World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., Westin Hotel Management, L.P., The Sheraton LLC, and Sheraton International Inc. v. EFT Everlasting Friendship Trus and Global Banking & Investment Trust

Case No. D2010-2288

1. The Parties

Complainants are Starwood Hotels & Resorts Worldwide, Inc., Westin Hotel Management, L.P., The 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.

Respondents are EFT Everlasting Friendship Trus and Global Banking & Investment Trust of St Helier, Jersey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <sheratongrande.com>, <sheratongrandelaguna.com>, <sheratonpattaya.com>, <westingrande.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com and GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2010. On January 4, 2011, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com and GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 5, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 6, 2011 OnlineNic, Inc. d/b/a China-Channel.com 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 January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on February 7, 2011. 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

Complainants in this matter are Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its affiliates, Westin Hotel Management, L.P., a Delaware limited partnership, The Sheraton LLC, a Delaware limited liability company, and Sheraton International Inc., a Delaware corporation (hereinafter, collectively “Complainant”).

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. Complainant is a fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: SHERATON, WESTIN, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT hotel brands.

Complainant owns the SHERATON trademark, among many others, which it has used in connection with its goods and services in the hotel and leisure industry for over eighty (80) years. Today, there are over four hundred (400) Sheraton hotels worldwide, including seven Sheraton Grande or Sheraton Grand properties around the world; Sheraton Grande Sukhumvit, Bangkok, Thailand; Sheraton Grande Laguna, Phuket, Thailand; Sheraton Grand Sacramento Hotel, Sacramento, California; Sheraton Grande Tokyo Bay Hotel, Tokyo, Japan; Sheraton Grande Ocean Resort, Miyazaki, Japan; Sheraton Grande Walkerhill, Seoul, Republic of Korea; and Sheraton Grand Hotel & Spa, Edinburgh, United Kingdom of Great Britain and Northern Ireland.

Through Complainant’s widespread, extensive use of the SHERATON trademark in connection with hotel services and related goods and services, and its expenditure of large sums in promoting the trademark on television, in print advertisements, on the Internet and in other media, the SHERATON trademark has become uniquely associated with Complainant and its services, and has become well known in the United States and throughout the world. As a result, Complainant’s SHERATON mark represents valuable goodwill.

Complainant has obtained numerous registrations for the SHERATON trademark throughout the world in connection with its hotel services and related goods and services. For example, Complainant owns the following SHERATON trademark registrations: United States Registration Numbers 679,027, registered May 19, 1959; 954,454, registered March 6, 1973; 1,784,580 registered July 27, 1993; 1,884,365 registered March 14, 1995; 3,020,845 registered November 29, 2005; United Kingdom Registration Numbers 924957, registered May 9, 1968; 924959, registered February 17, 1969; 1282953 registered March 10, 1989; Thailand Registration Numbers Kor126366 registered November 5, 1976; SM23894 registered November 7, 2002; SM35621, registered December 21, 2007; and SM36522, registered December 21, 2007.

Complainant also has developed a prominent Internet presence for its SHERATON marks, including in connection with its websites located at “www.sheraton.com” and “www.sheratonhotels.com”, all of which are also accessible through other Complainant-owned domain names. The above-mentioned websites enable Internet users to make reservations at Complainant’s SHERATON hotels and to access information regarding Complainant and its various SHERATON hotels and related services.

Complainant’s exclusive rights in its SHERATON marks have been recognized in several UDRP decisions that ordered the transfer of infringing domain names to Complainant. See, e.g., Starwood Hotels & Resorts Worldwide, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0107 (transferring twenty-three Sheraton-formative domain names, including <sheratonboston.com> and <sheratonpalace.com>); Starwood Hotels & Resorts Worldwide, Inc. v. Services, LLC, WIPO Case No. D2007-0829 (transferring fourteen Sheraton-formative domain names, including <orlandosheraton.com> and <sheratonbostonhotel.com>); Starwood Hotels & Resorts Worldwide, Inc. v. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150 (transferring twenty-four Sheraton-formative domain names, including <hotelsheraton.com> and <hotels-sheraton.net>); Starwood Hotels & Resorts Worldwide, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2007-1406 (transferring twenty-four Sheraton-formative domain names, including <sheratonbalharbor.com> and <sheratonparkridge.com>); Starwood Hotels & Resorts Worldwide, Inc. v. Hong Yunju, WIPO Case No. D2007-1764 (<sheratonhotel.com>); Starwood Hotels & Resorts Worldwide, Inc. v. Sean Gerrity, WIPO Case No. D2009-0277 (<sheratondeirahotelandtowers.com> and <sheratonjumeirahbeachresort.com>); and Starwood Hotels & Resorts Worldwide, Inc. v. Pearson Network, S.A./President, WIPO Case No. D2009-0328 (<sheratonphiladelphia.com>).

