The Complainants are Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, and Westin Hotel Management L.P. of White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Media Insight a/k/a Media Insights of Miami Beach, Florida, United States of America, represented by Gaebe, Mullen, Antonelli, Esco & Dimatteo, United States of America.
The disputed domain names <sheratonnassaubeachresort.com>, <westinresortaruba.com>, and <westinresortcancun.com> are registered with Melbourne IT Ltd; the disputed domain name <lemeridiencancun.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to Network Solutions, LLC and Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On February 12, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 15, 2010, Melbourne IT Ltd 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 February 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2010. The Response was filed with the Center on March 11, 2010.
On March 15, 2010, the Complainant forwarded to the Center a motion to withdraw the Complaint without prejudice to refilling the Complaint or proceedings in matter in any other forum. On March 18, 2010, the Respondent lodged with the Center its objection to the withdrawal of the Complainant without prejudice. In light of the Respondent's objection, the Center notified the Parties on March 26, 2010 that the Center would proceed with the appointment of a panelist.
The Center appointed William R. Towns as the sole panelist in this matter on March 26, 2010. 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.
The Complainant thereafter lodged with the Center a supplemental submission (“Complainant's Supplemental Submission”), which was forwarded by the Center to the Panel on March 29, 2010. On March 30, 2010, the Center forwarded to the Panel the Respondent's Objections to the filing of the Complainant's Supplemental Submission, in which the Respondent further requested an opportunity to file a response should the Panel accept the Complainant's supplemental submission.
Through a Panel Procedural Order issued to the Parties on April 1, 2010, the Respondent was afforded an opportunity to file a supplemental submission no later than April 8, 2010. Pursuant to paragraph 15(b) of the Rules, the date for the Panel to forward its decision to the Center was extended to April 22, 2010. The Respondent timely filed a supplemental submission (“Respondent's Supplemental Submission”) with the Center on April 8, 2010, which was forwarded by the Center to the Panel on April 9, 2010. The Panel's disposition of the Parties' supplemental submissions is addressed below.
The Complainant Starwood Hotels and Resorts Worldwide, Inc. (“Starwood”) is a hotel and leisure company headquartered in the United States, which owns, operates and franchises hotels and resorts under several brands, including LE MERIDIEN, SHERATON, and WESTIN. The Complainants The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, and Westin Hotel Management L.P. are affiliated with Starwood. Starwood and its affiliates are hereinafter referred to for convenience as “the Complainant”.
The Complainant has obtained registrations for the SHERATON, LE MERIDIEN and WESTIN marks in numerous countries around the world, and each of the marks have been in use for more than twenty-five (25) years. The Complainant also has registered a number of domain names reflecting the marks for use with the Complainant's official websites, from which Internet users can reserve hotel rooms at the Complainant's various worldwide hotel properties online.
The Respondent registered the disputed domain names <westinresortaruba.com> and <westinresortcancun.com> on February 13, 2009, and the disputed domain name <sheratonnassaubeachresort.com> on August 29, 2008. The disputed domain name <lemeridiencancun.com> was initially registered on February 9, 2001, according to the concerned Registrar's WhoIs records. According to the Response, the Respondent is the media division of a Florida-based tour operator, Vacation Store, Inc. (“Vacation Store”). The Response indicates that Vacation Store provides travel packages to destinations outside the United States, which includes booking hotel rooms.
Each of the disputed domain names resolves to a website featuring one of the Complainant's hotels or resorts. The disputed domain name <lemeridiencancun.com> resolves to a website featuring the Complainant's Le Meridien Cancun Resort & Spa, in Cancun, Mexico. The disputed domain names <westinresortaruba.com> and <westinresortcancun.com> resolve to websites featuring the Complainant's The Westin Resort Aruba, and The Westin Resort & Spa Cancun, respectively. The disputed domain name <sheratonnassaubeachresort.com> at one time resolved to a website featuring the Complainant's Sheraton Nassau Beach Resort.
The websites to which the disputed domain names resolve are similar in overall look and feel. Each website features a specific hotel property owned, operated or franchised by the Complainant, corresponding to the domain name. On each of the Respondent's websites, the Complainant's relevant mark and logos are prominently displayed. There are photographs of the hotel property, and a listing of various particulars relating the facilities and services of the hotel. Internet visitors to the these websites can book rooms at the Complainant's featured properties online or check for available hotel rates or travel packages by calling one of two toll free telephone numbers or emailing <vacstore@bellsouth.net>.
