WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International IP, LLC, Preferred Guest, Inc., Société des Hotels Méridien, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. Lei Qi
Case No. D2015-1539
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International IP, LLC, Preferred Guest, Inc., Société des Hotels Méridien, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. of Stamford, Connecticut, United States of America ("USA"), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Lei Qi of Shanghai, China, self-represented.
2. The Domain Names and Registrar
The disputed domain names <aloft.pub>, <element.pub>, <fourpoints.pub>, <lemeridien.pub>, <sheraton.pub>, <spg.pub>, <stregis.pub> and <westin.pub> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 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.
On September 9, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 9, 2015, the Complainant confirmed its request that English be the language of the proceeding. On September 13, 2015, the Respondent requested that Chinese be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015 but was extended pursuant to paragraph 5(b) of the Rules to October 10, 2015 due to the public holidays in China. The Response was filed with the Center on October 10, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on October 15, 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.
On October 19, 2015, a supplemental filing was made by the Complainant to the Center which was objected by the Respondent through its email received by the Center on October 21, 2015.
4. Factual Background
The Complainant states it is one of the world's leading hotels and leisure companies in the world, with over 1,100 properties in approximately 100 countries which it owns, manages or franchises. The Complainant is a fully-integrated owner, operator and franchisor of hotels and resorts operating under the names SHERATON, FOUR POINTS BY SHERATON, WESTIN, W, LE MERIDIEN, ST. REGIS, THE LUXURY COLLECTION, TRIBUTE PORTFOLIO, ALOFT and ELEMENT.
The Complainant owns trade mark registrations for SHERATON, FOUR POINTS, WESTIN, LE MERIDIEN, ST. REGIS, SPG, ALOFT and ELEMENT ("the Starwood Marks") in the United States and in jurisdictions around the world including in China. Through the Complainant's widespread, extensive use of the Starwood Marks and its highly substantial expenditure in promoting the marks in television, in print advertisements, on the Internet and in other media, the Starwood Marks have become uniquely associated with the Complainant and its services. The Starwood Marks have attained considerable fame throughout the world.
The Complainant has developed a prominent Internet presence at "www.starwoodhotels.com" as well as at dedicated websites for each of the Starwood Marks including "www.westin.com", "www.sheraton.com", "www.alofthotels.com", "www.fourpoints.com", "www.elementhotels.com", "www.lemeridien.com", "www.spg.com" and "www.stregis.com".
The disputed domain names were registered by the Respondent on May 12, 2015. The disputed domain names do not resolve to any active website.
The Starwood Marks were registered with the Trademark Clearinghouse ("TMCH").
A letter was sent to the Respondent by the Complainant's external counsel on July 8, 2015, notifying the Respondent of the Complainant's rights in the Starwood Marks. It requested that the Respondent agree to voluntarily transfer the disputed domain names to the Complainant. The Respondent wrote in response on July 23, 2015:
"I check the whois of domains, like element.com, fourpoints.net and a lot of other domains are not owned by your client. The Internet is global, not just American, and .pub means public. My business that I use these domains is not involved in hotels etc. So I think I have the rights to own these domains."
There was no further communication between the parties.
5. Parties' Contentions
1. The disputed domain names are identical and/or confusingly similar to the Starwood Marks. The disputed domain names each incorporate without alteration the Complainant's SHERATON, FOUR POINTS, WESTIN, LE MERIDIEN, ST. REGIS, SPG, ALOFT and ELEMENT trade marks. The ".pub" generic Top-Level Domain ("gTLD") cannot be considered when adjudicating on the issue of confusing similarity. However, even if it were to be considered, it would add to the confusing similarity as the ".pub" gTLD is intended to give "pubs, restaurants, hotels, and breweries an instantly recognizable online space" (quoted from the ".pub" website). By registering the disputed domain names, the Respondent clearly intended for the disputed domain names to refer to the Complainant's Starwood Marks.
2. The Respondent has no rights or legitimate interests in the disputed domain names. Given the Complainant's extensive use of the Starwood Marks which predates the Respondent's registration of the disputed domain names, the burden is on the Respondent to establish his rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent has ever been known by the disputed domain names. The Respondent was well aware of the Complainant's rights in the Starwood Marks as he would have received a warning notice from the TMCH when he registered the disputed domain names. The Respondent has no connection or affiliation with the Complainant and no licence or permission from the Complainant to use the Starwood Marks in domain names or in any other manner. The Respondent received the Complainant's letter but chose to ignore the Complainant's demand.
3. The Respondent registered and is using the disputed domain names in bad faith. The Respondent's failure to transfer the disputed domain names to the Complainant in response to the latter's correspondence is evidence of bad faith. It is inconceivable that the Respondent was unaware of the Complainant's Starwood Marks when he registered the disputed domain names. The Respondent's passive holding of the disputed domain names is itself bad faith use in view of the renown of the Starwood Marks and the absence of likely legitimate uses by an unauthorized person like the Respondent.
