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WIPO Arbitration and Mediation Center


Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email

Case No. D2014-0686

1. The Parties

The Complainants are Starwood Hotels & Resorts Worldwide, Inc., and its affiliates Sheraton LLC and Sheraton International IP, LLC, all of the United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, the United States of America.

The Respondent is Giovanni Laporta / yoyo.email of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <sheraton.email> and <sheratonparklane.email> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2014. On April 28, 2014, the Center transmitted by email to the Registrar a request for registrar recorded delivery in connection with the disputed domain names. On April 29, 2014, the Registrar transmitted by email to the Center its recorded delivery 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 May 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2014. The Response was filed with the Center on May 24, 2014.

On May 29, 2014, the Complainant sought to submit a supplemental submission in reply to the Response to be brought to the attention of the panel to determine admissibility.

The Center appointed William van Caenegem as the sole panelist in this matter on June 12, 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.

The Respondent submitted its Response on May 24 (and again on May 25, 2014 to ensure delivery of several large attachments). The Response substantially exceeds the limits set in the Supplemental Rules section 11(b). The Respondent also submitted a further statement in reply to the Complainant’s supplemental submission on May 29, 2014. The Complainant subsequently emailed the Center to submit further information to which the Respondent also replied.

4. Factual Background

The Complainant is the owner of the trademark SHERATON which has been registered in numerous jurisdictions in relation to hotel services and related goods and services, including in the United States (U.S. 679,027 May 19, 1959, class 42) and the United Kingdom (U.K. B924957 May 9, 1968, class 16).

The disputed domain names were registered on April 3, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant operates hotels in numerous jurisdictions and has done so for many years. One of the Complainant’s hotels is the Sheraton Park Lane in London, UK. The Complainant operates the domain names < sheraton.com> and <sheratonhotels.com>, also accessible through other domain names and websites.

The Complainant asserts that its exclusive rights to the mark SHERATON have been confirmed in numerous UDRP decisions, which it cites. The Complainant’s first registration of its trademark SHERATON in 1959, predates by more than 50 years the registration by the Respondent of the disputed domain names. The Complainant also asserts that it deposited its SHERATON trademark (in concreto Community Trade Mark Reg. No. 154,450), with the Trademark Clearinghouse (“TMCH”) so as to protect it against cybersquatting, meaning that the Respondent persisted with the registration of the disputed domain name despite receipt of a warning notice from the TMCH, and knowing that the registration conflicted with the Complainant’s rights.

According to the initial Complaint, there is no evidence that the Respondent is intending to make a bona fide use of the disputed domain name. The Respondent is not known by the name “Sheraton” or “Sheratonparklane”, and there is no active website associated with the disputed domain name, the Complainant asserts. Further, the Respondent has registered dozens of “email” domain names containing famous trademarks, such as <adidas.email> and <pepsico.email>.

According to the Complainant the disputed domain name <sheraton.email> is identical to the Complainant’s SHERATON trademark, as the .email extension is to be ignored. The <sheratonparklane.email> domain name is confusingly similar to the Complainant’s SHERATON trademark, as the addition of a place name does nothing to set it apart. In fact, according to the Complainant, the addition of a place name increases the likelihood of confusion as it is a commonly used method of identifying the location of a branch of a business otherwise identified by the incorporated trademark, and that even more so in the case of hotels. As a result the Complainant contends that consumers will reasonably believe that the disputed domain name is either owned by the Complainant or somehow related to or approved by it.

In relation to the Respondent’s submission in its Response that the “.email” suffix should be disregarded because of the actual use the Respondent intends to make of the disputed domain name for an email recorded delivery service, the Complainant submits that it is well established that how the Respondent intends to use a domain name is irrelevant to the finding of similarity. For instance, the content of a website to which a disputed domain name resolves has often been held to be irrelevant. The only required decision is whether “Sheraton” and “Sheratonparklane” are identical or confusingly similar to the Complainant’s trademark SHERATON.

The Complainant asserts its adoption and use of the SHERATON trademark predates the registration of the disputed domain names by the Respondent, so that the burden of establishing any rights or legitimate interests in either of the disputed domain names falls upon the Respondent. No license or permission or other relevant rights have been granted to the Respondent. The Respondent is also not known by the disputed domain names.