Additionally, Complainant owns the WESTIN trademark, among many others, which it uses in connection with its goods and services in the hotel and leisure industry. Its WESTIN hotels, introduced in 1981, cater to both business and leisure travelers looking for spa retreats and other comfort amenities. As of the filing date of this Complaint, there are more than one hundred and sixty (160) WESTIN hotels in almost thirty (30) countries worldwide.

Through its widespread, extensive use of the WESTIN trademark 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 WESTIN trademark has become uniquely associated with Complainant and its services, and has become well known in the United States and throughout the world. As a result, Complainant’s WESTIN trademark represents valuable goodwill.

In addition to its extensive use of Complainant’s WESTIN trademark, Complainant has obtained numerous registrations for this trademark throughout the world in connection with its hotel services and related goods and services. For example, Complainant owns the following trademark registrations: United States Registration Numbers, 1,320,080 registered February 12, 1985; 1,720,799 registered September 29, 1992; 2,257,629 registered June 29, 1999; United Kingdom Registration Numbers, 1146391 registered December 31, 1980; 1282590 registered October 1, 1986; Community Trade Mark Registration Number 194142 registered March 16, 2000; Thailand Registration Numbers, Kor135223 registered January 18, 1982; BOR69 registered February 10, 1993; and Kor130645 registered April 4, 1991.

Complainant has developed a prominent Internet presence for its WESTIN trademark, including in connection with its websites located at “www.westin.com” and “www.westinhotels.com”, both of which are also accessible through other Complainant owned domain names. The above-mentioned websites enable Internet users to access information regarding Complainant’s various WESTIN hotels and related services and to learn more about Complainant and its WESTIN hotels.

Complainant’s exclusive rights in its WESTIN Marks have been recognized in several UDRP decisions that ordered the transfer of infringing domain names to Complainant. See, e.g., Starwood Hotels & Resorts Worldwide, Inc. v. Private Registrations Aktien Geselsschaft, WIPO Case No. D2010-0527 (<westincrowncenter.com>); Starwood Hotels & Resorts Worldwide Inc. v. PrivacyProtect.org/ Purple Bucquet, WIPO Case No. D2010-0525 (<westinbonaventure.com>); Starwood Hotels & Resorts Worldwide Inc. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (<sheratonnassaubeachresort.com>, <westinresortaruba.com> and <westinresortcancun.com>); and Starwood Hotels & Resorts Worldwide, Inc. v. Marketing Total S.A., WIPO Case No. D2008-0019 (<liveatthewestin.com>,<thewestinstjohn.com>, <westinbellvue.com>, <westincaminoreal.com, <westincasino.com>, <westincasurina.com>, <westinhotelchicago.com>, <westinhotelsandresorts.com>, <westininnisbrookresort.com>, <westinlapalomaresortandspa.com>, <westinoaksgalleria.com>, <westinphilippineplazahotel.com>, <westinsandiego.com>, <westinsydney.com> and <westinvillas.com>).

Complainant has several Westin Grand and Westin Grande properties, including: The Westin Grande Sukhumvit, Bangkok, Thailand; The Westin Grand, Vancouver, Canada; The Westin Grand, Berlin, Germany; and The Westin Grand, Frankfurt, Germany.

It appears that the disputed domain names were registered in 2003, 2004, and 2005 long after Complainant’s trademarks were registered in the United States, the United Kingdom of Great Britain and Northern Ireland and Thailand.

The Panel finds that the Respondent EFT Everlasting Friendship Trus and Global Banking & Investment Trust are related entities properly joined as Respondent and hereinafter referred to as Respondent for reasons provided under the heading Discussion and Findings.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant submits that the disputed domain names are confusingly similar to Complainant’s SHERATON and WESTIN trademarks because they consist of Complainant’s trade marks combined with variations of the official names for each of the hotels, “Sheraton Grande Sukhumvit, Bangkok, Thailand,” “Sheraton Pattaya Resort, Pattaya, Thailand”, “Sheraton Grande Laguna, Phuket, Thailand” and “The Westin Grande Sukhumvit, Bangkok, Thailand.” The addition of such words such as “pattaya,” “grande” and “laguna” to Complainant’s trade marks adds to rather than diminishes the likelihood of confusion. See Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244, (“The 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.”); ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649 (use of the generic term “hotel” heightens confusion because this term is descriptive of Complainant’s goods and services).

