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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., Westin Hotel Management, L.P. v. Mark Vann / WhoisGuard, Inc.

Case No. D2014-2260

1. The Parties

Complainant is Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P., of Stamford, Connecticut, United States of America (“U.S.”) represented by Fross Zelnick Lehrman & Zissu, PC, U.S..

Respondent is Mark Vann of Fresno, California, U.S. / WhoisGuard, Inc. of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <westinhotelkl.com> is registered with eNom World, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2015, 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 Complainant on January 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2015.

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 Respondent of the Complaint, and the proceedings commenced on January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2015.

The Center appointed Mark Partridge as the sole panelist in this matter on February 20, 2015. 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

Complainant is Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P., who collectively operate one of the leading hotel and leisure companies in the world. Complainant owns, manages, and franchises properties for use as hotels and resorts. Complainant is headquartered in Stamford, Connecticut.

Complainant introduced the WESTIN mark in 1981, and currently has a presence in over one hundred countries, including a Westin hotel in Kuala Lumpur, Malaysia.

Complainant owns trademark registrations for the WESTIN trademark in connection with hotel services and related goods and services in dozens of jurisdictions internationally, including:

WESTIN (U.S. Reg. No. 1,320,080); registered on February 12, 1985, for Class 42, “Hotel and Restaurant Services”;

WESTIN (Malaysia Reg. No. 92996637); registered on September 19, 1992.

Respondent is Mark Vann, of Fresno, CA. Respondent registered the disputed domain name <westinhotelkl.com> on August 17, 2014. The website redirects Internet traffic to “www.thewestinkualalumpur.com”, which Complainant operates.

5. Parties’ Contentions

A. Complainant

Complainant submits that it has registered trademark rights in the WESTIN mark, dating as early as 1992 in the relevant jurisdictions, and that the dominant portion of the disputed domain name is confusingly similar to Complainant’s mark. Further, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because it does not have any correspondingly registered trademarks, has not legitimately used WESTIN, and is not licensed or authorized by Complainant to use the WESTIN mark. Finally, Complainant argues that Respondent registered the disputed domain name in bad faith.

Complainant states that it has also developed a prominent Internet presence for its WESTIN mark, utilizing websites located at “www.westin.com” and “www.westinhotels.com”. Complainant maintains the domain name <thewestinkualalumpur.com> with specific information about the Westin hotel located in Kuala Lumpur. Visitors to the website associated with the disputed domain name are redirected to Complainant’s website. Additionally, Complainant states that “KL” is a commonly used abbreviation of Kuala Lumpur, Malaysia.

Complainant has also provided evidence that the disputed domain name is being used in connection with fictitious job postings at the Westin Kuala Lumpur. Fraudulent postings on job boards link to an email address at career@westinhotelkl.com. When users respond, they receive an email from career@westinhotelkl.com encouraging the job applicant enter sensitive personal information in order to procure expensive travel documents through nonexistent agencies.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraphs 14(a) and 14(b) of the Rules provide that, in the absence of exceptional circumstances, if a respondent does not submit a response, the panel shall decide the dispute based upon the complaint and draw such inferences therefrom as the panel considers appropriate.

A. Identical or Confusingly Similar

Complainant has used the WESTIN mark continuously on an international basis to identify its hotels since at least 1992. Complainant has a number of registrations for the WESTIN word mark including U> S. registration number 1,320,080, registered February 12, 1985 and Malaysian registration number 92996637, registered September 19, 1992.

The disputed domain name <westinhotelkl.com> uses an identical match to Complainant’s mark, paired with the word hotel, and the abbreviation “KL.” The use of the word “hotel” compounds the confusion, as it suggests connection to Complainants’ mark and business. “KL” is a common abbreviation for Kuala Lumpur. (The Free Dictionary, http://acronyms.thefreedictionary.com/Kuala+Lumpur; last visited March 6, 2015)). The use of “KL” compounds the confusion especially because the website simply redirects Internet traffic to Complainant’s website ”www.thewestinkualalumpur.com”. Additionally, in Starwood v. Lane, the panel found a nearly identical domain name confusingly similar. (Starwood Hotels & Westin v. Lane, WIPO Case No. D2013-1290 (finding that <westinhotels-kl.com> was confusingly similar to Westin’s <westinhotels.com>)). The Panel here finds no difference in <westinhotels-kl.com> and the disputed domain name <westinhotelkl.com> at issue in the current dispute. Accordingly, the Panel finds <westinhotelkl.com> is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the second element of paragraph 4(a) of the Policy, Complainant is required to present a prima facie case that Respondent lacks rights or legitimate interests in the dispute domain name. 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 connections 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.

Here, Complainant alleged that Respondent is using the disputed domain name to redirect Internet users to Complainant’s website in connection with a fraudulent scheme to capture personal information from Internet users. This cannot be considered a bona fide offering of goods or services. Consequently, Complainant has satisfactorily shown that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known as “Westin Hotel KL,” and is not making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, the burden of production shifts to Respondent to present evidence demonstrating rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet, Ltd., WIPO Case No. D2003-0455.

As Respondent did not submit any response to the Complaint, Respondent did not meet this burden. Therefore, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) 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.

Here, the disputed domain name appropriates Complainant’s mark and uses the site as a portal to redirect Internet traffic to Complainant’s website. Such use misleads users by suggesting a connection with Westin Hotels. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 (citing Pfizer Inc. v. NA, WIPO Case No. D2005-0072). Additionally, Complainant has provided evidence of use of the disputed domain name in connection with fraudulent job postings and fraudulent personal data collection. Respondent has posted offers for employment within the Westin Kuala Lumpur, soliciting responses to the email address career@westinhotelkl.com. The email address replies seeking to interview the person, and redirecting the applicant to a website for travel papers, which asks for personal information and attempts to collect large fees for doing so.

The Respondent did not reply to these contentions. There is no legitimate reason or business purpose for Respondent to own the domain name. Furthermore, the domain name has been used in connection with fraudulent activity. The Panel finds these facts and circumstances lead to the conclusion that Respondent registered and used the disputed domain name 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 name <westinhotelkl.com> be transferred to Complainant.

Mark Partridge
Sole Panelist
Date: March 9, 2015

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