WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International Inc. v. Unister GmbH, Daniel Kirchhof
Case No. D2011-0781
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International Inc. of White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Unister GmbH, Daniel Kirchhof of Leipzig, Germany.
2. The Domain Names and Registrar
The disputed domain names <points-gatineau-ottawa.com>, <w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com> are registered with PSI-USA, Inc. dba Domain Robot.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. An amendment to the Complaint was filed with the Center on May 5, 2011. On May 5, 2011, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On May 6, 2011, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on May 6, 2011.
The Center verified that the Complaint together with the amendments to 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”).
On May 6, 2011, the Center noted, by email to the Registrar, that the disputed domain name <w-istanbul.com> was set to expire on May 11, 2011. On the same day, the Registrar responded to note that that disputed domain name would remain on registrar lock for the duration of these proceedings.
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 May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on June 15, 2011. 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. On July 13, 2011, the Center notified the parties that, in accordance with paragraph 10 of the Rules, the due date for Decision was extended until July 25, 2011.
4. Factual Background
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages or franchises almost 1,000 properties in approximately 100 countries. The Complainant is an owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: SHERATON, FOUR POINTS BY SHERATON, W, WESTIN, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT hotel brands.
The Complainant says it has used the W and W HOTELS marks in connection with hotel and resort services and various related goods and services since 1998. The Complainant currently owns, manages or franchises thirty-four hotels under the W and W HOTELS marks in eleven countries, including the United States, and has announced plans to open at least twenty more hotels and resorts under these marks in the United States and throughout the world. Among the W Hotel properties operated by the Complainant are W Atlanta – Perimeter, W Istanbul, W New York, W New Orleans – French Quarter, W San Diego, W Dallas – Victory and the W Atlanta – Buckhead.
The Complainant refers to its registrations for W, W HOTELS and FOUR POINTS with the United States Patent and Trademark Office (USPTO), variously registered between 1988 and 2008, and similar marks registered in other jurisdictions around the world.
The Complainant also owns trademark registrations for the FOUR POINTS and FOUR POINTS BY SHERATON. The Complainant owns, operates or licenses one hundred fifty FOUR POINTS by SHERATON hotels in nearly thirty countries around the world. The Complainant’s “Four Points by Sheraton” properties include the Four Points by Sheraton & Conference Centre Gatineau-Ottawa. As evidence, the Complainant provides evidence from its website for the Four Points by Sheraton & Conference Centre Gatineau-Ottawa.
The Complainant has developed a prominent Internet presence for its W and W HOTELS marks in connection with its hotels, resorts, residential properties and related goods and services, including on its website located at “www.whotels.com”. The Complainant has several domain names specifically devoted to individual W Hotels properties, including but not limited to: <whotelsneworleans.com>, <thewsandiegohotel.com>, <whotelsatlanta.com>, <wistanbul.com.tr> and <wnewyork.com>. The Complainant also has developed a prominent Internet presence for its FOUR POINTS marks, including in connection with its website located at “www.fourpoints.com”.
The Respondent registered disputed domain names in May and July of 2009.
5. Parties’ Contentions
A. The Complainant
The Complainant invests heavily in worldwide advertisement and promotion of its services under the W and W HOTELS marks. For example, the Complainant advertises its W properties and related goods and services on the Internet and in print advertisements that appear in high-profile publications such as Conde Nast Traveler, Travel & Leisure, and Vanity Fair, and in various other media. Through its widespread and extensive use, advertising and promotion of its W and W HOTELS marks in connection with hotels, resorts, residential properties and related goods and services, the Complainant’s marks have become uniquely associated with the Complainant and its goods and services, and have attained considerable fame.
The disputed domain names consist solely of the Complainant’s well-known W mark followed by geographic and descriptive terms that mimic and describe the locations of several of the Complainant’s W Hotels properties. This “adds to rather than diminishes the likelihood of confusion.” Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244.
The Respondent’s registration of the <points-gatineau-ottawa.com> domain name incorporates a prominent portion of the FOUR POINTS marks and is also confusingly similar to the Complainant’s registered FOUR POINTS marks. Upon seeing the Respondent’s websites at each of the disputed domain names, consumers will reasonably believe that each site is either the Complainant’s website or is somehow related to or approved by the Complainant, when that is not the case.
The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain names. Thus, there is absolutely no basis for the Respondent to claim that it has legitimately registered the disputed domain names. The Respondent was well aware of the fame of the marks as he made use of the disputed domain names and obviously hoped that its use of the disputed domain names would cause traffic to be directed to its hotel reservation websites so that it could profit from such use.
The Respondent admitted that it required permission from the Complainant before utilizing the W, W HOTELS or FOUR POINTS marks in any domain name for the purposes described above when it wrote to the Complainant on August 10, 2009 (the Complainant provides untranslated correspondence in German as evidence to this effect).