Complainant further submits that the gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity. Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723.

Complainant further states that the addition of a geographical indicator to Complainant’s SHERATON trademark, such as “pattaya,” “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; see also Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136 (“[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 (“[T]he addition of the suffix ‘Michigan’ is apt to suggest that the Complainant’s [Holiday Inn Hotels] are provided in that particular location.”).

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that given its adoption and extensive use of the SHERATON and WESTIN trade marks predates Respondent’s registration of the disputed domain names, the burden is on Respondent to establish its rights or legitimate interests in the disputed domain names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. Respondent cannot demonstrate or establish any such right or legitimate interest.

Complainant states that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s trade marks in domain names or in any other manner.

Complainant further submits that Respondent is using the SHERATON and WESTIN trade marks to attract users to its “www.sheratongrande.com”, “www.westingrande.com”, “www.sheratonpattaya.com” and “www.sheratongrandelaguna.com” websites. As of the filing date of this Complaint, three of these four websites were inactive, namely, “www.sheratongrande.com”, “www.sheratonpattaya.com” and “www.sheratongrandelaguna.com”.

Complainant states that the “www.sheratongrande.com” website appears to contain an erroneous attempt to redirect Internet users to “www.R24.org/thailand1x1.com/bangkok/sheratongrande/details”. These redirection instructions were intended to redirect visitors from “www.sheratongrande.com” to “www.thailand1x1.com”, a hotel booking engine for hotels and resorts located in Thailand that is owned by Respondent. Given that Complainant operates the following Sheraton properties in Thailand, Sheraton Grande Sukhumvit, Bangkok, Thailand; Sheraton Grande Laguna, Phuket, Thailand, it is clear that Respondent registered the <sheratongrande.com> domain name to divert traffic and bookings to its own travel websites.

Complainant submits that upon seeing Respondent’s websites associated with the disputed domain names, consumers will reasonably but mistakenly believe that they are either Complainant’s websites or are somehow related to or approved by Complainant, when that is not the case. It is certainly likely that someone looking for a website for the Sheraton Grande Sukhumvit, Bangkok, Thailand, Sheraton Pattaya Resort, Pattaya, Thailand, Sheraton Grande Laguna, Phuket, Thailand or The Westin Grande Sukhumvit, Bangkok, Thailand would type in the URL for any one of the disputed domain names and not realize that they were not at one of Complainant’s own websites.

A.3. Registration in Bad Faith

Complainant states given that Complainant’s adoption and extensive use of the SHERATON and WESTIN mark predates the registration of the disputed domain names, the burden is on Respondent to establish its rights or legitimate interests in the disputed domain names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. Respondent cannot demonstrate or establish any such rights or legitimate interests.

Complainant submits that Respondent is clearly aware of Complainant’s rights to in its famous trademarks, as Respondent has been ordered to transfer similarly disputed domain names to Complainant in the past. See Société des Hôtels Méridien v. EFT, WIPO Case No. D2004-0995 (Société des Hôtels Méridien is another affiliated company of Complainant Starwood Hotels & Resorts Worldwide, Inc.)

Complainant states that it’s SHERATON and WESTIN marks are among the most famous trademarks in the travel and leisure industry and enjoy widespread international recognition. It is therefore inconceivable that Respondent was unaware of Complainant’s trade marks when it registered the disputed domain names. See Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 at (finding bad faith where the complainant’s international fame precludes innocent registration of a confusingly similar domain name). The mere fact that Respondent registered the confusingly similar disputed domain names without authorization is, in and of itself, evidence of its bad faith registration. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

A.4. Use in Bad Faith

Complainant states that the fact that Respondent has posted a website for a competing hotel reservation website at <westingrande.com> and has attempted to redirect traffic to a similar competing site at <sheratongrande.com> is further evidence that Respondent knew of Complainant’s rights in the SHERATON and WESTIN trademarks and suggests Respondent’s opportunistic bad faith in registering the disputed domain names. Respondent’s exploitation of Complainant’s goodwill for financial gain by creating confusion demonstrates Respondent’s bad faith. See Policy paragraph 4(b)(iv) (attempting “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” is evidence of bad faith use and registration).

Complainant submits that Respondent’s mere holding of some of the disputed domain names is itself bad faith use in view of the renown of the SHERATON and WESTIN marks and absence of likely legitimate uses by an unauthorized party like Respondent. See Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As the Panel held in Comerica, supra:

“The very act of having acquired [the domain names incorporating the complainant’s mark] raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights.”

