WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac
Case No. D2011-1275
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc., of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Isaac Isaac, of Selangor, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <sheraton-kl.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2011. On July 26, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name(s). On July 27, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2011.
The Center appointed Isabel Davies as the sole panelist in this matter on August 24, 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
The Complainant is one of the leading hotel and leisure companies in the world and states that it owns, manages and franchises over eight hundred hotels in approximately 100 countries throughout the world, including the Sheraton Imperial Kuala Lumpur Hotel. The Complainant contends that it has used the SHERATON mark in relation to the provision of hotel services for approximately 80 years. It has obtained numerous registrations for the mark throughout the world (including the United States and Malaysia) in connection with hotel and leisure services.
Examples of the Complainant’s trade mark registrations include:
Mark Country Class Registration No. Registration Date
SHERATON U.S. 42 679,027 May 19, 1959
SHERATON U.S. 16 954,454 March 6, 1973
SHERATON U.S. 42 1,784,580 July 27, 1993
SHERATON U.S. 41 1,884,365 March 14, 1995
SHERATON U.S. 41,43,44 3,020,845 November 29, 2005
SHERATON Malaysia 8 92000906 February 8, 1996
SHERATON Malaysia 21 92000907 August 21, 1998
SHERATON Malaysia 29 92/00910(B) October 17, 1995
SHERATON Malaysia 32 92000911 November 3, 1994
SHERATON Malaysia 43 98000962 May 23, 2007
SHERATON Malaysia 41 98000964 June 29, 2007
SHERATON Malaysia 16 B54258 March 26, 1970
The Complainant operates websites located at “www.sheraton.com” and “www.sheratonhotels.com” which can also be accessed by other domain names owned by the Complainant. Consumers may make online bookings at the Complainant’s hotels through these websites.
The Respondent registered the disputed domain name on April 10, 2011. The website associated with the disputed domain name currently resolves to a default website page.
5. Parties’ Contentions
The Complainant asserts that:
(a) The disputed domain name is confusingly similar or identical to the Complainant's famous SHERATON trade mark;
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(c) The disputed domain name was registered and is being used in bad faith.
The disputed domain name is identical and/or confusingly similar to the Complainant’s SHERATON mark
The Complainant asserts that, since the gltd indicator “.com” cannot be taken into consideration, the disputed domain name consists solely of the mark SHERATON and a geographical indication, “KL” being a common abbreviation for Kuala Lumpur. It argues that, since “KL” is a geographical element and the Claimant has a hotel in Kuala Lumpur, its inclusion in the disputed domain name serves to increase rather than diminish the likelihood of confusion, particularly in the context of hotels where a geographical element is commonly used to differentiate between properties.
The Respondent has no rights or legitimate interests in the disputed domain name
The Complainant states that the Respondent has no connection or affiliation with the Complainant and has not been granted any form of consent, express or implied, to use the SHERATON mark whether in a domain name or otherwise. Since the Claimant’s use of the SHERATON mark significantly predates the Respondent’s registration of the disputed domain name, the Complainant states that the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent cannot do so since the only use to which the disputed domain name has been put by the Respondent is in relation to the fraudulent “Phishing” activity outlined below.
The Respondent registered, used and is using the disputed domain name in bad faith
The Complainant asserts that, as the SHERATON mark is among the most famous in the travel and leisure industry, it is inconceivable that the Respondent was unaware of the mark when it registered the disputed domain name. That being the case, the mere fact of registration without authorisation is evidence of bad faith.
The Complainant contends that the Respondent’s use of the disputed domain name and its associated email servers has been solely to impersonate employees of the Claimant’s Sheraton Imperial Kuala Lumpur Hotel and to facilitate a fraudulent “phishing” scam. The Claimant states that the scam involves posting fictitious job listings on job-search websites. Applicants are directed to respond to an email address, email@example.com. Applicants fill out application forms and are then informed that they have been hired or are to be given a job interview. They are then required to obtain airline tickets, work visas or other “necessary” paperwork via third parties recommended to them by the Respondent prior to starting their new job. The process requires applicants to divulge personal information and spend substantial sums of money which they are persuaded to do on the basis that all “expenses” will be refunded when they start work. The Claimant states that, when applicants type in the disputed domain name, they are re-directed to the home page for the Sheraton Imperial Kuala Lumpur Hotel thus further convincing them that the job offer is genuine.
By way of evidence of this scam, the Claimant has produced copies of emails from the […]@sheraton-kl.com email address sent by someone claiming to be “Mr. A. S., HR Manager” of the Sheraton Imperial Kuala Lumpur Hotel. The Complainant states that it has confirmed with the Sheraton Imperial Kuala Lumpur Hotel that there is no one by the name “A. S.” employed there. The emails require the applicants to fill out various documents including job application forms, a visa application form and a consent form allowing “release of their personal information”. These forms are attached to the email correspondence and are on SHERATON branded paper. The attachments also include documents purporting to be from the Malaysian Immigration Authorities and a contract of employment signed by Mr. Swepnam on behalf of the Sheraton Imperial Kuala Lumpur Hotel. The emails request payment of various sums for air fares, visas and other “expenses” and promise that all expenditure will be refunded at a later date.