In rebuttal of the Respondent’s submission in its Response that the disputed domain name was required to establish a novel email recorded delivery system, the Complainant submits that the Respondent fails to provide sufficient explanation as to why the Respondent’s registration of a domain name incorporating a world famous trademark is somehow legitimate. In any case, the Respondent’s professed intention to incorporate the disputed domain names as listings in a directory and not to use them for any active website, is a form of passive holding of the domain names concerned which itself is of a kind which has been repeatedly held to constitute bad faith.

According to the Complainant the TMCH notice the Respondent received upon registration of the disputed domain names made him fully aware of the fame of Complainant’s SHERATON trademark. Further, the SHERATON mark is said to be one of the best-known hotel-related marks in the world and has been found to be famous or well-known by prior Panels. As such it is inconceivable, according to the Complainant, that the Respondent was unaware of it at the time of registration of the disputed domain names, and in any case, he was put on notice of the Complainant’s rights by the TMCH.

Further, the Complainant contends that the fact that the Respondent registered the identical <sheraton.email> domain name and the confusingly similar <sheratonparklane.email> domain name without authorization is, in and of itself, evidence of bad faith.

The Complainant asserts that the fact that the disputed domain names are not currently associated with active websites does not prevent a finding of bad faith as it has been previously established that non-use and inaction can be indicative of bad faith. The sole utility of the disputed domain names to the Respondent must have been to benefit financially from their registration.

B. Respondent

In light of the fact that the documents filed in Response exceed the normal limits to a significant extent the Panel here summarizes what it considers to be its essential elements. The Respondent denies that it has no rights or legitimate interests in the disputed domain names. In particular the Respondent asserts that it has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, satisfying UDRP paragraph 4c(i).

The Respondent contends that a domain name is first and foremost “just an internet domain name” and not a name or trademark. It should primarily be assessed as such when determining fair use. According to the Respondent the disputed domain names must be “assessed fairly” as domain names are technically required by the Respondent for directing emails in a “new and novel way” and should not be viewed simply as a “name, word, mark or trademark”. Accordingly the panel must evaluate all possibilities as to how the disputed domain names may be used fairly. Rights or legitimate interests are therefore not to be exclusively demonstrated by way of license or permission from a trade mark owner.

The Respondent maintains that domain names with the suffix “.email” are an integral part of the Respondent’s intended email recorded delivery service. The suffix describes the process of emailing, and if it were absent the Respondent’s service could be mistaken for something other than “just an email service”. Therefore in the present matter the suffix “.email” should not be ignored in ways that are potentially prejudicial to the Respondent’s defense. The Respondent asserts that in fact or on any fair assessment he cannot be found to have or attempted to have acted in bad faith. He contends that on the material submitted, the Complainant fails to establish bad faith to the standard required by the UDRP.

The Respondent asserts that to run his new service he does not require an active website. Therefore inaction on the part of the Respondent is not relevant here, and preceding Panel decisions that have drawn negative inferences from inaction are thus of no application in this case. The Respondent plans to use the disputed domain name and other .email domain names he has registered for a “bona fide free” service to internet users in the form of an “Email Recorded Delivery” service. The Respondent asserts that for the same purpose he has also registered many “emotion emails” such as <happybirthday.email> that do not include trademarks. According to the Respondent, all these domains, including the disputed domain names, will not be used in a “normal manner” i.e. to point internet users to a website, but as a means of “sending and communicating emails” in “new and novel ways”. The Respondent maintains that the “.email” suffix is essential to indicate to consumers that the Respondent is operating an email service and nothing else.

