WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. Whois Guard Protected / Louise Lane
Case No. D2013-1290
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. of Stamford, Connecticut, United States of America (collectively, the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are WhoisGuard Protected of Los Angeles, California, United States of America and Louise Lane of New York, New York, United States of America (collectively, the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <westinhotels-kl.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 16, 2013. On July 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2013, 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 July 25, 2013.
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 July 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 2, 2013. 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 owns numerous registrations in many jurisdictions throughout the world for the WESTIN trademark in connection with hotel services and related goods and services. These include United States registration numbers 1,320,080, 1,720,799 and 2,257,629 and Malaysia registration numbers 0601414, 92006637 and 06010418. The earliest of the United States registrations issued in 1985. The earliest of the Malaysia registrations issued in 1992.
The Domain Name was registered on May 17, 2013.
5. Parties’ Contentions
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises several hundred properties in approximately one hundred countries. The Complainant is a fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: WESTIN, SHERATON, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT Hotels. The Complainant introduced its WESTIN hotels in 1981. The Complainant’s WESTIN hotels cater to both business and leisure travelers looking for spa retreats and other comfort amenities. There are now more than 160 WESTIN hotels in nearly 30 countries worldwide. Through its widespread, extensive use of the WESTIN mark in connection with hotel services and related goods and services, and its expenditure of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the Complainant’s WESTIN mark has become uniquely associated with the Complainant and its services, and has attained considerable fame and widespread acclaim in the United States and throughout the world, including in China. The Complainant operates a hotel in Kuala Lumpur, Malaysia under the name “The Westin Kuala Lumpur.” The Complainant states that it is well-known that “KL” is a commonly used abbreviation of “Kuala Lumpur,” the largest city in and capital of Malaysia.
The Complainant also has developed a prominent Internet presence for its WESTIN Mark, including in connection with its websites located at “www.westin.com” and “www.westinhotels.com”, both of which are also accessible through other domain names that are owned by the Complainant. These websites enable computer users to access information regarding the Complainant’s various WESTIN hotels and related services and to learn more about the Complainant and its WESTIN hotels.
The Domain Name was registered long after the Complainant began using and registered its WESTIN trademark. Visitors to the website associated with the Domain Name are redirected to the Complainant’s own web site for The Westin Kuala Lumpur at ”www.thewestinkualalumpur.com”. The Complainant sent a letter to the Respondent on June 18, 2013 requesting that the Respondent transfer the Domain Name to the Complainant. The Complainant did not receive a response to this letter.
The Complainant contends that the Domain Name is confusingly similar to its WESTIN trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the WESTIN mark and that the mark is well-known. When a well-known mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the well-known mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140. Further, in this case, the confusing similarity is exacerbated by the fact that the Domain Name combines the well-known WESTIN mark with the word “hotels” and the descriptive acronym “kl,” which is likely to suggest a connection to the Complainant’s WESTIN hotel that operates in Kuala Lumpur. Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s WESTIN mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use 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; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert Internet consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name to redirect Internet users to the Complainant’s web site. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith. The Complainant has alleged that the Domain Name is used to redirect Internet users to the Complainant’s web site. The Respondent did not reply to these contentions. There would appear to be no reason for the Respondent to desire to own the Domain Name for his or her own legitimate business purpose. Accordingly, it appears that the Respondent most likely registered the Domain Name with some intent for commercial gain, possibly for the purpose of selling it to the Complainant, who would have a legitimate interest in owning such a domain name. Under the circumstances, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <westinhotels-kl.com> be transferred to the Complainant.
Date: September 16, 2013