The Complainant’s W, W HOTELS and FOUR POINTS marks enjoy international recognition. It is therefore inconceivable that the Respondent was unaware of the Complainant’s trademarks when he registered the disputed domain names.
The Complainant says that the Respondent has acted in bad faith for the purpose of paragraph 4(b)(iv) of the Policy. The Complainant says that the Respondent is a serial cybersquatter that has been forced to transfer over 1,500 infringing domain names relating to other hotel and resort companies in the past where its use and registration of the domain names in question was also found to be in bad faith. See e.g., Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 (ordering the transfer of 1,519 infringing domain names); Lowe Wild Dunes Investors, LP, Commonwealth Washington Operating, Inc., Spruce Peak Realty, LLC, Squaw Creek Associates, LLC, L-O Tempe Hotel, Inc., Long Point Development, LLC v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-0311.
The Respondent appears to have registered the disputed domain names with the intention of using them to divert traffic from the Complainant’s websites and to advertise its services as a travel agent. At each of the websites at the disputed domain names, the user is invited to “Check rates and availability.” After entering the requested information, this information is processed by “www.hotelreservation.com” which searches 220,000 different hotels - the overwhelming majority of which are not the Complainant’s hotels - for availability, and provides the user with various booking options. The Respondent has also created websites associated with some of the disputed domain names that directly advertise specific properties owned by the Complainant’s competitors. For example, the website for <w-atlanta-perimetercenter.com> actually advertises the Hotel Microtel Inn & Suites Atlanta (Perimeter Center), and the website for <w-orleans-french-quarter.com> actually advertises Hotel Country Inn & Suites by Carlson, New Orleans French Quarter. For those of the disputed domain names associated with websites that actually describe the W or Four Points property to which the disputed domain name refers – <w-istanbul.com>, <w-atlanta-buckhead.com>, <w-dallas-victory.com>, <w-san-diego.com> and <points-gatineau-ottawa.com> – the Respondent has improperly copied the Complainant’s images from the official property websites and is using language that misleads visitors as to the infringing website’s affiliation with the Complainant’s properties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are 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
The Complainant has demonstrated that it has registered trademark rights. Most relevantly in relation to the disputed domain names, the Complainant’s marks include W, W HOTELS and FOUR POINTS. Those marks are registered on the principal register of the USPTO. The disputed domain names are not identical to the Complainant’s marks. Therefore question is whether they are confusingly similar.
The following disputed domain names incorporate part of the Complainant’s W and W HOTELS marks:
<w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com>. These disputed domain names do not incorporate, in whole or part, the other registered marks owned by the Complainant, and the Complainant does not argue that there is confusing similarity with those other marks. For the disputed domain names, the Complainant alleges that they are confusingly similar with its “well-known W mark” followed by geographic or descriptive terms.
The disputed domain name, <points-gatineau-ottawa.com>, incorporates part of the Complainant’s FOUR POINTS mark. Accordingly, in relation to this domain name, the Panel has considered the issue of confusing similarity against the Complainant’s FOUR POINTS mark only.
Confusing similarity with the Complainant’s W and W HOTELS marks
Single letter marks
A feature of this case is that the Complainant’s arguments substantially rest on a registered mark comprised of the single letter W. (The Panel considers that the Complainant’s W HOTELS mark is only similar to the disputed domain names to the extent it incorporates the W mark – the term HOTELS is not included in any of the disputed domain names.) The usual rule is that a mark registered on the principal register of the USPTO is entitled to a presumption of validity, and capable of sufficient distinctiveness to support registration: see e.g. Florida Department of Management Services v. Thomas Rask/Logical Sites, Inc., WIPO Case No. D2006-1595, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. As noted in the former case, the USPTO must refuse registration of a mark on the principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.
The registration of single letter marks is not unusual. In addition to the Complainant’s mark, well-known single letter marks are registered in various jurisdictions: for example, in various jurisdictions the letter “F” appears in a mark for Facebook, the letter “T” for Twitter, and the letter “M” for the fast-food chain McDonalds. In each case, the letter is stylized as it appears in the mark. In this case, the majority of the Complainant’s W marks are stylized, although not highly so. One USPTO registered mark appears to be a standard character mark. In all cases, the marks are registered in relation to particular goods and services (and would have been determined to be distinctive in that context).
Assessing the distinctiveness of a single letter mark is essentially no different to any other mark. In this connection, the United Kingdom Manual of Trade Marks Practice (in Chapter 3, section 2.5) notes that “There is no bar to the acceptance of single letters as trade marks. Each case must be considered individually. A single letter mark may be distinctive for a wide range of services. A single letter may be descriptive or non-distinctive for many goods, but may be acceptable for many other goods.” In the Panel’s own jurisdiction, the Australian Trade Marks Office Manual of Practice and Procedure notes (at Part 22, Section 41, paragraph 8.1), “One letter trade marks without ‘get up’ are generally not prima facie registrable. They typically have a low level of inherent adaptability to distinguish. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high ... One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.”