The Respondent’s email service is both an “Email Directory Service”, and an “Email Recorded Delivery Service”. According to the Respondent the latter is the more relevant for present purposes. The Respondent asserts that it will have “all the advantages and reassurances of a recorded delivery service such as those found in real world recorded delivery post”. Like its real world equivalent, the Respondent’s free email recorded delivery service “can prove to be an invaluable service that shows the Respondent’s new service is “clearly” a “bona fide” service that can make “fair use” of the disputed domain names.” The nature of the Respondent’s intended service is best described in terms of the following extract from the Response:

“Each and every .email domain the Respondent operates for the Service including the Domain Name is used as an “email gateway” which is required to represent a “cyber” door number, road address or postcode. This is simply a way to identify an email delivery address (and contact) for when recorded delivery emails are sent via the service. The postal service needs a physical address, (and contact) to deliver to, the Respondent’s service needs the same. There is nothing illegal in this. It’s an email. […] Simply put; each and every .email the service operates, including the Domain Name would only ever be used to direct emails to who they should be directed to and not for any other person whatsoever. If an email is sent through the Respondent’s new service, for example to examiner.email then that email will only ever reach a service, person or company that can be described as “examiner” – the sole purpose is to enable, for example, “examiner” clients, customers, suppliers to send emails to examiner.email and to be able to prove that they did indeed send those emails. The Respondent’s email server then takes on the task of receiving those emails, adding a delivery receipt number, time-stamping them so it can be proven when they were sent, and then ensuring that the “examiner” actually receives those emails. This email process can only be executed correctly when both a sent/receive email pass through the same email hosting server, in this case the Respondent’s server. The recorded delivery benefit can of course work in both directions. The “examiner” can also have proof of delivery when sending back any email. It’s a simple service, but can prove invaluable when “proof of sent + delivery” is required and depended upon.”

According to the Respondent, the service it proposes is most favorable to parties other than the Complainant who enter into email communications with the latter, since they are more likely to want to prove the past sending of an email. However, the Respondent asserts that the Complainant and others like the Complainant would have no good faith reason to refuse a recorded delivery email sent by its service, and which it maintains will eventually contain many thousands of .email domains. The position of the Complainant is the same in relation to the registered email service as it is in relation to real world registered mail delivery, according to the Respondent.

According to the Respondent its proposed service is nothing other than an email directory, which will contain at some point hundreds of thousands of email addresses, at which point it will be clear to members of the public that the service is nothing other than that. There will be nothing confusing or misleading about it. The Respondent does not require “owner approval” to feature a “name” in a “Directory”, of which there are many thousands in existence all operating legitimately without such approval. In other words, according to the Respondent no “owner approval” is required to list a domain name in a directory. In effect, according to the Respondent, the sole purpose of its service “is to aim internet users in a “clear and right direction” toward the person, service or company they may wish to address/reach/contact via the Service – which can include the Complainant.” The Respondent is also concerned with an entirely different branch of industry, that being email services and not hotels as the Complainant’s business concerns, and consumers will therefore not be confused into thinking there is some connection between the Complainant and the Respondent’s email service. Further, the Respondent submits that there will never be a likelihood of confusion as its service will never advertise or display any word, name or logo, nor who features in the Service email directory. The Respondent asserts that when visiting his <yoyo.email> site, internet users will only ever be presented with a “blank search box” to search an email contact and with a warning message that explains the Service is not affiliated to anyone who features in the Directory. Only when a user types a search term including a trademark in the initial blank search box will a logo, brand or mark ever appear on the Respondent’s service website. The mark will serve as a name to identify a business to which the user wants to direct an email, rather than serving as a trademark.

The Respondent contends that it is technically impossible to offer its service without operating both ends of the email send & receive process, and thus the Respondent has a bona fide service which establishes its legitimate right and interest in the disputed domain names. The Respondent also stresses that it has acquired a substantial number of “.email” domain names, which establishes the legitimacy of its assertion that it is engaged in establishing a new email registration service. In any case, according to the Respondent there are many parties around the world who might have a legitimate claim to the word Sheraton and to whom it might wish to offer its intended services.

6. Discussion and Findings

It is within the Panel’s discretion to take into consideration material submitted in excess of the limit set in section 11(b) of the Supplementary Rules and it is also in the Panel’s discretion to admit supplemental replies and rebuttals.

