WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International IP, LLC v. NetNames Hostmaster
Case No. D2014-0359
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC and Sheraton International IP, LLC (the “Complainant”) of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is NetNames Hostmaster of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sheraton-suzhou.com> (the “Domain Name”) is registered with Domaincapitan.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 13, 2014, the Registrar 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 March 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2014.
The Center appointed William P. Knight as the sole panelist in this matter on April 17, 2014. 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 an international hotel and leisure company, dealing predominantly in the operation of resorts and hotels. The Complainant has a number of internationally known trade marks including SHERATON and FOUR POINTS BY SHERATON. The Complainant operates more than 400 hotels internationally under either SHERATON or FOUR POINTS BY SHERATON, including a Four Points by Sheraton hotel located in Suzhou, China.
The Complainant owns numerous trade mark registrations for the mark SHERATON in the United States and China, as well as in other countries. The earliest date of registration for the SHERATON mark in the United States is May 19, 1959 and the earliest date of registration for the SHERATON mark in China is August 30, 1989.
The Domain Name was registered to the Respondent on January 9, 2014. The website at the Domain Name consists of the following text: “The domain name sheraton-suzhou.com has been registered by NetNames.” The website at the Domain Name also consists of additional text and a box advertisement, both promoting NetNames’ domain name registration services. Each of these elements contains links to the Respondent’s website at “www.netnames.com”. There is no other substantive content on the website.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Name is confusingly similar to its SHERATON trade marks;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant asserts that the Domain Name is confusingly similar to its SHERATON trade mark as the Domain Name fully incorporates the registered trade mark, notwithstanding the inclusion of the additional word “suzhou”, the hyphen and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the additional word does not differentiate the Domain Name from its trade mark and that it instead increases the likelihood of confusion, given the additional word is the name of a city located in China. The Complainant argues that geographical indicators are commonly used in conjunction with trade marks by trade mark owners to indicate the location of their business, and that the inclusion of the word “suzhou” in the Domain Name heightens its confusing similarity with the Complainant’s SHERATON trade mark. In addition, the Complainant asserts that the addition of the gTLD “.com” and the hyphen between the words “sheraton” and “suzhou” does not distinguish the Domain Name such as to prevent it from being confusingly similar to their registered trade marks.
The Complainant states that it has not authorised the use of the Domain Name by the Respondent. The Complainant asserts that the Respondent has no rights or legitimate interests in the SHERATON mark. The Complainant argues that due to its marks predating the registration of the Domain Name that the onus is on the Respondent to establish it has any rights or legitimate interests in respect of the Domain Name.
The Complainant argues that, due to the international recognition of the SHERATON mark, the Respondent must have had knowledge of the Complainant’s mark when it registered the Domain Name. The Complainant asserts that the mere registration of the Domain Name without authorisation constitutes evidence of bad faith. The Complainant asserts that the basis of the Respondent’s use and registration of the Domain Name was solely to profit from the website at the Domain Name, presumably via the advertising displayed on that website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Domain Name is identical or confusingly similar to a trade mark 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.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).
A. Identical or Confusingly Similar
The Panel finds that the Complainant has trade mark rights in SHERATON for the purposes of the Policy. The Panel is also satisfied that the Domain Name is confusingly similar to the Complainant’s SHERATON trade mark. The Panel is satisfied that the dominant component of the Domain Name is the word “sheraton”, which has gained a significant international reputation in the field of the operation of hotels and resorts. The word “suzhou” is a geographical identifier, a location at which the Complainant operates a hotel under the FOUR POINTS BY SHERATON mark. The FOUR POINTS BY SHERATON mark incorporates the SHERATON mark and is also owned by the Complainant. The geographical identifier therefore does nothing to diminish the confusing similarity caused by the primary word “sheraton”. The gTLD “.com” and the hyphen in the Domain Name do not carry any distinguishing weight.
Therefore, the Panel finds that the first element of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent was most likely aware of the Complainant’s established reputation and trade mark rights at the time of registering the Domain Name. The Respondent’s use of the word “suzhou” in conjunction with the Complainant’s SHERATON mark indicates an understanding of the Complainant’s business and its operation in Suzhou, China. In the absence of any explanation to the contrary by the Respondent, the Panel accepts that the Respondent has not been granted authorisation from the Complainant to use its SHERATON trade mark in the Domain Name.
The website at the Domain Name offers no indication that the Respondent is making a legitimate use of the Complainant’s SHERATON mark. The only unique material displayed on the website at the Domain Name is a notice stating that the Domain Name has been purchased by the Respondent. The other material on the website at the Domain Name is advertising for the Respondent’s domain name registration services. All of the material on the website at the Domain Name is likely automatically generated.
In such circumstances, and given the use made of the Domain Name by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may indicate registration and use in bad faith. Paragraph 4(b)(i) of the Policy provides that evidence of the registration and use of a domain name in bad faith includes circumstances in which the Respondent “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 [its] documented out-of-pocket costs directly related to the domain name.”
In the Panel’s view, there can be no doubt whatsoever that the Respondent was fully aware both of the Complainant’s international trade mark rights and of the Complainant’s existing property in Suzhou. Furthermore, there seems to be no credible explanation for the acquisition of the Domain Name by an entity such as the Respondent other than to commercialize it for profit, an explanation made more probable by the nature of its present display by the Respondent. In the absence of any explanation from the Respondent, such a conclusion is eminently available.
Therefore, the Panel finds that the Respondent has registered and is using 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 <sheraton-suzhou.com> be transferred to the Complainant.
William P. Knight
Date: May 5, 2014