Complainant is Starwood Hotels & Resorts Worldwide, Inc., White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Franck Dossa and INNternet, Miami Beach, Florida, United States of America.
The disputed domain name <wfortlauderdaleresidence.com> (the “Domain Name”) is registered with OVH.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2008. On August 25, 2008, the Center transmitted by e-mail to OVH a request for registrar verification in connection with the disputed Domain Name. On August 26, 2008, OVH 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”), 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 August 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's of his default on September 18, 2008.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 25, 2008. 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.
Complainant is a leading hotel and resort company, among whose well-known hotels is the “W.” Complainant has used W and W HOTELS as marks since 1998, and registered the W and W HOTELS marks with the United States Patent & Trademark Office in 1999. As early as 2003, Complainant has used W RESIDENCES as a mark. A stylized version of that mark was registered with the USPTO in April 2006 with respect to real estate development services. The mark W RESIDENCES is also registered in Israel and the Benelux countries.
In 2003, Complainant announced that a W Residences residential development was underway in Fort Lauderdale, Florida. It is expected to open in January 2009 with some 171 condominium-hotel units. These units are already advertised for sale at Complainant's website, accessible via the domain names <wresidences.com>, <wfortlauderdaleresidences.com>, and <wftlauderdaleresidences.com>.
According to the website to which the Domain Name <wfortlauderdaleresidence.com> resolves, Respondent is “an independent real estate broker.”
On September 16, 2005, Respondent registered the disputed Domain Name. The website to which the Domain Name resolves has the appearance of being operated by Complainant. A prominent “W” appears at the top of the page, and the term “W Fort Lauderdale Hotel & Residences” appears throughout. The page describes in flattering terms the W chain in general and the anticipated W Fort Lauderdale Residences in particular. There are even hyperlinks on the page suggesting some sponsorship or endorsement by Complainant, including one link accessible via an icon “W Hotel®.”
Respondent's website also indicates, in small print at the bottom of the home page, that “www.wfortlauderdaleresidence.com” is not affiliated nor related to the developer, or “www.fortlauderdaleresidences.com”, or Starwood Hotels & Resorts Worldwide, Inc.,…”
Complainant contends that it has not granted Respondent any license, permission or other right to use its marks in a domain name or otherwise. This is undisputed.
On March 10, 2008, Complainant sent Respondent, via telecopy and certified mail, a cease-and-desist letter demanding, among other things, the transfer of the Domain Name to Complainant. Respondent has not responded to this letter.
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant clearly has rights in the mark W Residences through registration and use. The record supports this conclusion, and Respondent has not disputed it.
The Domain Name differs materially from the W RESIDENCES mark only insofar as it omits the final “S” and inserts “Fort Lauderdale” into the mark.
In the Panel's view, these differences do not overcome the confusing similarity between the mark and the Domain Name. In Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244, the panel found the domain name <crowneplazaatlanta.com> to be confusingly similar to the complainant's CROWNE PLAZA mark. The panel observed:
“The addition of the city “Atlanta” to Complainant's trademark adds to rather than diminishes the likelihood of confusion. The addition of a place name to a trademark, such as the addition of “Atlanta” to “Crowne Plaza” is a common method for indicating the location of a business enterprise identified by the trademark or service mark. This is even more so in the case of hotels.”
This Panel finds the Six Continents decision persuasive, and finds the factual context there (the appendage of a geographic identifier at the end of a trademarked hotel name) sufficiently akin to the present context (the insertion of a geographic identifier within a trademarked hotel name) to adopt the reasoning of that case.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).
Complainant asserts that, because its adoption and extensive use of its W RESIDENCES mark predates Respondent's first use of the disputed Domain Name, the burden is on Respondent to establish his/its rights or legitimate interests in respect of the Domain Name. Complainant cites PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, in support of this proposition. Although the Panel agrees that the PepsiCo. case stands for this proposition, the Panel does not accept it. There is nothing in the Policy indicating that the burden of proof depends on the chronology of use of the disputed Domain Name and the subject trademark. Rather, Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
In this vein, the Panel agrees with the following passage from the PepsiCo. decision: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions. Nor did Respondent respond to Complainant's cease-and-desist letter in some attempt to articulate his/its bona fides.
Under these circumstances, it is easy to agree with Complainant that it did not authorize Respondent to use Complainant's marks in a domain name or otherwise. It is also easy to conclude that none of the other bases for establishing rights or legitimate interests under Policy paragraph 4(c) is present here.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraph 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument. The Panel agrees that Respondent meets the bad faith standard of paragraph 4(b)(iv).
There is no question that Respondent had Complainant's mark in mind when registering the disputed Domain Name. Respondent's website expressly acknowledges Complainant and even Complainant's domain name targeted at the Fort Lauderdale development in question, <wfortlauderdaleresidences.com>.
Respondent is a real estate broker, and the Panel concludes that Respondent's use of the Domain Name and corresponding website is very likely intended for commercial gain as a result of misdirected Internet traffic from users seeking Complainant's, not Respondent's site. The small-print disclaimers at the bottom of Respondent's web page do not suffice to render his/its use of the Domain Name bona fide.
Accordingly, because bad faith registration and use exists under paragraph 4(b)(iv), the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wfortlauderdaleresidence.com> be transferred to Complainant.
Robert A. Badgley
Dated: October 9, 2008