Complainant submits that because the ultimate effect of any use of the disputed domain names will be to cause confusion with the SHERATON and WESTIN trademarks, the use and registration of the disputed domain names must be considered to be in bad faith. See Embratel v. McCarthy, WIPO Case No. D2000-0164; Forte (UK) Limited v. Ceschel, WIPO Case No. D2000-0283; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. 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 a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.

Complainant states that on June 2, 2006 and again on June 27, 2006, it sent demand letters to Respondent regarding its use and registration of the <sheratongrande.com> domain name. These letters requested that Respondent transfer the disputed domain name to Complainant. The June 2, 2006 letter was delivered to Respondent by DHL on June 7, 2006. To date, Complainant has received no response from Respondent to either letter.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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 it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent 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 did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

Preliminary Matter

The Panel notes that the registrant of the disputed domain name <sheratongrande.com> is EFT Everlasting Friendship Trus in which the letter “t” is missing from the word “trust”. A previous UDRP panel found that two entities EFT Everlasting Friendship Trust and Global Banking & Investment Trust have a business affiliation. See ACCOR v. GBT, WIPO Case No. D2005-0809 (noting Respondent’s corporate name change from Everlasting Friendship Trust to Global Banking & Investment Trust). The entity Everlasting Friendship Trust has been involved in a number of domain name disputes involving domain name registrations which were held to be confusingly similar to well-known registered trademarks of hotel operators and was involved in transferring the registration of the domain name after receiving a cease and desist letter from the trademark owner. See ACCOR v. GBT, WIPO Case No. D2005-0809. Everlasting Friendship Trust was previously ordered to transfer the domain name <novotelnewyork.com> which was held to be confusingly similar to the NOVOTEL registered trademark for hotels. See, ACCOR v. Everlasting Friendship Trust, WIPO Case No. D2005-0288. Further, in this case, Respondent Everlasting Friendship Trus failed to respond to two cease and desist letters forwarded by Complainant and failed to file a Response to the Complaint which included the allegation that Everlasting Friendship Trus has a business affiliation with Global Banking & Investment Trust. Having regard to the foregoing facts the Panel finds that Everlasting Friendship Trus and Global Banking & Investment Trust are affiliated entities.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of numerous registered trademarks for the trademarks SHERATON and WESTIN registered in connection with its hotel services and related goods and services throughout the world. Among the four hundred (400) SHERATON hotels operated worldwide are seven (7) SHERATON GRAND or GRANDE hotels. The SHERATON trademark has been in use in association with hotels since 1928. Complainant owns trademark registrations for SHERATON in Thailand extending back as early as 1976. Among the properties operated by Complainant in Thailand are SHERATON Grande Laguna, Phuket, Thailand and the SHERATON Pattaya Resort, in Pattaya, Thailand. Complainant commenced using its WESTIN trademark in relation to operation of hotels in 1981 and currently there are more than one hundred and sixty (160) WESTIN hotels in almost thirty (30) countries worldwide. Complainant owns three trademark registrations for the trademark WESTIN in Thailand, the earliest of which was registered in 1982. Complainant has several WESTIN Grand and WESTIN Grande hotels including The WESTIN Grande Sukhumvit, Bangkok, Thailand. The disputed domain names were registered in 2003, 2004, and 2005, well after Complainant’s SHERATON and WESTIN trademarks were well known throughout the world.

The disputed domain names <sheratongrande.com>, <westingrande.com>, <sheratongrandelaguna.com> and <sheratonpattaya.com> incorporate the entirety of Complainant’s trademark SHERATON or WESTIN. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g., PepsiCo. Inc. v. PEPSI SRl , WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant's mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domains confusingly similar to complainant's PEPSI mark).

The addition of such words such as “Pattaya, ”and “Laguna” to Complainant’s trade marks adds to rather than diminishes the likelihood of confusion. See Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 (“The 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”); See also Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136, (“[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 (“[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 addition of the word “grande” to Complainant’s trademarks SHERATON and WESTIN add to rather than diminish confusion as Complainant uses the word “grand” or “grande” as part of the name of SHERATON and WESTIN hotels it operates.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP Panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain names are confusingly similar to Complainant’s trademarks for or including SHERATON or WESTIN.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto.

As of the filing date of this Complaint, three websites, “www.sheratongrande.com”, “www.sheratonpattaya.com” and “www.sheratongrandelaguna.com” associated with three of the disputed domain names were inactive. The fourth website “www.westingrande.com” attempts to redirect visitors to a third-party booking engine. The website at “www.westingrande.com” contains information on Complainant’s “Westin Grande Sukhumvit Hotel, Bangkok,” and purports to be provide information on bookings through the site, “www.PrecisionReservation.com”, though all links to that site are currently inactive. Again, it is clear that the <westingrande.com> domain name was registered to divert traffic and bookings away from Complainant’s own websites.