The Complainant asserts that the Respondent’s exploitation of the Complainant’s goodwill for financial gain by perpetrating a fraud on unsuspecting job applicants clearly demonstrates that the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to obtain relief, the Complainant must prove each of the following three elements, on the balance of probabilities:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii). that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant must establish all three elements even if the Respondent does not reply (see de Vanguard Group, Inc. v Lorna Kang WIPO’s case number D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of the trade mark rights in the mark, SHERATON in relation to hotel and leisure services and that, as a result of the Complainant’s extensive use, a significant degree of goodwill has been built up in the SHERATON mark. The Complainant’s exclusive rights in its SHERATON mark have been recognised in several UDRP decisions that ordered the transfer of disputed domain names to the Complainant: 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>).
The Complainant submits that the disputed domain name, <sheraton-kl.com>, is confusingly similar to the Complainant's SHERATON trade mark.
The gTLD indicator “.com” is typically not to be taken into consideration when judging confusing similarity. (Foundation LeCorbusier v. Mercado M., WIPO Case No. D2004-0723).
Numerous panels have held that the incorporation of a complainant’s trade mark in a disputed domain name can be strong evidence of confusing similarity between the disputed domain name and the complainant’s trade mark (see Nokia Group v Mr. Giannattasio Mario, WIPO Case No. D2002-0782). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy”.
The Panel accepts that “kl” functions as a geographical indicator as it is commonly used as an abbreviation for Kuala Lumpur. It was held in Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services LL, WIPO Case No. D2007-0829 that “the addition of geographic indicators, non-distinctive words or misspellings to said trademarks are not enough to avoid internet users' confusion between complainants' widely-known services and the disputed domain names.” This is even more the case in relation to hotels (see Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244, and also Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136 where it was said that: “[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.”
The panel considers that the addition of a geographical element to the Complainant's SHERATON mark in the disputed domain name adds to rather than diminishes the likelihood of confusion, particularly because the Complainant already operates a hotel in Kuala Lumpur.
The Panel therefore finds that the disputed domain name <sheraton-kl.com> is confusingly similar to the Complainant's registered trade mark SHERATON in which the Complainant has rights. The addition of the “kl” element is not sufficient to preclude a finding of confusing similarity with the Complainant's registered trade mark. The Panel finds that the Complainant has met the requirements of paragraph 4(a(i)) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a Respondent has rights or legitimate interests in the disputed domain name. The list includes: (i) using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark. A complainant must show a prima facie case that the respondent lacks rights or legitimate interest in a disputed domain name, after which the burden of production passes to the respondent. (See Croatia Airlines d.d v Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In the absence of any information to the contrary, the Panel accepts the Claimant’s assertion that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's SHERATON mark.
The Panel has received no evidence or information to suggest that the Respondent is commonly known by the disputed domain name.
The Claimant contends that the Respondent is using its SHERATON mark within the disputed domain name solely to facilitate a “phishing” scam whereby applicants for non-existent jobs at the Claimant’s hotel in Kuala Lumpur are tricked into divulging personal information and paying large sums of money to the Respondent and its associates.
Given that the Complainant’s adoption and extensive use of the SHERATON trade mark predates the Respondent’s registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name. (See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent has not demonstrated any such right or legitimate interest.
On consideration of the evidence put before it by the Claimant, the Panel considers that the Complainant has made a prima facie case of the Respondent's lack of rights to or legitimate interests in the disputed domain name. The Panel notes that the Respondent has elected not to answer this charge by failing to provide a Response and has not provided evidence of any of the circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. These circumstances include the situation where a respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel notes that the Complainant’s use of and registration of the SHERATON mark significantly predates the Respondent’s registration of the disputed domain name. This being the case and given the significant goodwill attached to the SHERATON mark and the use to which the disputed domain name and associated email servers have been put by the Respondent, the Panel finds it inconceivable that the Respondent registered the disputed domain name without having the Complainant’s SHERATON mark in mind.
On the basis of the evidence put before the Panel, it is clear that the use made by the Respondent of the disputed domain name and associated email servers goes beyond a mere attempt to divert Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark. By using the Claimant’s SHERATON mark in the disputed domain name and its associated email servers, the Respondent has exploited the goodwill in the SHERATON mark in order to mislead individuals who have wrongly believed themselves to be dealing with the Claimant. As a result of this deception, these individuals appear to have paid large sums of money to persons indicated by the Respondent possibly in the belief that doing so would secure their employment with the Claimant. The use to which the disputed domain name has been put by the Respondent makes it evident that it has been registered and used in bad faith.
It is therefore established that the Complainant has made out each of the three elements that it is required to prove.
For 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, <sheraton-kl.com> be transferred to the Complainant.
Dated: September 9, 2011