The websites also contain links to third party websites that feature hotels or resorts of one or more of the Complainant's competitors. For example, the “Cozumel Specials” link on the “www.lemeridiencancun.com” website redirects Internet visitors to a website with links to the following “featured hotels”: Cozumel Palace, Grand Cozumel by Occidental, Melia Cozumel, Park Royal Cozumel, Presidente Inter-Continental, Royal Club at Grand Cozumel, and Wyndham Cozumel Resort.
The Respondent has objected only to the transfer of the disputed domain name <lemeridiencancun.com>. The Respondent asserts that it is an authorized reseller of hotel rooms at the Complainant's Le Meridien Cancun Resort and Spa by virtue of a contract between Vacation Store and “Mericaribe” (a licensee of the Complainant) for 2009-2010, and has submitted a copy of this contract with the Response.
The Complainant is a leading hotel and leisure company. According to the Complaint, the Complainant owns, manages or franchises several hundred hotel properties in approximately one hundred countries, including hotels and resorts operating under the brands LE MERIDIEN, WESTIN, and SHERATON, which the Complainant asserts are internationally renowned marks.
According to the Complainant, the SHERATON mark has been used with hotel and leisure goods and services for more than 80 years, including in connection with more than 400 SHERATON-branded hotels worldwide. Further, the Complainant asserts that it is the owner of all rights, title and interest in the LE MERIDIEN mark for hotel and resort services, travel services, and related goods and services, and that such rights date back to 1972, through the Complainant's predecessors in interest. According to the Complainant, it operates more than 120 LE MERIDIEN hotels in over 50 countries worldwide, including in resort communities such as Aruba and Cancun, Mexico. The Complainant also asserts that it owns the WESTIN mark, and that this mark has been used since as early as 1981 and is currently used with more than 160 WESTIN hotels in over 30 countries worldwide.
The Complainant asserts that as a result of its long, continuous and substantially exclusive use of the SHERATON, LE MERIDIEN and WESTIN marks (the “Complainant's Marks”), and significant marketing and advertising related thereto, these marks have come to be uniquely associated with the Complainant, and are well-known and famous marks. The Complaint cites a number of UDRP decisions in which the Complainant's exclusive rights in these marks have been recognized. The Complainant also presents evidence of its registrations of these marks in various countries and jurisdictions around the world.
The Complainant further maintains that the disputed domain names are confusingly similar to the Complainant's Marks. The Complainant points out that each of the disputed domain names incorporates one of the Complainant's Marks in its entirety, and asserts that the addition of geographically descriptive or other generic terms such as “beach” and “resort” does not diminish but in fact adds to the likelihood of confusion, since such terms correspond to the location of the Complainant's hotels or are descriptive of the Complainant's goods and services. In addition, the Complainant contends that the Respondent makes false and misleading statements on the websites to which the disputed domain names resolve that are intended to mislead Internet visitors as to the identity of the owners of the resorts.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that it established rights in the Complainant's Marks long before the Respondent registered the disputed domain names, that the Respondent has no connection or affiliation with the Complainant, and that the Respondent has not been authorized by the Complainant to use the Complainant's Marks. The Complainant contends that the Respondent is using the disputed domain names to divert Internet visitors to the Respondent's sites by creating the false impression that the Respondent's websites belong to the Complainant or are somehow related to or approved by the Complainant.
Given the Respondent's involvement in the travel and leisure industry, the Complainant insists it is inconceivable that the Respondent was unaware of the Complainant's Marks when registering the disputed domain names. The Complainant argues that the Respondent's opportunistic use of the Complainant's Marks to promote the Respondent's business in and of itself constitutes bad faith registration and use under the Policy. In addition, the Complainant asserts that the Respondent is using the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's Marks.
The Respondent indicates that it is the media division of Vacation Store, a wholesale tour operator, and that Vacation Store began registering domain names in the Respondent's name in 2003, prior to incorporating the Respondent under the laws of Florida in 2004. The Respondent1 asserts that as a tour operator it provides tour operation and travel packages to destinations outside of the United States, and that while such services including booking rooms for various hotels, the Respondent has no business interest in any hotels.
The Respondent states that it has no objections to the transfer of the disputed domain names <sheratonnassaubeachresort.com>, <westinresortaruba.com>, and <westinresortcancun.com>, but does object to the transfer of the disputed domain name <lemeridiencancun.com>. The Response accordingly addresses only the domain name <lemeridiencancun.com>, and the Respondent's registration and use of that domain name.
