Using the Domain Name in Bad Faith
Complainant also argues that it has satisfied the final element of the Policy, that the Respondent registered and is using the Domain Name in bad faith.
Respondent’s use of the Domain Name to generate pay-per-click revenue through links to Complainant’s competitors in the hotel and resort industry clearly establishes Respondent’s bad faith.
The Domain Name was registered after Complainant had obtained a U.S. federal trademark registration for its PARADISE STREAM mark and after Complainant had been extensively using its PARADISE STREAM mark. Given these facts, Respondent clearly was on actual notice of Complainant’s rights before it adopted Complainant’s trademark as its Domain Name.
The Domain Name incorporates Complainant's registered PARADISE STREAM mark and is confusingly similar to Complainant's PARADISE STREAM trademark. Given the fame of Complainant’s PARADISE STREAM trademark, consumers are likely to believe that the Domain Name is related to or associated with Complainant. The only reason for Respondent’s use of Complainant’s Mark is to intentionally confuse consumers, to trade on Complainant’s rights and reputation, and to drive traffic to its website all for its own commercial benefit. Because the ultimate effect of any use of the Domain Name will be to cause confusion with PARADISE STREAM, the use and registration of the Domain Name must be considered to be in bad faith.
Indeed, Respondent’s activity is in direct violation of paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.
Respondent’s adoption and use of PARADISE STREAM shows both Respondents’ familiarity with the mark and Respondent’s recognition of the fame of the mark. Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use or register the Domain Name, the very fact that Respondent has registered the Domain Name establishes opportunistic bad faith use and registration.
Based on all of the above, Complainant argues that it has met the requirements of the Policy and is entitled to the remedy requested below.
Complainant requests that the Domain Name be immediately transferred to Complainant.
Respondent did not provide any response to Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to Complainant under the Policy it is necessary that Complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 fact that Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The Domain Name is <paradisestream.com>.
The Complainant has demonstrated earlier registered trademark rights in PARADISE STREAM, (i.e. United States trademark 1,173,637 dating from its filing date in 1979), and use of the PARADISE STREAM mark for relevant services, at least in the United States, all long predating the date of creation of the Domain Name.
The Domain Name incorporates the PARADISE STREAM mark in its entirety. The absence of a space between the two words in the Domain Name and the addition of the generic domain suffix “.com” is of no relevance to the comparison in this case. The Domain Name is essentially identical to the mark in which the Complainant has established rights.
The Panel therefore finds that the Domain Name is to be considered identical or confusingly similar to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate Respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Respondent has made no express claims to any rights of its own. Clearly the Respondent “Domain Administrator” is not commonly known by the Domain Name, nor has it claimed to have made any legitimate use of the Domain Name. The Panel is satisfied that Complainant has carried its burden of demonstrating Respondent’s lack of rights or legitimate interests in the Domain Name, and respondent has not rebutted Complainant’s contentions.
The evidence in the Complaint supports the contention that the Respondent has simply adopted the Domain Name to take advantage of public recognition of Complainant’s PARADISE STREAM mark and business, to set up a website façade, which initially looked as if it related to Complainant’s Pocono hotels, but apparently only has links which are manipulated to produce contrived search results, aimed at generating pay-per-click income for Respondent (who is unidentified on the website). In the Panel’s view this is not a bona-fide offering or use, but is nothing more than a form of parasitic exploitation of the Complainant’s name and business.
Consequently, the Panel holds that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are some pertinent examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In the Panel’s opinion, the unchallenged evidence in the Complaint demonstrates convincingly that Respondent has registered the Domain Name with the intention of establishing a website using the PARADISE STREAM mark and name to attract users, for its own commercial gain, and manifestly creating a misleading and confusing impression as to the source, affiliation or endorsement of Respondent’s website. It is an unavoidable conclusion that such misuse may cause disruption and damage to the Complainant’s business name and reputation.
Additionally, the Panel also considers it significant that the contact address details for the Respondent Domain Administrator are apparently invalid, and that there is no contact address provided on the Respondent’s website to identify where any business behind the “www.paradisestream.com” website is really located. In the Panel’s experience, such lack of proper identification is a characteristic feature of sham websites set up to trade off the name and reputation of legitimate businesses, and supports the Complainant’s allegation of bad faith use and registration.
For the same reasons as in Section B above, the Panel also considers the example of paragraph 4(b)(iv) of the Policy is directly applicable in the present case.
Consequently, for the purposes of the Policy, the Panel concludes that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.
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 <paradisestream.com> be transferred to the Complainant.
Dated: September 2, 2010