The Complainant’s W mark (among the Complainant’s other marks) has also featured in a European Community First Board of Appeal decision of January 20, 2011, of the Office for the Harmonization in the Internal Market (Appeal R1118/2010-1). (At the date of that decision, the Complainant’s W mark was relevantly a Community application filed in 2007.) In that decision, the word elements of the Complainant’s marks were relevantly described as consisting “of the letter ‘W’ written in a black, (or white for earlier mark No 1) bold, upper-case, ‘Arial’ typeface.” The Board also noted in that case, while in effect denying the opposition initiated by the Complainant, that “the General Court has also ruled that it cannot be affirmed generally and abstractly that a mark consisting of a single letter lacks distinctiveness (see judgment of 9 July 2008, T-302/06, ‘E’, at paragraph 40)…Hence, according to the OHIM’s ‘Manual of Trade Mark Practice’, in general for ‘one-letter’ marks, protection is sought for the specific manner in which the letters are represented graphically and not for the single letter by itself.”
It is self-evident that the letter “w” is not inherently distinctive. The Panel has therefore assumed (as the Complainant provided no evidence on this point) that the USPTO determined that the Complainant’s W mark acquired distinctiveness through use. All the factors relating to the circumstances and context of that use would therefore be important in the Complainant’s mark being recognized as such, including the graphic representation of the mark and services in relation to which it is applied. In the Panel’s view, such an approach is consistent with the approaches to relative distinctiveness of single letter marks outlined above.
However, as this Panelist has previously noted, whether a domain name is identical or confusingly similar to a mark is to be judged objectively, against the dominant textual elements of a complainant’s mark, rather than against any graphic or stylized elements which may have contributed to a finding of sufficient distinctiveness for the purpose of registration. See e.g. Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779. This approach is supported by a series of prior panel decisions. See e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and cases cited therein. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity”
Weakness of the Complainant’s W mark
The Panel considers the W mark to be inherently weak because the letter W has a common use, pre-existing and separate to its association with the Complainant. The Complainant argues and presents evidence that its mark has become “well known”. However, the Complainant’s evidence in this respect is primarily from its own websites. That evidence also indicates that the Complainant’s use of its W mark often occurs in conjunction with its W HOTELS mark, and in the context of its advertisement of hotel services more generally. In the Panel’s view, this is not strong evidence that the Complainant’s W mark, on its own, has become well-known. There is even less evidence that the letter W, separate to its representation in the Complainant’s mark, has any particular association with the Complainant.
The Complainant’s W HOTELS mark could also be regarded as weak considering comparable marks the subject of cases under the Policy. (See e.g. Deutsche Telekom AG v. foxQ, WIPO Case No. D2004-0102 concerning the marks T-ONLINE and T ONLINE. In that case, the then panel noted that “As the word ‘online’ is descriptive, and the Complainant’s trademarks only consists of this word with the addition of a ‘T’, the overall distinctiveness of the trademarks T-ONLINE and T ONLINE must be regarded as small.” If that mark is weak, a single letter mark is even more so.)
As further addressed below, the Panel considers the relative weakness of the Complainant’s W mark to be significant in determining the issue of confusing similarity.
Confusing similarity with the W mark
The basic test of confusing similarity is addressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows:
“1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms ... typically being regarded as insufficient to prevent threshold Internet user confusion.”
A key issue is whether the Complainant’s mark is recognizable as such within the disputed domain names. For a trademark to be recognizable as such, the relative strength or weakness of the mark is a factor. As noted by the Panel in EzCommerce Global Solutions, Inc. v. AlphaBase Interactive (aka Alpha Base Interactive, Inc., Alpha Base Systems, Inc. and Alpha Base Systems, Incorporated), WIPO Case No. D2002-0943: “A lack of ‘confusing similarity’ may result from the commonness of the trademarked word. In Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No. D2000-0950 (October 11, 2000), the Panel held that the widespread use of the prefix ‘easy’ in business names made it unlikely that consumers would confuse the disputed domain name and the trademark.” This Panel considers that the broad potential association of the letter “w” make it unlikely that Internet users would confuse the disputed domain names and the Complainant’s mark.
This outcome appears consistent with one previous case under the Policy which considered the issue of a single letter mark. See Deutsche Telekom AG v. Unitedeurope Consulting, WIPO Case No. D2006-0930 relating to a Community mark for T. In that case the then panel relevantly denied confusing similarity between such a mark and domain names comprising that mark/letter together with a descriptive term. That Panel considered that “when the simple letter T is compared with the subject domain names, it would be difficult to find that the relevant domain names are confusingly similar to T given the differences in overall appearances of the marks, the pronunciations, meanings, etc.” In this Panel’s view, it would be similarly difficult to find that the disputed domain names in this case are confusingly similar to the Complainant’s W mark.
