WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Private Registration, WhoIsGuardService.com
Case No. D2012-1307
1. The Parties
1.1. The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, and Sheraton International, Inc., of Stamford, Connecticut, United States of America (the “Complainants”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
1.2. The Respondent is Private Registration, WhoIsGuardService.com of Nanjing, China (the “Respondent”).
2. The Domain Names and Registrar
2.1. The disputed domain name <sheratonabudhabi.com> (the “disputed Domain Name”) is registered with Vautron Rechenzentrum AG (the “Registrar”).
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2012. On June 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On July 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2. 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”).
3.3. 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 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2012.
3.4. The Center appointed Ike Ehiribe as the sole panelist in this matter on July 30, 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
4.1. The Complainants in these administrative proceedings are Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its affiliates, The Sheraton LLC, a Delaware limited liability company and Sheraton International, Inc., a Delaware corporation. The Complainants are one of the leading hotel and leisure companies in the world and own, manage or franchise over 1,000 properties in approximately 100 countries. The Complainants own the SHERATON trademark among others which they have used in connection with goods and services in the hotel industry for over eighty years.
4.2. The Respondent in these proceedings is privacy protected by WhoIsGuardService.com with its contact details at Nanjing, China and according to the WhoIs records the disputed Domain Name <sheratonabudhabi.com> was originally registered on or around September 28, 2008.
5. Parties’ Contentions
5.1. The Complainants own the SHERATON trademark and are the owners of internationally renowned brands in the hotel and leisure industry such as SHERATON, WESTIN, FOUR POINTS BY SHERATON, LE MERIDIEN and ST. REGIS, etc. The Complainants own well over four hundred Sheraton hotels worldwide including the Sheraton Abu Dhabi Hotel & Resort in Abu Dhabi, United Arab Emirates (“U.A.E.”). The Complainants have obtained numerous trademark registrations in various classes for the SHERATON trademark throughout the world in connection with hotel services and relateD goods and services, in particular, in the United States where the Complainants are based, in China where the Respondent is located, and in the U.A.E. where one of the Complainants’ hotel resorts is located. Furthermore it is contended that the Complainants have developed a prominent Internet presence for the Complainants’ SHERATON marks including in connection with its websites located at “www.sheraton.com” and “www.sheratonhotels.com” all of which are accessible through the Complainants’ other domain names.
5.2. The Complainants therefore assert that the disputed Domain Name <sheratonabudhabi.com> is confusingly similar to the Complainants’ SHERATON trademark as it consists of nothing more than the Complainants’ registered trademark, the geographical term “Abu Dhabi” and “.com”, the top level domain (“gTLD”) extension. The Complainants contend further that where the domain name in question incorporates a complainant’s registered trademark, that is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the UDRP. It is further submitted that the addition of the geographical indicator “Abu Dhabi”, to the Complainants’ SHERATON trademark adds to the likelihood of confusion as found in previous UDRP cases such as Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 and Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136. Thus it is further submitted that upon seeing the Respondent’s website at the disputed Domain Name consumers will reasonably but mistakenly believe that it is either the Complainants’ website or is somehow related to or approved by the Complainants.
5.3. The Complainants submit that since the Respondent’s registration of the disputed Domain Name postdates the Complainants’ adoption and extensive use of the SHERATON trademark, and since the Respondent has no affiliation with the Complainants and has not received any license or consent, express or implied, to use the Complainants’ trademark in a domain name or in any other manner, the Respondent cannot be said to establish that rights or legitimate interests exist in the disputed Domain Name, following the UDRP decision in PepsiCo, Inc. v. Amilcar Pere Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Complainants contend that the Respondent’s only reason for registering the disputed Domain Name is for purposes of generating pay-per-click revenue from web users that were misdirected to the website associated with the disputed Domain Name when searching for the Complainants’ Sheraton hotel and resort properties.
5.4. On the question of bad faith use and registration, the Complainants contend that it is inconceivable that the Respondent was unaware of the SHERATON trademark when it decided to register the disputed Domain Name given the international widespread recognition the Complainants’ SHERATON trademark enjoys. Furthermore, it is argued that the mere fact that the Respondent registered the confusingly similar disputed Domain Name without authorization is in itself evidence of bad faith registration. The Complainants in this regard rely on the case of Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 where bad faith was found to exist 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.
5.5. In addition to the foregoing the Complainants argue that the Respondent’s use of the disputed Domain Name to deceptively draw Internet traffic to its parking website containing links to the Complainants’ competitors and others to earn pay-per-click revenue constitutes bad faith use of the disputed Domain Name to trade on the Complainants’ trademark and goodwill. In this regard the Complainants rely on a large number of previous UDRP decisions including Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207 and Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, etc.
5.6. The Respondent did not reply to the Complainants’ contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1. Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainants must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have 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.
6.2. As expressly stated in the Policy, the Complainants must establish the existence of each of the three elements in these proceedings.
