WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC v. Domain Administrator, Beyond the Dot LTD / Houghton Richards
Case No. D2015-0231
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC , Sheraton International IP, LLC of Stamford, Connecticut, United States of America (the "USA"), represented by Fross Zelnick Lehrman & Zissu, PC, USA.
The Respondent is Domain Administrator, Beyond the Dot LTD of Hong Kong, China / Houghton Richards of Perth, Australia.
2. The Domain Name and Registrar
The disputed domain name <sheraton.tokyo> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2015. On February 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2015, 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 February 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 20, 2015.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on March 31, 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
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages or franchises over 1,100 properties in approximately 100 countries. The Complainant is owner, operator and franchisor of hotels and resorts operating under the following names: Sheraton, Westin, Four Points By Sheraton, W, Le Méridien, St. Regis, The Luxury Collection, Aloft and Element.
The Complainant has used the trademark SHERATON in connection with its goods and services in the hotel and leisure industry for over 80 years and became the first hotel chain to be listed on the New York Stock Exchange. Today, there are over 400 Sheraton hotels worldwide, "(sic) including two hotels in Tokyo, Japan: the Sheraton Miyako Hotel Tokyo and the Sheraton Grande Tokyo Bay Hotel".
The Complainant is the owner of several trademark registrations for SHERATON throughout the world in connection with its hotel services and related goods and services. Amongst others, the Complainant is the owner of the following trademark registrations:
- The United States trademark Nos. 679027, registered on May 19, 1959, in International class 42; 954454, registered on March 6, 1973, in International class 16; 1784580, registered on July 27, 1993, in International class 42; 1884365, registered on March 14, 1995 in International class 41; and 3020845, registered on November 29, 2005, in International classes 41, 43 and 44;
- The Community trademark No. 154450, registered on January 20, 1999, in class 25, 41 and 42.
-The Japanese Trademark No. 722761, registered on October 12, 1966, in class 16;
- The Japanese Trademark No. 2077346, registered on September 30, 1988, in class 32, 33;
-The Japanese Trademark No. 2066541, registered on July 22, 1988, in class 30, 32.
The Complainant operates on the Internet through its web sites "www.sheraton.com" and "www.sheratonhotels.com", where users are enabled to make reservations at Complainant's Sheraton hotels and to access information regarding the Complainant and its hotels and related services.
The disputed domain name <sheraton.tokyo> was registered on July 22, 2014, and the domain name is not currently associated with an active website.
5. Parties' Contentions
The Complainant states that, through its widespread and extensive use of the trademark SHERATON in connection with hotel services and various related goods and services, as well as its investments of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the trademark SHERATON has become uniquely associated with the Complainant and its services, and has acquired considerable fame and widespread acclaim in the United States, Argentina, Japan, and throughout the world. The Complainant also underlines that its exclusive rights in the trademark SHERATON have been recognized in several WIPO UDRP decisions that ordered the transfer of infringing domain names to the Complainant.
The Complainant informs the Panel that, in order to protect its trademark SHERATON from cybersquatting, the Complainant submitted its Community trademark No. 154450 to the Trademark Clearinghouse ("TMCH") and highlights that, therefore, when the Respondent attempted to register the disputed domain name, it has received "a warning notice" from the concerned registrar and, despite having received said notice, proceeded with the registration of the disputed domain name, being fully aware that its registration conflicted with the Complainant's trademark.
The Complainant contends that the disputed domain name is identical to the Complainant's trademark SHERATON since the generic Top-Level Domain ("gTLD") indicator ".tokyo" cannot be taken into consideration when judging confusing similarity.
The Complainant points out that, upon seeing the disputed domain name, consumers will reasonably believe that it is either owned by the Complainant or somehow related to or approved by the Complainant, when that is not the case.
With reference to the Respondent's right or legitimate interest in the disputed domain name, the Complainant states that it has not granted Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's trademark SHERATON. The Complainant also states that the disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent.
The Complainant also alleges that the Respondent's purpose when registering the disputed domain name was to offer the disputed domain name for sale, at a price substantially greater than what he paid for it, and to falsely imply some sort of endorsement by or connection with the Complainant and its Sheraton hotels that does not exist. The Complainant concludes that such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
The Complainant wrote to the Respondent concerning its registration and use of the disputed domain name on July 23, 2014. The Respondent has replied the Complainant's letter on August 2, 2014 claiming that the Respondent's client for whom it had registered the disputed domain name was planning to build a furniture retail web site at the disputed domain name, but that the client would be willing to transfer the disputed domain name to the Complainant for USD 3,777 and then for USD 1,740.
As to bad faith at the time of the registration, the Complainant states that the Complainant's trademark SHERATON is one of the best-known hotel-related marks in the world and has been found to be famous or well-known around the world in several prior UDRP disputes. The Complainant also highlights that the Respondent received notice of the Complainant's rights via the TMCH when it registered the disputed domain name.
The Complainant also highlights that the fact that the disputed domain name is not currently associated with an active web site does not exclude bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several word marks for SHERATON, respectively. These trademarks are registered for various goods and services, in various classes, in many countries of the world. The trademarks put forward by Complainant are sufficient to ground the Complaint, at least under the first UDRP element, i.e. the issue of identity or confusing similarity.
The Panel concludes that the disputed domain name is confusingly similar to the SHERATON marks. The addition of the Top-Level Domain suffix ".tokyo" does not detract from the confusing similarity between the Complainant's trademark and the disputed domain names, given the geographic and, thus, descriptive, nature of such Top-Level Domain suffix.
Therefore, the Panel finds that the disputed domain name <sheraton.tokyo> is confusingly similar to the Complainant's trademark SHERATON and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant's prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the SHERATON trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel considers from the undisputed facts and circumstances reflected in the record that the Respondent must have known of and had in mind the Complainant and its trademarks when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests "opportunistic bad faith". See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, the Panel can ascribe no motive for the Respondent's registration and use of the disputed domain name as reflected in the record except to trade on the goodwill associated with the Complainant.
The offer to sell the disputed domain name is a further evidence of bad faith.
The Respondent's bad faith is also shown by its use of the disputed domain name (or lack thereof). The disputed domain name does not appear to resolve to an active website. As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the Policy.
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 <sheraton.tokyo> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: April 15, 2015