Represented as a single letter “w” in the disputed domain names, the capacity to recognize the Complainant’s mark is marginal, particularly where the letter is attached to geographic descriptions which themselves do not form part of a mark in which the Complainant has rights. Each of the disputed domain names incorporate the Complainant’s W mark in much the same way. Each relevant domain name uses “w” and hyphenates it with a geographic description. This is the case for <w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com>. The only element of these domains which textually corresponds to the Complainant’s mark is the letter “w”. The Panel does not consider that the Complainant’s W mark is relatively substantial in comparison to these domain names.
The majority of the Complainant’s registered W marks have a certain graphic representation that is not reproducible in a domain name, and all of its marks are registered in relation to particular goods and services. This is a particular weakness in the case of a single letter mark, because the mark itself is necessarily reduced only to a single letter. Without a particular graphic representation and/or association with particular goods and services, a single letter has potentially broad associations. As such, for there to be confusing similarity with the mark, there must be some additional factors on the face of the domain name which might create confusion as to whether the letter, as it appears in the disputed domain names, is being used as a mark. The only such factors in this case are that the letter W is first appearing in the disputed domain names, is separated by a hyphen, and appears together with geographic descriptions which (on the Complainant’s evidence) correspond to the location of some of the Complainant’s hotels. The Panel considers these factors are insufficient for finding of confusing similarity. There is no evidence of anything special about the geographic locations indicated in the disputed domain names. The Complainant operates its business in a number of geographic locations and the Complaint says that it has plans for hotels in other locations. That is, there is little evidence that the geographic locations identified in the disputed domain names have any special association with the Complainant.
While the letter W is first appearing in the disputed domain names and separated by a hyphen, there is insufficient evidence to conclude that Internet users might particularly associate the letter W in these contexts with the Complainant. To find otherwise would, in this Panel’s view, be inconsistent with the very diverse associations that a single letter and a geographic location may carry. By comparison would “m-newyork” be confusingly similar to the McDonalds “golden arches” M trademark; or “f-internet” be confusingly similar to the Facebook F trademark? This Panelist doubts it.
It may be that the Complainant’s mark is capable of distinguishing the Complainant’s business when used in association with certain other factors. However, as elaborated in a number of cases the role for the Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068.
The Complainant has been previously successful in a number of cases under the Policy relating to its marks, a number of which were referenced by the Complainant. However, where the Complainant’s W marks have been in issue, the issue of confusing similarity has arisen with marks which are more substantial that the W mark taken alone, and which include terms associated with the nature of the Complainant’s business. See e.g. Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa, WIPO Case No. D2008-1812 (involving the mark W RESIDENCES and the domain name <wsouthbeachresidence.com>). This case is notably different in that it is only the letter “w” which is incorporated in the disputed domain names.
For these reasons, the Panel finds that the Complainant has not established that the disputed domain names <w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com>, are identical or confusingly similar to the Complainant’s W mark, or another mark in which the Complainant has rights.
Confusing similarity with the Complainant’s FOUR POINTS mark
For somewhat similar reasons to those outlined above, the Panel finds that the disputed domain name
<points-gatineau-ottawa.com> is not confusingly similar to the Complainant’s FOUR POINTS. This disputed domain name contains only a portion of the Complainant’s mark (the word “points”) which is clearly descriptive. The remainder of the disputed domain name is a geographic term which is not part of the Complainant’s mark. The Complainant’s mark comprises a conjoined term which, as such, may be capable of distinction in a trademark sense. But it is another thing entirely to show confusing similarity because a common term incorporated in a mark is also incorporated in a disputed domain name. The Panel considers there is insufficient evidence to establish that the common term “points”, taken by itself, would likely be confused with the Complainant’s mark as it is used in the disputed domain name. In similar cases, prior panels have declined to find confusing similarity. (See e.g. Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211)
B. Rights or Legitimate Interests; Registered and Used in Bad Faith
The Panel is in little doubt that the Respondent lacks rights or legitimate interests, and has registered and used the disputed domain names in bad faith. Among other things, the Respondent has provided no evidence of having rights or legitimate interests, despite the Complainant’s case against it. The Respondent also has a history of cybersquatting. The content of the Respondent’s websites strongly suggest that the Respondent was motivated to register the disputed domain names in an attempt to exploit confusion with the Complainant’s marks. The Panel notes that this decision should not be read as sanctioning the Respondent’s conduct in any general sense. However in this proceeding, the Complainant must demonstrate all three elements set out in paragraph 4(a)(i) – (iii) of the Policy. Having failed to establish the first element, it is not necessary for the Panel to address the other two.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: July 25, 2011