A. Identical or Confusingly Similar
6.3. The Complainants have provided overwhelming evidence of ownership of trademark registrations of the SHERATON trademark in the United States where the Complainants are based, in China where the Respondent is located and in Abu Dhabi in the U.A.E. where one of the Complainants’ hotel resorts is located. The Panel is satisfied that the Complainants have since established exclusive worldwide rights in the SHERATON trademark and places reliance in this regard on a significant number of previous UDRP panel decisions including Starwood Hotels & Resort Worldwide Inc. v.Sean Gerrity, WIPO Case No. D2009-0277 where the domain names <sheratondeirahotelandtowers.com> and <sheratonjumeirahbeachresort.com> concerning hotel locations in the U.A.E. were ordered to be transferred to the Complainants in that case. The Panel accepts without any hesitation that the disputed Domain Name <sheratonabudhabi.com> is confusingly similar to the Complainants’ trademark SHERATON. The Panel equally accepts as contended by the Complainants, that the confusing similarity between the disputed Domain Name which wholly incorporates the Complainants’ trademark is not diminished by the mere addition of the geographical indicator “abu dhabi” or the generic top level domain “.com”. In this regard the Panel relies on one of the cases cited by the Complainants, namely Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, supra which contends that the mere addition of a geographical indicator to a domain name actually increases the likelihood of confusion in the minds of Internet visitors who may be seeking hotel accommodation from the Complainants’ genuine websites.
6.4. Accordingly, the Panel is satisfied that the Complainants have established the disputed Domain Name to be confusingly similar to the Complainants’ registered trademark in accordance with paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
6.5. The Panel also finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to produce any evidence of circumstances to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to provide any evidence of any legitimate relationship between the Complainants and the Respondent or consent or any license issued to the Respondent authorizing the Respondent to register and use the disputed Domain Name; therefore the Respondent has failed to establish a bona fide offering of goods and services contrary to the Complainants’ contentions and paragraph 4(c)(i) of the Policy.
6.6. In light of the Complainants’ prima facie case, and as the Respondent’s registration of the disputed Domain Name clearly postdates the Complainants’ adoption and extensive use of its SHERATON trademark, the onus is on the Respondent to establish its rights or legitimate interests in the disputed Domain Name, following PepsiCo, Inc.v. Amilcar Perez Lista d/b/a Cybersor, supra. The Panel accepts just as the Complainants contend under the circumstances that the Respondent cannot likely demonstrate or establish any such right or legitimate interest nor provide any evidence that the Respondent has ever been known by the disputed Domain Name. There is clear evidence that the Respondent is making illegitimate commercial use of the disputed Domain Name for commercial gain as the Respondent is deceptively drawing Internet visitors to its parking site which contains links to the Complainants’ competitors in the hotel and leisure business (as well as unrelated business) to earn pay- per-click revenue. The Panel finds that such usage by the Respondent cannot be described as a bona fide offering of goods or services nor a legitimate noncommercial use or fair use of the disputed Domain Name.
6.7. The Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8. On the question of bad faith registration and use the Panel finds without any doubt that the Respondent registered and continued to use the disputed Domain Name in bad faith and the Panel is satisfied that the Respondent knowingly registered the disputed Domain Name with the clear intention of deceiving and misleading Internet visitors by creating a likelihood of confusion with the Complainants’ trademark as to source, affiliation or endorsement of the Respondent’s websites or product or of a product or service on the Respondent’s website. In arriving at this conclusion the Panel has taken into account a number of undisputed factors. Firstly, the Respondent must have known or is deemed to have known of the Complainants’ international exclusive rights in the SHERATON trademark as registered in different classes in the United States trademark registry since 1959 and in China where the Respondent is based. In the same vein the Respondent could not have been unaware of the Complainants’ extensive Internet presence as shown at “www.sheratonhotels.com” having decided to register the disputed Domain Name <sheratonabudhabi.com> on or around September 28, 2008. The Complainants have argued correctly that the mere fact of registration of the disputed Domain Name that is so confusingly similar with the Complainants’ registered trademark, without authorization is, in and of itself, evidence of its bad faith registration. In this regard, the Panel relies on one of the previous UDRP panel decisions cited by the Complainants which is Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., supra where the domain name in that case <veuveclicquot.org> was ordered to be transferred to the owners of the VEUVE CLICQUOT trademark and name which is well-known for the production of the world famous Veuve Clicquot champagne. Secondly, the Complainants have provided evidence in the form of the printout of the Respondent’s website which indicates that the disputed Domain Name is linked to an active parking site featuring links to the Complainants’ competitors in the hotel and leisure business which the Panel finds to be unchallenged evidence that the Respondent is more than likely exploiting the goodwill associated with the Complainants’ trademarks by generating pay-per-click revenue from each misdirected Internet visitor. See in support the case of Etro S.p.A v. Domain Registrations, supra where the intentional use of a confusingly similar domain name to attract Internet visitors to website with links to the complainant’s competitor’s goods and services was found and held to establish bad faith use. See also the case of Philip Morris Incorporated v. Alex Tsypkin, supra cited by the Complainants where the panel in that case found that the unlawful commercial use of the domain name <discount-marlboro-cigarettes.com> by the respondent in that case was evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(b)(iv) of the Policy. Thirdly, as indicated at paragraph 5.6 above, this Panel has drawn adverse inference from the Respondent’s failure or refusal to respond to the evidence and submissions provided by the Complainants in these proceedings
6.9. The Panel finds that the Complainants have satisfied that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
7.1. 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 <sheratonabudhabi.com> be transferred to the Complainants.
Dated: August 13, 2012