WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd
Case No. D2012-1125
1. The Parties
Complainants are Starwood Hotels & Resorts Worldwide, Inc. and The Sheraton LLC, Sheraton International, Inc. (“Complainant”) of White Plains, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / power mark consult, mark pd of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”).
2. The Domain Name And Registrar
The disputed domain name <sheraton-heathrowhotel.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 4, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Complainant on June 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 11, 2012.
The Center verified that the Complaint amended 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 June 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on July 3, 2012.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on July 11, 2012. 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 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 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 80 years.
Today, there are over 400 Sheraton hotels worldwide, which include two Sheraton hotels near London’s Heathrow airport – the Sheraton Heathrow Hotel and the Sheraton Skyline Hotel London Heathrow.
Complainant is the owner, among others, of following SHERATON trademark (designating the U.K.):
MARK COUNTRY CLASS REGISTRATION NO. REGISTRATION DATE
SHERATON U.K. 42 1282953 March 10, 1989
SHERATON U.K. 16 924957 May 9, 1968
SHERATON U.K. 24 924959 February 17, 1969
SHERATON CTM 25, 41,42 154450 January 20, 1999
Complainant is also the owner, among others, of the domain names <sheraton.com> and <sheratonhotels.com>.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to its SHERATON trademarks and its domain names.
The disputed domain name reproduces exactly Complainant’s trademarks and domain names, and Respondent is, and has been using, the disputed domain name and/or its associated email servers to facilitate a scam that involves the posting of fake job listings at various websites for non-existent job openings at Complainant’s properties around the world.
The disputed domain name corresponds to a case of “phishing”. In particular, this is a typically method that carried out by email spoofing and it often directs users to enter details at a fake website whose look and feel are almost identical to the legitimate one.
Complainant requests that the disputed domain name be transferred to Complainant
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must prove that:
(i) the disputed 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) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the word “sheraton”, which is identical to Complainant’s registered well-known trademark SHERATON.
It is clear that the disputed domain name incorporates in its entirety the SHERATON trademark to which the geographic term “Heathrow” and the generic term “hotel” have been added.
The disputed domain name is only relevantly different from Complainant’s trademark by the inclusion of a hyphen between “sheraton” and “heathrowhotel”. It is well established that the “.com” TLD, being a necessary component of a domain name, may be disregarded for the purpose of comparison under this ground. A number of previous UDRP decisions, including cases specifically involving Complainant’s marks, have found that a hyphen does not distinguish the domain name from a trademark in which a complainant has established rights. See e.g., Giorgio Armani S.p.A. v. lv kefeng, WIPO Case No. D2011-0740.
Therefore the disputed domain name reproduces the term “sheraton” in its entirety, and combines it with the terms “Heathrow” and “hotel”. The Panel finds term “hotel” is generic and devoid of distinctiveness in the given circumstances. The term “Heathrow” refers to a geographic location. Far from lessening a likelihood of confusion with Complainant’s trademark, the presence of these terms only reinforces to the Panel the similarity between the disputed domain name and the trademark, as they are closely related to the field of business of Complainant, whose services are provided at Heathrow (without mentioning that Heathrow is a famous airport located to the west of Central London), among other geographic locations.
Moreover, the Panel considers that the disputed domain name which incorporates a geographic term with a registered trademark may be considered identical or confusingly similar to the trademark for the purpose of the Policy (See Four Seasons Hotels Limited v. Daniel Kirchhof / Unister GmbH, WIPO Case No. D2011-0948; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).
It is also established that the addition of a generic term (such as here the word “hotel”) may not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel finds the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), Complainant has to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
Complainant has presented a prima facie case and argues that Respondent has not provided any evidence demonstrating that Respondent might be commonly known by the disputed domain name, or that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Panel finds that Respondent cannot claim that it is unaware of Complainant’s marks, as it utilizes such without disclaimer on the website at the disputed domain name for a commercial purpose, which is not bona fide use.
The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
Complainant has provided evidence showing that Respondent has used the disputed domain name in connection with fraudulent job fraud scam especially to provide cover for sending fraudulent email messages, and to redirect all Internet traffic to the disputed domain name to Complainant’s official website for the Sheraton Heathrow Hotel in order to confuse prospective job applicants so that they believe that the job offer and subsequent request for the applicant’s personal information and money is legitimate.
The Panel finds that the public is likely to be confused into thinking that the disputed domain name <sheraton-heathrowhotel.com> has a connection with Complainant, which is contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Panel finds Internet users may be led to believe that the disputed domain name is owned by Complainant or is the official authorized partner of Complainant, which is not the case, for Respondent’s commercial gain.
The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds the third element of the Policy has, therefore, been met.
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-heathrowhotel.com> be transferred to Complainant Starwood Hotels & Resorts Worldwide, Inc, as requested by Complainant.
Dated: July 18, 2012