WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide Inc. v. WhoisGuard, Inc. / Lyle Young
Case No. D2014-1051
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide Inc. of Stamford, Connecticut, United States of America (“USA”), represented by Fross Zelnick Lehrman & Zissu, PC, USA.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / Lyle Young of Mexico, Mexico.
2. The Domain Name and Registrar
The disputed domain name <alofthotels-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 June 18, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2014 providing the name and contact information of the Registrant as disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 23, 2014.
The Center verified that the Complaint and 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 June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2014.
On July 1 and 2, 2014, the Center received several communications from the Complainant.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on July 22, 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 in this matter is Starwood Hotels & Resorts Worldwide, Inc., a company incorporated under the laws of Maryland.
The Complainant is one of the leading hotel and leisure companies in the world. The Complainant owns, among many others, the ALOFT trademark (the “ALOFT Mark”), which has been used in connection with its goods and services in the hotel and leisure industry since 2005. As of the filing date of the Complaint, there are more than 80 of the Complainant’s ALOFT hotels in 14 countries worldwide. Through the Complainant’s widespread, extensive use of the ALOFT Mark in connection with hotel services and related goods and services, and its expenditure of large sums in promoting the ALOFT Mark, the Complainant’s ALOFT Mark represents enormous goodwill.
The Complainant is the recorded owner/applicant of more than 170 trademark registrations/applications for the ALOFT Mark in about 80 countries and territories around the world, including, among others, the USA, Malaysia, Panama and Mexico, with its earliest trademark registration secured in 2006. The ALOFT Mark is prominently presented on the Complainant’s websites located at “www.alofthotels.com”, which is also accessible through other Complainant-owned domain names.
The Complainant also operates an ALOFT hotel in Kuala Lumpur, Malaysia under the name Aloft Kuala Lumpur Sentral.
The Domain Name <alofthotels-kl.com> was created on November 15, 2013.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that the Domain Name consists of nothing more than the Complainant’s registered ALOFT Mark, the descriptive term “hotels,” the geographic term “KL” and the “.com” generic Top-Level Domain (“gTLD”) extension.
The Domain Name incorporates without alteration the Complainant's registered ALOFT Mark, which is the most prominent portion of the Domain Name. The gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity. The addition of “hotels,” a generic word that describes the Complainant’s services, to the Complainant’s mark adds to, rather than diminishes, the likelihood of confusion. The term “KL” is a commonly-used abbreviation of Kuala Lumpur, the largest city in and capital of Malaysia. The addition of a geographical indicator such as “KL” to the Complainant’s ALOFT trademark also adds to the likelihood of confusion.
Given the reputation and renown of the Complainant’s ALOFT Mark, most Internet users who see the Domain Name are likely to immediately recognize the ALOFT Mark, and assume that the Domain Name and the website associated with it are owned, controlled or approved by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate information on the Complainant’s hotels may be directed to the Internet address incorporating the Domain Name, creating a strong likelihood of confusion. Upon being directed to the Respondent’s website at the Domain Name, Internet Users would reasonably believe that it is either the Complainant’s website or is somehow related to or approved by the Complainant, when that is not the case.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that its adoption and extensive use of the ALOFT Mark predates the Respondent’s registration of the Domain Name. Further, there is no evidence that Respondent ever has been known by the Domain Name.
The Complainant further claims that the Respondent’s only use of the Domain Name is in connection with a job scam, i.e., as an email server for sending fraudulent email messages purportedly on behalf of the human resources department of the Aloft Kuala Lumpur Sentral, and to redirect all internet traffic from <alofthotels-kl.com> to the Complainant’s official website for the Aloft Kuala Lumpur Sentral in order to confuse prospective job applicants so that they believe that the job offer and subsequent request for a visa application and money from the applicants are legitimate.
In addition, when Internet users attempt to visit the Respondent’s website at the Domain Name, they are redirected to the Complainant’s website and will reasonably but mistakenly believe that this redirection to the Complainant’s website means that the Domain Name is somehow related to or approved by the Complainant, when that is not the case.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant contends that its ALOFT Mark is one of the most famous trademarks in the hotel and resort industry and enjoys international recognition. It is therefore inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the Domain Name. The mere fact that the Respondent registered the confusingly similar Domain Name without authorization is, in and of itself, evidence of its bad faith registration.
Further, the fact that the Respondent has redirected all traffic from the Domain Name to the Complainant’s own website for the Aloft Kuala Lumpur Sentral is additional evidence that the Respondent knew of the Complainant’s rights in the ALOFT Mark and suggests the Respondent’s opportunistic bad faith in registering the Domain Name.