The material contained in the Response in excess of the 5,000 word limit has been responded to by the Complainant, although the latter has also protested against its admission. Much of the content is repetitive and some of it irrelevant to the questions arising by virtue of the UDRP in the present matter. In terms of the supplemental filing by the Complainant, a number of matters there raised rely on factual contentions contained in the Response. They could not have been within the Complainant’s contemplation when it submitted its Complaint, nor could they reasonably be anticipated by the Complainant at that time.

However, the Respondent’s further reply to the supplemental filing by the Complainant contains additional material that does not actually respond to anything that is contained within that supplemental filing. This material only reiterates the Respondent’s contention that it is engaged in a bona fide service that it intends to roll out and expects to be taken up by many businesses. It stresses the general standing of the Respondent as an honest and inventive businessman, attaching a number of patents he has registered, other businesses he is engaged in and a letter from an accountant confirming his bona fides as a businessman, in that accountant’s opinion. Those submissions are of no relevance to the resolution of this matter. They are not taken into consideration by the Panel. In any case the Respondent has already been given latitude as the Panel is minded in its discretion to admit the excess material in the initial Response.

In the circumstances the Panel in its discretion admits the excess material in the Response, and the Complainant’s filing in reply to the Response. It does not admit the Respondent’s further submissions in rebuttal of the Complainant’s reply and the further and later emails sent by the Complainant and Respondent to the Center, and forwarded to the Panel.

The Respondent also requests an in-person hearing but without any further support or clear justification other than the alleged importance of this matter. By contrast, the Complainant submits that there is nothing about this matter that justifies such a hearing. In any case with the admission of the Response although well in excess of the word limit, the Respondent has had ample opportunity to ventilate any arguments in favor of his case. Therefore the Panel denies the request for a hearing.

A. Identical or Confusingly Similar

The disputed domain name <sheraton.email> is identical to the Complainant’s registered trademark SHERATON. The suffix “.email” is of no consequence, as has repeatedly been decided by Panels in relation to other top-level domain (TLD) suffixes. The fact that the disputed domain name might, on the Respondent’s assertion, never be used in a manner associated with any website, or might never be viewed or come to the attention of a consumer on the Internet, is of no relevance to the question whether a disputed domain name is or is not identical or confusingly similar to a trademark.

The disputed domain name <sheratonparklane.com> is not identical to the Complainant’s SHERATON trademark. However, it contains that trademark in its entirety. The addition of the generic term “park lane”, which refers to a location, is apt to reinforce the suggestion of a connection with the Complainant. Internet users are familiar with the addition of a place name to a trade mark or brand in a domain name to indicate a particular establishment operated or controlled by the trademark owner. The suggestion is of a connection with a Sheraton hotel situated in Park Lane.

Therefore the Panel holds that the disputed domain names are as far as the <sheraton.email> is concerned identical and as far as <sheratonparklane.email> is concerned confusingly similar to the Complainant’s SHERATON trademark.

B. Rights or Legitimate Interests

As a preliminary point, the disputed domain name falls within the newly established “.email” gTLD. In relation to registrations in that TLD trademark owners could pay to participate in a “sunrise” period within which they could preemptively acquire domain names. The Complainant was not obliged to, and did not avail itself of this premium-fee “opportunity”. Trademark owners also can rely on the TMCH system of notification of their rights and interests. The Respondent in this case would have received such notification, as the Complainant did deposit its marks with the TMCH. However, it is not incumbent upon trademark owners to acquire, during any sunrise period, every possible domain name that incorporates their trademark. If any adverse consequence resulted from not taking advantage of a sunrise period, this would potentially put trademark owners to great expense in relation to domain names they may have no practical purpose for but whose use by third parties would damage their commercial interests and legal rights. Further, there would be little point to the notification option if despite it being used by a trademark owner the fact that it had not acquired the disputed domain name during a sunrise period were to affect it adversely in terms of a UDRP finding concerning relevant rights and interests. Although not required to, the Complainant demonstrated regard for its interests by using the TMCH-based notice system. Nothing adverse can be read into the failure of the Complainant to register the disputed domain names during the sunrise period in this case.