Complainant operates the following SHERATON properties in Thailand, Sheraton Grande Sukhumvit, Bangkok, Thailand; Sheraton Grande Laguna, Phuket, Thailand, as well as the WESTIN property The Westin Grande Sukhumvit, Bangkok, Thailand. It is clear that Respondent registered the <sheratongrande.com> disputed domain name to divert traffic and bookings to its own travel websites.

Internet users upon seeing Respondent’s websites associated with the disputed domain names, will reasonably but mistakenly believe that they are either Complainant’s websites or are somehow related to or approved by Complainant, when that is not the case. It is certainly likely that someone looking for a website for Complainant’s Sheraton Grande Sukhumvit, Bangkok, Thailand, Sheraton Pattaya Resort, Pattaya, Thailand, Sheraton Grande Laguna, Phuket, Thailand or The Westin Grande Sukhumvit, Bangkok, Thailand would type in the URL for any one of the disputed domain names and not realize that they were not at one of Complainant’s own websites.

Respondent has appeared in previous UDRP cases, believed to have registered dozens of hotel related domain names, where many of which incorporate internationally well-known trademarks in conjunction with locations or property names in south east Asia: <conradphuket.com>, <lemeridienjakarta.com>, <lemeridienkhaolak.com>, <lemeridienpacific.com>, <holidayinnphiphi.com>. See Hilton Group Plc v. EFT, WIPO Case No. D2005-0682, Société des Hôtels Méridien v. EFT, WIPO Case No. D2004-0995; Six Continents Hotels, Inc. v. GBT, WIPO Case No. D2008-1309. It is well established that the practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

C. 1. Registered in Bad Faith

Complainant’s SHERATON and WESTIN marks are among the best known trademarks in the travel and leisure industry and enjoy widespread international recognition. It is therefore inconceivable that Respondent was unaware of Complainant’s trade marks when it registered the disputed domain names. See Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (finding bad faith where complainant’s international fame precludes innocent registration of a confusingly similar domain name). The mere fact that Respondent registered the confusingly similar disputed domain names without authorization is, in and of itself, evidence of its bad faith registration. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Respondent must have been aware of Complainant’s rights to its well-known SHERATON and WESTIN trademarks, as Respondent has been ordered to transfer similarly disputed domain names to Complainant in the past. See Société des Hôtels Méridien v. EFT, WIPO Case No. D2004-0995 (Societe des Hotels Meridien is another affiliated company of Complainant Starwood Hotels & Resorts Worldwide, Inc.)

Respondent has appeared in previous UDRP cases, believed to have registered dozens of hotel related domain names, many of which incorporate internationally well-known trademarks in conjunction with locations or property names in south east Asia: <conradphuket.com>, <lemeridienjakarta. com>, <lemeridienkhaolak. com>, <lemeridienpacific. com>, <holidayinnphiphi. com>. See Hilton Group Plc v. EFT, WIPO Case No. D2005-0682, Société des Hôtels Méridien v. EFT, WIPO Case No. D2004-0995; Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease, WIPO Case No. D2008-1309. It is well established that the practice of registering domain names containing the trademarks of other companies can indicate that the disputed domain names were registered and are being used in bad faith.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain names in bad faith.

C.2. Domain Name Used in Bad Faith

As of the filing date of this Complaint three of the websites, “www.sheratongrande.com”, “www.sheratonpattaya.com” and “www.sheratongrandelaguna.com” associated with the disputed domain names were inactive. Respondent’s mere holding of the inactive disputed domain names is itself bad faith use in view of the renown of the SHERATON and WESTIN marks and absence of likely legitimate uses by an unauthorized party like Respondent. See Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As the Panel held in Comerica, supra:

“The very act of having acquired [the domain names incorporating the complainant’s mark] raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights.”

Respondent has posted a website for a competing hotel reservation website at “www.westingrande.com” and has attempted to redirect traffic to a similar competing site at “www.sheratongrande.com” is further evidence that Respondent knew of Complainant’s rights in the SHERATON and WESTIN trademarks and suggests Respondent’s opportunistic bad faith in registering the disputed domain names. Respondent’s exploitation of Complainant’s goodwill for financial gain by creating confusion demonstrates Respondent’s bad faith. See Policy paragraph 4(b)(iv) (attempting “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” is evidence of bad faith use and registration).

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. 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 names, <sheratongrande.com>, <westingrande.com>, <sheratongrandelaguna.com> and <sheratonpattaya.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: February 20, 2011

 

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