The Respondent’s exploitation of the Complainant’s goodwill by creating confusion demonstrates the Respondent’s bad faith. The Respondent’s mere holding of the Domain Name is itself bad faith use in view of the renown of the ALOFT Mark and absence of likely legitimate uses by an unauthorized party like the Respondent. The very act of having acquired the Domain Name incorporating the Complainant’s ALOFT Mark raises the probability of the Respondent using it in a manner that is contrary to the Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such Domain Name can be put that would not violate the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural issues
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has rights in a trademark, and (2) that the Domain Name is identical or confusingly similar to such trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in the ALOFT Mark, which is extensively used and registered worldwide. The Complainant has also demonstrated and evidenced that it has long used its trademark for its commercial activities, and in particular has used the mark for hotel services and related goods and services since 2005. The dates of first registration and use of the ALOFT Mark well predate the registration of the Domain Name.
Second, the Domain Name consists of the Complainant’s registered and renowned ALOFT Mark in its entirety, the terms “hotels” and “kl” and the “.com” gTLD extension. The Panel finds that “aloft” is the dominant element in the Domain Name. In this regard, the Panel further finds that:
- The term “hotels” describes exactly the business that the Complainant is engaged in. It is well-established that the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity. (See, e.g., Normalu SA v. Seref Akkaya, WIPO Case No. D2012-1513; Accor v. Steve Kerry/North West Enterprises, Inc., WIPO Case No. D2006-0649; F. Hoffman-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-Rd, WIPO Case No. D2006-0047). Thus, in the Panel’s view, the addition of the descriptive suffix “hotels” does nothing to distinguish the Domain Name from the ALOFT Mark, nor to dispel the risk of confusing similarity.
- The term “kl” is a commonly used abbreviation of Kuala Lumpur, the capital of Malaysia, where the Complainant operates an ALOFT hotel under the name of Aloft Kuala Lumpur Sentral. As the geographical identifier “kl” relates directly to one of the places where the Complainant has developed its business, the Panel finds that the addition of such a geographical identifier “kl” may further contribute to the likelihood of confusion. (See, e.g., Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).
- The gTLD “.com” does not typically constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015).
On the basis of the foregoing findings, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ALOFT trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent can show that it has a right or legitimate interest in a disputed domain name in the following circumstances:
(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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 Panel finds that the Complainant has sufficiently evidenced that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions in this regard.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark ALOFT.
Further, from evidence submitted by the Complainant, the Panel finds that the Respondent appears to have used the corresponding website in connection with a job scam and related online data collection scheme designed to collect the names, email addresses and other personal contact details from unsuspecting job applicants. This is a form of Internet fraud that aims at stealing valuable information from visitors to a fraudulent website. Such use cannot constitute a bona fide use of the Domain Name pursuant to paragraph 4(c)(i) of the Policy (see e.g. Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa, WIPO Case No. D2006-0614; Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that the Respondent made use of a privacy service until that shield was lifted by the Registrar. This suggests that the Respondent, as an underlying registrant that has been under a privacy service for most of the time, is not able to be commonly known by the Domain Name. Further, there is no evidence showing that the Respondent operates any bona fide business or organization under the Domain Name or under the trade name ALOFT. Therefore, it is not evidenced that the Respondent is identified by ALOFT or that it has any right in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that the use of the Domain Name by the Respondent appears to aim at commercial gain. Further, the redirection of the Domain Name to the Complainant’s website misleadingly induces consumers to believe that the Domain Name is somehow related to or approved by the Complainant. Therefore, the Panel finds that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.
In this case, the Panel finds that the ALOFT Mark is a renowned mark in the hotel and leisure services industry, which well-predates the registration of the Domain Name. Further, the Respondent has redirected all traffic from the Domain Name to the Complainant’s own website. Thus, the Panel finds it inconceivable that the Respondent was unaware of the prior registered and renowned trademark ALOFT and its associated hotel services at the time of the registration and use of the Domain Name.
Besides redirecting the Domain Name to the Complainant’s website, the Respondent appears to have used the Domain Name and its associated email servers to impersonate employees of the Complainant’s Aloft Kuala Lumpur Sentral hotel, perpetrating what appears to be a fraud on unsuspecting job applicants. Given these facts, the Panel finds that the Respondent has exploited the Complainant’s goodwill for financial gain by causing confusion. This demonstrates the Respondent’s opportunistic bad faith in registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy in the Panel’s view.
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 name <alofthotels-kl.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Date: August 5, 2014