According to the Respondent, it has had a business relationship with the Complainant that began in 2001, and includes contracts under which the Respondent books hotel rooms at the Complainant's Le Meridien Cancun Resort & Spa. Rather than diverting business from the Complainant, the Respondent argues that since 2001 it has been generating business for the Complainant through travel packages and hotel room bookings, and in particular by “selling” the Complainant's hotel rooms.
The Respondent asserts that is has rights or legitimate interests in the disputed domain name <lemeridiencancun.com> because it registered the domain name in 2001, several years before the Complainant's sought to register the LE MERIDIEN mark in Mexico. According to the Respondent, its contracts with the Complainant dating back to 2001 authorize the Respondent to register and use the disputed domain name, and also authorize the Respondent to use the Complainant's copyrighted material on the Respondent's website. The Respondent has submitted a contract allegedly entered into with the Complainant for 2009-2010 as evidence of what it describes as the “long standing business relationship” with the Complainant. In connection with its supplemental submission, the Respondent also has submitted travel vouchers documenting the booking of hotel rooms at the Complainant's Cancun resort between 2000 and 2004.
In view of the foregoing, the Respondent maintains that prior to any notice of this dispute it has used the disputed domain name <lemeridiencancun.com> in connection with a bona fide offering of goods and services – i.e., sales of the Complainant's hotel rooms. As a result, the Respondent asserts that there has been no bad faith registration or use of the disputed domain name and further contends that the Complainant has failed to meet its burden of proof under the Policy.
The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. As this Panel noted in MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985, however, a number of WIPO Panels have concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc. / Official Tickets Ltd, WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936. See also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021.
UDRP panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based. Such situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., supra. This Panel concluded in MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra, that the consolidation of multiple complainants in a single complaint generally should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so.
In this instance, the record indicates that the Complainants are affiliated entities who are asserting a common grievance against the Respondent sufficient to justify consolidation of their claims in a single proceeding. In the circumstances of this case it appears to the Panel that consolidation would be equitable to all the parties and procedurally efficient. In reaching this conclusion, the Panel takes into consideration that the Respondent has not objected to the consolidation of multiple complainants, and that the Respondent has not objected to the transfer of three of the four disputed domain names in this case.
The Policy and Rules envision the submission of a single complaint and a single response. No express provision is made for the submission of supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either party.
The Panel in reaching a decision in this matter has taken into account the Parties' supplemental submission as follows. The Panel has considered the Complainant's Supplemental Submission to the extent that it addresses evidence submitted with and arguments made in the Response, which were not anticipated by the Complainant and could not reasonably have been anticipated when the Complaint was filed. The Panel has considered the Respondent's Supplemental Submission to the extent of evidence submitted with and arguments made therein that pertain solely the subject matter of the Complainant's Supplemental Submission.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a 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.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the Complainant has established rights in the SHERATON, LE MERIDIEN and WESTIN marks, and that the disputed domain names <sheratonnassaubeachresort.com>, <lemeridiencancun.com>, <westinresortaruba.com>, and <westinresortcancun.com> are confusingly similar to the Complainant's SHERATON, LE MERIDIEN and WESTIN marks, respectively. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130 (at the heart of paragraph 4(a)(i) is whether the mark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name) (majority opinion).
The disputed domain names in this case each incorporate the Complainant's corresponding mark in its entirety, and Panel finds that the disputed domain names thus are confusingly similar to the Complainant's Marks under the foregoing standard. Such confusing similarity is not diminished by the addition of geographically descriptive terms or other descriptive terms such as “resort”, all of which potentially could be associated with the Complainant's hotel and leisure services. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Respondent has registered four domain names, each of which incorporates in its entirety one of the Complainant's Marks. The Respondent is using the disputed domain names to direct Internet users to commercial websites on which the Respondent offers tour packages and related services, such as booking hotel rooms. There is no indication that the Respondent has been commonly known by any of the disputed domain names, and the Complainant denies authorizing the Respondent to use the Complainant's Marks in connection with domain names or in any other manner.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent maintains that it has established rights or legitimate interests in the disputed domain name <lemeridiencancun.com> based on the contention that, before any notice of this dispute, the Respondent was using the domain name in connection with a bona fide offering of goods are services – namely, as a reseller of the Complainant's hotel services. Relying on a contract for 2009-2010 with the Complainant's licensee for the Le Meridien Cancun Resort & Spa, and evidence of bookings of rooms at this hotel between 2000 and 2004, the Respondent asserts that it is an authorized reseller of the Complainant's hotel services. Further, the Respondent maintains that the Complainant through these contracts and/or as part of an ongoing business relationship has authorized the Respondent as a reseller of the Complainant's hotel services to register and use domain names incorporating the Complainant's LE MERIDIEN mark.