The Respondent argues in response that "pub" connotes, in China, the public, which means it can be used by anyone and in any country. It need not be restricted for use in relation to hotels, bars or inns. Further, the Complainant's Starwood Marks are not well known in China since the Complainant only has 146 hotels in China, Hong Kong, Macau and Taiwan which translates to an average of nine hotels for each of the Complainant's trade marks. In the context of China with a population of 1.3 billion and where Chinese hotel chains may have hundreds and over a thousand hotels, the Respondent does not agree that the Complainant's Starwood Marks are well known in China. The Complainant has only registered its Starwood Marks in two classes of service whereas the classification of goods and services extends to a much wider scope.
The Respondent also argues that "Element" is a plain word and its Chinese term is "元素". The "spg" in the <spg.pub> disputed domain name does not have any direct meaning. The disputed domain names have not yet been used because in China, these have to be recorded by the relevant Ministry before the domain names can "go live". The Respondent claims to have been testing the disputed domain names for use internally. He argues that the Internet is meant to allow access to all, is fair and gives equal opportunities to people to start up different businesses.
6. Discussion and Findings
A. Procedural Matter
An unsolicited supplemental filing was made by the Complainant on October 19, 2015 on the basis that the Respondent presented arguments in the Response that the Complainant could not reasonably have anticipated when the Complaint was filed.
The Respondent objected to the supplemental filing on October 21, 2015 on the basis that the timelines and rules prescribed should be abided by.
On the issue of non-solicited supplemental filings, this has been considered and discussed in a number of earlier UDRP panel decisions including in AutoNation Holding Corp. Rabea Alawneh, WIPO Case No. D2002-0058 in which the panel stated as follows:
"While the Rules clearly delineate a procedure, for resolving disputes under the Policy, that, for the sake of expediency, relies on a single complaint and response, there is no prohibition -- contrary to the Respondent's view -- in either the Policy or the Rules which circumscribes a panel's authority to consider any additional material submitted by any party on its own initiative. In that regard, the Rules specify recognize, in the context of Rule 12, that situations may arise where a panel needs further information from the parties and hence authorizes the panel, acting in its sole discretion, to so request it via further statements from the parties. In a parallel fashion, under Rule 13, where a panel feels the written record then before it is inadequate and that the deficiency can be cured through an in-person hearing, the panel has the authority, acting in its sole discretion though limited to sufficiently exceptional circumstances, to order an in-person hearing.
It stands to reason that panels have a correlative authority, acting, in their sole discretion, under their general power specified under Rule 10(a) to "conduct the administrative proceeding in such manner as it considers appropriate", to decide whether or not to consider any additional statement which the panel receives, on a non-solicited basis, from any party. Of course, in making such a decision, any panel must ensure, consistent with Rule 10(b), that the parties are treated with equality and that each party is given a fair opportunity to present its case. To this Panel, it simply makes no sense to differentiate the panel's power simply based on whether the panel requested a submission or not; i.e., a panel can consider such a submission if and only if that panel specifically requested it but must automatically refuse to do so if a party, rather than the panel, initiated it.
That being said, panels generally frown on receiving additional submissions -- particularly after a panel has been fully appointed and the case provided to it for decision -- for the simple reason that such submissions tend to complicate the process, delay decision of the underlying dispute and run counter to the goals, embodied in the Policy, of providing a dispute resolution mechanism that is relatively simple, expeditious and cost-effective to the parties. Nevertheless, situations may well arise where either party believes it needs such a filing to adequately present its case and presents sufficient justification for that filing. It is in those instances, as here, that a panel in assessing the underlying circumstances of a case will determine, in its sole discretion and on a case-by-case basis, whether to accept such a submission or not."
In the case of Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, the panel concluded as follows:
"With respect to the learned Panelists in JP Morgan, this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel's general powers conferred by Rule 10, particularly having regard to the panel's duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case. If a Respondent raises matter which the Complainant could not have been expected to have addressed in its Complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules."
The Panel is of the view that the above statements and reflections on the issue are relevant and applicable, and in this case determines that the supplemental filing of the Complainant can be taken into consideration. The supplemental filing took place soon after the Panel was appointed and does not cause a delay in the proceeding.
The Complainant submits in the supplemental filing as follows:
1. The Respondent's argument in defence that the ".pub" gTLD can be used for domain names that are intended for uses beyond that envisioned by the registry are irrelevant as it is a well-established fact that the gTLD cannot be taken into consideration when adjudicating on the issue of confusing similarity.
2. The Respondent's argument that the Starwood Marks are registered in China for services in only one International class is irrelevant. The location of the registered trade mark and the goods and/or services for which it is registered are irrelevant.
3. The Respondent has asserted that the Starwood Marks are not well known in China. In rebuttal, the Complainant points to the fact that the Complainant's SHERATON and WESTIN trade marks have been recognized by the Chinese courts as well known in China. The Complainant submitted affidavits attesting to the strong Chinese presence that is maintained in China in respect of the LE MERIDIEN and ST REGIS marks.
4. The Respondent has argued that the registration of the disputed domain names <element.pub> and <spg.pub> should be excused as they both comprise common English words or could have multiple meanings. However, the Respondent did not register these two disputed domain names in isolation but registered the ".pub" disputed domain names corresponding to each of the Complainant's Starwood Marks.
