World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC. and Sheraton International IP, LLC. v. Moniker Privacy Services and Igor Nikolenko [3992137]

Case No. D2012-1856

1. The Parties

The Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC and Sheraton International IP, LLC of Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, of United States of America.

The Respondent is Moniker Privacy Services of Portland, United States of America, and Igor Nikolenko [3992137] of Odessa, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <sheratonheathrow.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 18, 2012. On September 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2012, the Registrar 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 the Complainant on September 21, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 21, 2012, adding the disclosed registrant as Respondent.

The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.

The Center appointed Dr. Andrea Jaeger-Lenz as the sole panelist in this matter on October 29, 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

The Complainant is one of the leading hotel and leisure companies in the world. 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.

The 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. The Complainant’s SHERATON trademark is registered in a number of countries worldwide, such as:

- United States trademark registration SHERATON (word) no. 679,027, registered on May 19, 1959;

- United States trademark registration SHERATON (word) no. 954,454, registered on March 6, 1973;

- United States trademark registration SHERATON (word) no. 1,784,580, registered on July 27, 1993;

- United States trademark registration SHERATON (word) no. 1,884,365, registered on March 14,1995;

- United States trademark registration SHERATON (word) no. 3,020,845, registered on November 29, 2005;

- United Kingdom trademark registration SHERATON (word) no. 1,282,953, registered on October 1, 1986;

- United Kingdom trademark registration SHERATON (word) no. B924959, registered on May 9, 1968;

- European Community trademark registration SHERATON (word) no. 10279925, registered on February 1, 2012;

- European Community trademark registration SHERATON (word) no. 7437643, registered on June 10, 2009.

The Complainant is also the owner, amongst others, of the domain names <sheratonheathrowhotel.com> and <sheratonskyline.com>.

According to the WhoIs excerpt provided in Exhibit A to the Complaint, the disputed domain name was registered by the Respondent on March 5, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its well-known SHERATON trademarks. The geographical indicator “Heathrow” in the disputed domain name in addition to the Complainant’s trademark rather adds than diminishes the confusing similarity considering that the Complainant actually operates two properties under its SHERATON trademark at London Heathrow Airport. Upon seeing the Respondent’s website under the disputed domain name, consumers would reasonably believe that the disputed domain name is owned by the Complainant.

Further, the Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the Complainant’s trademark in a domain name or in any other way.

Also, the Respondent has never been known by the disputed domain name and, upon the Complainant’s information and belief, the Respondent’s only reason for registering the disputed domain name is in order to generate pay-per-click revenues from web users by using the disputed domain name as landing page containing links to websites of entities not associated with the Complainant, many of which advertise other travel and leisure companies, including hotel groups like La Quinta Inns or Hilton and others. For this the Complainant provides evidence for in Exhibit H to the Complaint.

Finally, the Complainant argues that the Respondent uses the disputed domain name to deceptively draw traffic to its parking site containing links to the Complainant’s competitors and others in order to earn pay per click revenue, which constitutes bad faith use of the disputed domain name to trade on the Complainant’s trademark and good will. There is no evidence of any bona fide offering of goods or services under the disputed domain name. On the contrary, even the confusing similarity between the disputed domain name and the Complainant’s SHERATON trademark, consumers are likely to believe that the website operated under the disputed domain name is related to or associated with the Complainant. The only reason for the Respondent’s use of the disputed domain name is to intentionally confuse consumers and drive traffic to its website.

Almost all trademarks cited by the Complainant in its favor predate the creation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(b)(i), it is expected of a Respondent to “[r]espond specifically to the statements to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.

In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.

A. Identical or Confusingly Similar

In the present case, the disputed domain name incorporates the word “sheraton”, which is identical to the Complainant’s registered well-known trademark SHERATON. The disputed domain name is only different from the Complainant’s trademark by the inclusion of “heathrow”. 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.

Therefore the disputed domain name reproduces the term “sheraton” in its entirety, and combines it with the term “Heathrow”. The term “Heathrow” refers to a geographic location. Far from lessening the confusing similarity with the Complainant’s trademark, the presence of this terms only reinforces, in the opinion of the Panel the confusing similarity between the disputed domain name and the trademark, as they are closely related to the field of business of the Complainant, whose services are provided at Heathrow, which is the well-known name of the largest of London’s airports located in the west of central London, so that the disputed domain name will be understood as providing access to the website of the Sheraton hotel(s) located at Heathrow Airport (see Starwood Hotels & Resorts Wordlwide, Inc., The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect / powermark consult, mark pd, WIPO Case No. D2012-1125).

Also, 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).

Thus, the Panel finds that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582, Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; 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).

The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a

name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.

Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.

Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must demonstrate its rights or legitimate interests in the disputed domain name in order to rebut the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.

Hence, the Panel finds that the Respondent’s default to refute the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.

Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:

“circumstances indicating that the registrant has registered or the registrant 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 the registrant’s documented out-of-pocket costs directly related to the domain name;

the registrant 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 the registrant has engaged in a pattern of such conduct;

the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.”

The Complainant has brought evidence that its SHERATON trademarks have been registered long before the Respondent registered the disputed domain name. The Complainant’s SHERATON trademark is known to the Panel itself and to many travelers and consumers in general worldwide, so that the Panel accepts the Complainant’s contention that the SHERATON trademark is among the most famous trademarks in the travel and leisure industry and enjoys widespread international recognition. It is therefore inconceivable that the Respondent was unaware of the SHERATON trademark when it registered the disputed domain name (see Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487, where finding of bad faith was given in light of the Complainant’s international fame precluding innocent registration of a confusingly similar domain name). On the bad faith use of the disputed domain name, the Complainant provided evidence in Exhibit H to the Complaint. The Respondent uses the disputed domain name as a landing page to generate pay-per-click revenue from web users that were misdirected to the disputed domain name when searching for the Complainant’s SHERATON property or properties, in particular those close to Heathrow Airport. It can be assumed that the Respondent likely gains revenues from directing website traffic by these links to advertisers, and the Panel holds that such conduct is to be qualified as using the disputed domain name in order to attract, for financial gain, Internet users to the Respondent’s website.

In similar circumstances, UDRP panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate “pay-per-click” sites, may be considered to be evidence of bad faith, regardless of whether it becomes apparent to the Internet user when having arrived at the “pay-per-click” site, that the website is not necessarily connected with the trademark owner (see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582; Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569; Société Air France v. WWW Enterprise, Inc. (173206), WIPO Case No. D2005-1160; and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). At that point, upon arrival at the website, the disputed domain name has already served its purpose to attract the user and generate commercial gain.

For all of the above, the Panel finds that the disputed domain has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

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, <sheratonheathrow.com>, be transferred to the Complainant.

Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: November 8, 2012

 

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