The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant’s SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. The Respondent submits that this is required, along with the acquisition of many other analogous registered “.email” domain names, because otherwise it is not possible to establish the service he intends to operate. The Respondent contends that he is taking all necessary steps to establish the service. The main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose. The analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trademarks, or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. In most cases it would in fact render the directory pointless if he did. Here the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service. This is not a case where his rights or interests can be established by the nature of the intended or activated website to which the relevant domain name resolves. For the Panel to hold otherwise i.e. that the Respondent’s interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.

Apart from the aforementioned ground, there is nothing on the facts that warrants a finding that the Respondent has rights or legitimate interests in the dispute domain names. The Respondent is not known by the terms “sheraton” or “sheratonparklane”, and has obtained no authorization to use those terms in any manner from the Complainant. The trademarks concerned have an established reputation around the world and are highly distinctive.

Further, there is no reason to treat “.email” domain names in any different manner from “.com” domain names. They are subject to the UDRP. There is no greater reason to consider the technical utility of a “.email” to a registrant than would be the case for a “.com” domain name in the commercial or company sphere, even if that utility is related to email messaging, recording or any other email related service.

Further, the Respondent asserts that it has registered many similar domain names, and the evidence before the Panel establishes that these registered domain names commonly incorporate other high profile trademarks. The Respondent submits that without a very large portfolio of such domain names its service cannot be viable. However, this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its recorded delivery services, based partly on the Respondent’s prior possession of domain names incorporating that very party’s own trademark. There is also little in the Respondent’s submissions that explains why to deploy its intended service it needs to own both <sheraton.email> and also such subsidiary names as <sheratonparklane.com>. Finally, in terms of its genuine intention to establish a legitimate service, demonstrable preparations are the key, rather than general evidence concerning good character and prior conduct in different businesses. In this case there is little before the Panel that demonstrates preparations in the relevant manner, in part because the Respondent’s intended business model is entirely dependent upon his ability to acquire domain names incorporating, inter alia, third party trademarks and brands, to which he has no prior or other rights.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The instances of bad faith referred to in article 4(b) of the UDRP are not exhaustive (“without limitation”). It is not established on the material before the Panel that this is a case where there is bad faith in terms of one of the specific instances enumerated. However, the reason that is the case is that the use the Respondent asserts he intends to make of the disputed domain names, is not of a kind that will be apparent to Internet users. The Respondent asserts that there will be no website resolving to the disputed domain names, and that in fact they will not be visible to any user of the Respondent’s anticipated email system. They will only appear when inserted into a dialogue box on the Respondent’s website by a user of the system.

The Complainant asserts that holding the disputed domain names in a directory for the purposes of the intended services is in itself a form of passive holding and that passive holding of domain names has been held to demonstrate bad faith all by itself.

However, in the final analysis the difficulty for the Respondent here is the same as in relation to rights and legitimate interests. The Respondent has not adequately demonstrated how or why it is that he needs to be the registrant of domain names incorporating other parties’ trademarks to make his intended service functional and viable. Even if it may be the case that a Respondent could establish that it is holding disputed domain names for the purpose of deploying a valid service in the future, and it is making demonstrable preparation for that purpose, it remains an essential starting point that the Respondent persuade a Panel that its ownership of the disputed domain name is required to make a legitimate service work. As indicated above, the Respondent has not addressed this point to the satisfaction of the Panel.

Finally, the disputed domain names incorporate the Complainant’s trademark in its entirety. That trademark is distinctive and enjoys a very extensive reputation around the world. In any case the Respondent admits that it deliberately registered the disputed domain names, as it makes clear that a purpose of owning it was to oblige the Complainant to join its system. It professes to do this as part of a free service, but nonetheless it seeks to extract a benefit from the Complainant by the preemptive registration. The Panel would be reluctant to lend its approval to the registration of a domain name incorporating another party’s trademark for the purpose of being able to establish a system or scheme in relation to which the trademark owner becomes a supplicant. This would set the clock back on the Policy in a way that was never intended.

Therefore the Panel holds that the disputed domain names were registered and used in bad faith.

7. Decision

For 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, <sheraton.email> and <sheratonparklane.email> be transferred to the Complainant.

William Van Caenegem
Sole Panelist
Date: July 1, 2014