The Panel has reviewed the contract relied upon by the Respondent, and has found nothing in that contract or elsewhere in the record before it persuasively indicating that the Complainant at any time granted or conveyed to the Respondent the right to register and use a domain name that incorporates the Complainant's LE MERIDIEN mark, or that the Complainant has acquiesced to such registration and use. See BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958 (Respondent had no rights or legitimate interests where domain names were not explicitly the subject of any agreement between the parties and complainant did not acquiesce to registration of domain names).
The Panel therefore considers the question whether the Respondent may be found to have a legitimate interest in using the Complainant's mark in a domain name one to be determined under the criteria articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. In Oki Data, the respondent was an authorized dealer (reseller) of the complainant, and registered the domain name <okidataparts.com>, which incorporated the complainant manufacturer's OKIDATA trademark. The Panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by even an authorized dealer or reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel notes that the views articulated in Oki Data are identified as the “majority view” for evaluating domain names of resellers and distributors in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 2.3. The Panel finds the application of the Oki Data criteria in this instance to be consistent not only with the Policy, but also with the nominative fair use principles recognized and applied under United States trademark law, which is of some relevance here given that both parties are from the United States. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., supra.
Assuming that the Respondent was authorized at least for some period of time to resell the Complainant's hotel services, it is nonetheless evident from the record that two of the Oki Data criteria have not been met. No attempt has been made by the Respondent on its websites to accurately disclose the Respondent's relationship with the Complainant. The confusing similarity of the disputed domain names to the Complainant's Marks is highly likely to result in initial interest confusion. Further, the overall look and “feel” of the Respondent's websites are such that they could easily be confused by Internet users with the Complainant's “official” websites. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. Given the foregoing considerations, the Respondent's failure to accurately disclose the nature of its relationship with the Complainant does not comport with fair use principles and under Oki Data is fatal to the Respondent's claim of rights or legitimate interests in the disputed domain names.
Further, and as noted earlier, the Respondent's websites contain links to other sites offering hotel accommodations from a number of the Complainant's competitors. The existence of such links effectively precludes any argument that the Respondent has been legitimately using the disputed domain names as a reseller of the Complainant's hotel services. See Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608. The presence of such links does not comport with the Oki Data requirement that the Respondent's website sell only the Complainant's trademarked goods or services.
The Panel concludes from the circumstances reflected in the record of this case that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, and that the Respondent otherwise has not established rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where a complainant proves that the domain name “has been registered and is being used in bad faith”.
The Panel entertains no doubt that the Respondent had the Complainant's actual or potential rights in mind when registering the disputed domain names, given the Respondent's presence in and knowledge of the hotel and leisure industry. The record before this Panel amply demonstrates that the Complainant's Marks are well-known in that industry. See BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958; ACCOR v. Media Insights, WIPO Case No. D2004-0043.
The Panel further notes that the Respondent has been a party in a number of UDRP cases in which, as here, the Respondent registered and used domain names incorporating trademarks of companies that own, operate or franchise hotels and resorts. In an appreciable number of these cases panels found the Respondent's registration and use of the domain names to be in bad faith. See, e.g., BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, supra; Unique Brands Enterprises, LLC v. Media Insights, Media Insight, WIPO Case No. D2008-1749; Levantur, S.A. v. Media Insight, supra; Barceló Corporación Empresarial, S.A. v. Media Insights, WIPO Case No. D2008-0152; Riu Hotels S.A. v. Media Insight, WIPO Case No. D2006-1563; Gorstew Limited v. Media Insight, WIPO Case No. D2006-1467; Quiroocan, S.A. DE C.V. (Barceló) v. Media Insights, WIPO Case No. D2006-0801; ACCOR v. Media Insights, supra.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case also constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds it more likely than not that the Respondent's primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant's trademark rights. The Panel further is of the view that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant's Marks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <lemeridiencancun.com>, <sheratonnassaubeachresort.com>, <westinresortaruba.com>, and <westinresortcancun.com>, be transferred to the Complainant Starwood Hotels & Resorts Worldwide Inc.
William R. Towns
Sole Panelist
Dated: April 22, 2010