World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC v. LODV S.A.

Case No. D2010-1868

1. The Parties

Complainants are Starwood Hotels & Resorts Worldwide Inc. and The Sheraton LLC of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

Respondent is LODV S.A. of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sheratontravelclub.com> is registered with MyDomain, Inc. d/b/a NamesDirect.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2010. On November 4, 2010, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain name. On November 4, 2010, MyDomain, Inc. d/b/a NamesDirect 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 November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 26, 2010.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on December 17, 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.

4. Factual Background

Complainant The Sheraton LLC has several United States trademark registrations for SHERATON in connection with various goods and services such as “motel or roadside hotel and restaurant services”. These trademark registrations claim a date of first use in commerce dating back at least as far as May 1, 1958. Complainants also submitted records reflecting a number of international trademark registrations for SHERATON held in the names of various entities that appear to be affiliates of Complainants. The disputed domain name was registered on July 17, 2008.

5. Parties’ Contentions

A. Complainant

Complainants assert that they are one of the leading hotel and leisure companies in the world and that they own, manage or franchise almost 900 properties in approximately 100 countries, including properties bearing the following brands: SHERATON, FOUR POINTS BY SHERATON, WESTIN, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT. Complainants assert that they have been using the SHERATON mark since 1928, that they were the first hotel chain listed on the New York Stock Exchange, that there are almost 400 Sheraton hotels worldwide, and that they maintain websites at “www.sheraton.com” and “www.sheratonhotels.com”. Complainants assert that, at the time the Complaint was drafted, the disputed domain name redirected users to a website for “The Travel Club Network®”, which described itself as a “leading travel provider” that “has created affiliations with vendors of various travel products” allowing it to “negotiate aggressive deals on Air, Hotels, Car Rentals and Timeshare Vacation Resorts”. Complainants further assert that, at the time the Complaint was drafted, the disputed domain name contained advertisements for a variety of non-Sheraton hotels including Hyatt, Hilton and Marriott, while also using copyrighted images of Sheraton properties (without permission) and offering vacation packages at Complainants’ properties (without permission). Complainants assert that they wrote to Respondent on or about September 12, 2006 demanding that it cease using Complainant’s trademarks in connection with the website “www.lifetimeofdreamvacations.com”, and that in response Respondent did remove the SHERATON logo.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable”.

Under paragraph 4(a) of the Policy, Complainants must prove the following:

(i) Respondent’s 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 disputed domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy Complainants must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

The trademark registrations and unrebutted long and extensive use described above demonstrate that at least Complainant The Sheraton LLC has rights in the SHERATON mark.

The disputed domain name consists of the SHERATON mark with the generic words “travel” and “club” appended to the end, plus the “.com” gTLD. The addition of generic words to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). “Indeed, where, as here, the generic word describes the goods or services of the Complainant, its addition contributes to the confusion.” Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003. Similarly, the addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and Complainant The Sheraton LLC's trademark. Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which at least Complainant The Sheraton LLC has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainants also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark 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 trademark or service mark at issue.”

Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by <sheratontravelclub.com>. Rather, the submissions attached to the Complaint indicate that Respondent was using the disputed domain name in connection with the sale of goods and/or services that compete with those of Complainants. The sale of competitive products using complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. FA0601000636445; Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934. Respondent has not submitted any Response, and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

Complainants assert that the registration of the disputed domain name in light of the significant recognition of the SHERATON mark is, in itself, bad faith. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Complainants also note that Respondent was aware of their rights at least as early as 2006 in light of the September 12, 2006 cease and desist letter. Complainants also assert that Respondent’s sale of competitive goods and/or services using a domain name confusingly similar to the SHERATON mark falls directly within paragraph 4(b)(iv) of the Policy. As this Panel has previously noted, “[t]he unauthorized use of Complainant’s trademark to sell competitive products constitutes bad faith under paragraph 4(b)(iv) of the Policy.” Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483.

Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Remedy

The Complaint in this matter was brought in the names of “Starwood Hotels & Resorts Worldwide Inc.” and “The Sheraton LLC”. The trademark records attached to the Complaint, however, show a number of United States trademark registrations for SHERATON owned by Complainant “The Sheraton LLC”, as well as a number of international trademark registrations in the names of what appear to be affiliates of the Complainants. Presumably “Starwood Hotels & Resorts Worldwide Inc.” is the parent company of “The Sheraton LLC”. The printouts of “www.sheraton.com” and “www.sheratonhotels.com” attached to the Complaint indicate that “Starwood Hotels & Resorts Worldwide Inc.” owns the copyrights to the materials on those websites. Rights under the Policy are based on the complainant having rights in a trademark or service mark that is identical or confusingly similar to the disputed domain name, however, and the Complaint does not set out a basis for “Starwood Hotels & Resorts Worldwide Inc.” to participate as a Complainant. This issue is amplified by the remedy requested in the Complaint – namely, that the disputed domain name “be transferred to Complainant Starwood Hotels & Resorts Worldwide Inc.” The Panel notes that in several other WIPO domain name disputes involving the same or similar parties, when the Complainants prevailed the disputed domain names in those cases were simply transferred to “Complainant” or “Complainants”. See, e.g., Starwood Hotels & Resorts Worldwide Inc. , Sheraton LLC , Sheraton International Inc. v. Absolutee Corp. Ltd./ Anthonny, Network Service, WIPO Case No. D2010-0523; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Hieu Doan, WIPO Case No. D2009-1734; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Sean Gerrity, WIPO Case No. D2009-0277. In this case, however, the Panel does not have sufficient evidence before it to resolve the standing of “Starwood Hotels & Resorts Worldwide Inc.”, and simply suggests that this be clarified in any future domain name Complaints. The Panel does have sufficient evidence before it in this case to demonstrate that Complainant “The Sheraton LLC” has rights under the Policy that appear to be violated by Respondent’s registration and use of the disputed domain name, and that “The Sheraton LLC” is entitled to have the disputed domain name transferred to it.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sheratontravelclub.com>, be transferred to Complainant The Sheraton LLC.

Bradley A. Slutsky
Sole Panelist
Dated: December 25, 2010

 

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