WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC and Sheraton International IP, LLC v. Jinfang, Yejinfang

Case No. D2015-2243

1. The Parties

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

The Respondent is Jinfang, Yejinfang of Wuhan, Hubei, China.

2. The Domain Name and Registrar

The disputed domain name <sheratonbeijinghotel.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2015. On December 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 December 16, 2015, the Center transmitted an email in English and Chinese to both Parties regarding the language of the proceeding. On the same day, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.

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 in English and Chinese, and the proceeding commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2015.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 12, 2016. 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 First Complainant, Starwood Hotels & Resorts Worldwide, Inc., is a hotel and leisure company, and the Second and Third Complainants are affiliated companies (collectively and separately referred to below as "the Complainant"). The Complainant is the owner of numerous registrations of the trademark SHERATON in multiple jurisdictions around the world including United States trademark registration no. 679027, registered since 1959, and Chinese trademark registration no. 5479280, registered since 2009, in respect of hotel services or related goods and services. The Complainant operates websites at <sheraton.com> and <sheratonhotels.com> that offer reservation services for its hotels.

The Respondent is the registrant of the disputed domain name, which was registered on July 21, 2014. The disputed domain name resolves to a website that offers hotel reservation services in connection with a hotel unrelated to the Complainant. The website displays the SHERATON trademark and includes images found on the Complainant's official website of the Sheraton Grand Beijing Dongcheng Hotel. The Respondent's contact information in the Registrar's WhoIs database is incorrect as the town and postcode do not match.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its SHERATON trademark. The disputed domain name incorporates the SHERATON trademark in its entirety, plus the generic term "hotel", the geographic term "Beijing" and the generic Top-Level Domain ("gTLD") suffix ".com".

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant's SHERATON trademark in a domain name or in any other manner. There is no evidence that the Respondent has ever been known by the disputed domain name.

The Complainant submits that the Respondent registered and uses the disputed domain name in bad faith. The Complainant's SHERATON trademark is among the most famous trademarks in the travel and leisure industry and enjoys widespread international recognition. It is inconceivable that the Respondent was unaware of the Complainant's trademark when it registered the domain name. The only reason for the Respondent to use the Complainant's trademark is intentionally to confuse consumers, to trade on the Complainant's rights and reputation and to drive traffic to the Respondent's website for its own commercial benefit.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Language of this 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is in the English language and that the Respondent's website is almost entirely in English.

The Panel notes that all the Center's email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant's request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves has an English version, from which it is reasonable to conclude that the Respondent understands that language. Further, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

(ii) the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the word SHERATON.

The disputed domain name incorporates the Complainant's SHERATON trademark in its entirety. The Complainant's trademark is the dominant element of the disputed domain name. The disputed domain name contains the additional elements "beijing" and "hotel". However, "beijing" is merely a geographic term and not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark (See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768) while "hotel" is merely a generic word and not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark either (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). The disputed domain name also contains the gTLD suffix ".com" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is identical to the Complainant's trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the evidence shows that the disputed domain name is being used with a website offering reservation services in relation to a hotel unrelated to the Complainant. The Complainant states that it has no connection with the Respondent. Given that the disputed domain name is confusingly similar to the Complainant's trademark, the Panel considers that the Respondent's website is very likely to confuse Internet users. These facts show that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent's name is "Jinfang, Yejinfang". None of the evidence submitted indicates that the Respondent has been commonly known by the disputed domain name as foreseen in the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the Respondent's website offers hotel reservation services and displays the prices of rooms. The use of the disputed domain name is clearly commercial and not otherwise a fair use, hence it is not covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site 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 [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."

The Respondent registered the disputed domain name in 2014, several years or more after the Complainant obtained its SHERATON trademark registrations, including in China, where the Respondent is located. The Complainant's trademark has a strong reputation in the travel and leisure industry due to widespread use and promotion, including in China. The only distinctive element of the disputed domain name is the Complainant's trademark. The Respondent's website offers hotel reservation services in relation to a hotel unrelated to the Complainant. This indicates to the Panel that the Respondent intentionally chose to register the Complainant's trademark in the disputed domain name.

The Respondent uses the disputed domain name with a website to offer hotel reservation services. Even though the disputed domain name wholly incorporates the Complainant's trademark, the hotel is unrelated to the Complainant and the Respondent has no connection with the Complainant or its hotels. The addition of the generic term "hotel" in the disputed domain name increases the likelihood of confusion with the Complainant's trademark, as does the display of images on the Respondent's website of one of the Complainant's actual hotels. Given all these facts, the Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the services on that website.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <sheratonbeijinghotel.com> be transferred to the Complainant, Starwood Hotels & Resorts Worldwide, Inc.

Matthew Kennedy
Sole Panelist
Date: February 16, 2016