5. The Respondent has demonstrated his familiarity with the English language as the Respondent was able to submit his Response based solely on the Complainant's English- language submission.
B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Registration Agreement in relation to the disputed domain names is in Chinese but the Complaint and supplemental filing of October 19, 2015 were in English. The Complainant requested that English be the language of the proceeding for the reason mentioned earlier, namely that the Respondent has demonstrated his ability to understand the English language and also because the very nature of the ".pub" gTLD is as an English language word used to refer to bars, public houses and publications.
The Panel has considered the circumstances of this case and also weighed the various interests, namely that of the parties and the need to ensure that they are treated with equality and given a fair opportunity to present their case (per paragraph 10(b) of the Rules); and that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules).
Having done so, the Panel determines that it would be appropriate for English to be the language of the proceeding. The Panel notes the Respondent's participation and responses in the proceeding to date which reflect that he has an understanding of the arguments raised by the Complainant and the nature of the proceeding. The Respondent also responded to the Complainant's external counsel's letter of July 8, 2015 in English. Moreover, the disputed domain names all comprise English terms and/or brand names. There is nothing which raises a flag of concern that the Respondent would be prejudiced if English were the language of the proceeding. On the other hand, requiring the Complainant to translate all the documents and evidence into Chinese would counter the policy consideration of ensuring that the proceeding take place with due expedition.
C. Identical or Confusingly Similar
The Complainant has established it has rights in the Starwood Marks. The disputed domain names each incorporate the entirety of the SHERATON, FOUR POINTS, WESTIN, LE MERIDIEN, ST. REGIS, SPG, ALOFT and ELEMENT trade marks without any modification. It is well established, as was rightly pointed out by the Complainant, that the gTLD ".pub" should be disregarded.
The Panel adds a note, with reference to the Respondent's argument that the Complainant only has trademark registrations in one class in China, that this fact is irrelevant for the purposes of the conditions required to be established under paragraph 4(a)(i) of the Policy. It suffices for the Complainant to show it has rights in the relevant trade mark.
Hence, the Panel finds that the disputed domain names are identical to the Complainant's Starwood Marks in which it has rights.
D. Rights or Legitimate Interests
In the Panel's view, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. This case has not been convincingly rebutted by the Respondent with sufficiency which would allow the Panel to decide this case in his favour. The evidence submitted by the Complainant is stacked rather highly against the Respondent, in particular because of the choice of the series of disputed domain names, all of which were registered at the same time, and long after the Starwood Marks were first used and/or registered as trade marks. The Respondent has not shown that he has ever been known by any of the disputed domain names. The series of disputed domain names contain a couple of domain names which comprise generic/common terms (namely, "element" and "spg"). Indeed, if the Respondent had simply registered either the <element.pub> or the <spg.pub> disputed domain names in isolation, there might have been grounds for a finding that the Respondent has a valid basis to claim rights or legitimate interests in either of these two disputed domain names. However, in the specific context of the circumstances of this case where the Respondent registered the series of eight disputed domain names comprising words which are the well-known marks of the Complainant, it would require a significant stretch of imagination to accept that this was pure coincidence. The Respondent was clearly well aware of the Complainant's rights in the Starwood Marks since he would have received notice of the warning notice from the TMCH. The Panel further notes that the Respondent did not deny knowledge of the Complainant's Starwood Marks when he registered the disputed domain names.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exhaustive examples of registration and use 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 trade mark or service mark or to a competitor of that the 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 trade mark 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 on-line 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."
The Panel is persuaded that the Respondent must have been aware of the Complainant's rights in the Starwood Marks when he registered the disputed domain names. Additionally, the Respondent was put on notice of the existence of the Starwood Marks by virtue of the TMCH recordal. The Panel agrees with the Complainant that the fact that the Respondent chose to register the series of disputed domain names which all contain the trade marks of its various hotels shows that he deliberately registered the disputed domain names based on his knowledge of the Complainant and of its trade marks. The intention of the Respondent must have been to ride off the reputation that the Complainant had in the Starwood Marks and to attract Internet users to his websites or other on-line occasion by creating a likelihood of confusion with the Complainant's Starwood Marks. The Panel finds that there is evidence of bad faith registration and use and the circumstance described in paragraph 4(b)(iv) of the Policy can be found in this instance. Whilst the Internet is without borders and has opened up a myriad of possibilities for users across the world to operate various businesses, this does not alter and should not in fact lead to an undermining of the fundamental principle that proprietary rights, namely rights in trade marks, have to be protected and any misappropriation thereof by a third party that goes contrary to the Policy has to be addressed. The observation of these principles does not impinge in any way upon the Respondent's freedom to operate a business.
The Panel therefore finds that the Respondent has registered and used the disputed domain names 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 disputed domain names <aloft.pub>, <element.pub>, <fourpoints.pub>, <lemeridien.pub>, <sheraton.pub>, <spg.pub>, <stregis.pub> and <westin.pub> be transferred to the Complainant.
Date: November 4, 2015