WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.P.A., Design Hotels AG, The Sheraton LLC, Westin Hotel Management L.P., Starwood Hotels & Resorts Worldwide, LLC v. 梅志勇(Mei Zhi Yong)
Case No. D2018-0960
1. The Parties
The Complainant is Bulgari S.P.A. of Roma, Italy (“Bulgari Hotels”), Design Hotels AG of Berlin, Germany “Design Hotels”), The Sheraton LLC of Stamford, Connecticut, United States of America (“United States”) (“Sheraton Hotels”), Westin Hotel Management L.P. of Stamford, Connecticut, United States (“Westin Hotels”), Starwood Hotels & Resorts Worldwide, LLC of Bethesda, Maryland, United States (“Starwood Hotels”), represented by Steven M. Levy, United States.
The Respondent is 梅志勇 (Mei Zhi Yong) of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <bulgarihotels.vip>, <designhotels.vip>, <stregissanfrancisco.vip>, <westinhotels.vip>, and <whotels.vip> (together “the Domain Names”) are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2018. On May 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 2, 2018, 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 May 3, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 3, 2018. The Respondent did not comment on the language of the proceeding by 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 in English and Chinese of the Complaint, and the proceedings commenced on May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on June 6, 2018. 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 five Complainants are individually the owners of five different well-known brands of international hotel chains. They are all related to each other as they are affiliates of global hotel chain Marriott International, Inc. (“Marriott”). Design Hotels, Sheraton Hotels and Westin Hotels are subsidiaries of Starwood Hotels which in turn is a subsidiary of Marriott. One of the divisions of Marriott formed a joint venture with Bulgari Hotels.
Bulgari Hotels own the distinctive trade mark BULGARI often written as “BVLGARI”. Founded in the year 1884, the Complainant produces and markets jewelry, watches, fragrance and accessories. Since 2001, it also operates a chain of luxury hotels in many locations including Milan, London, Tokyo, Paris. The BULGARI trade mark is registered worldwide including in the United States and the European Union. The earliest trade mark registration submitted in evidence which includes hotel services dates back to June 20, 2002 (European Union trade mark registration no. 001510866). The BULGARI trade mark is also extensively promoted through its websites – “www.bulgari.com” and “www.bulgarihotels.com” as well as through social media, advertising and other means.
Design Hotels was founded in 1993. It markets and curates a selection of 300 independent hotels in more than 50 countries across the globe including Ibiza, New York, Tokyo and Johannesburg. The Complainant charges member hotels a base membership fee and earns additional revenue by providing various supportive services. The trade mark DESIGN HOTELS is registered in many jurisdictions around the world including the United States and the European Union. The earliest trade mark registration submitted in evidence which includes hotel services dates back to September 16, 2003 (United States trade mark registration no. 2764645). The DESIGN HOTELS trade mark is also extensively promoted through its website “www.designhotels.com” as well as through social media, advertising and other means.
Sheraton Hotels own the ST REGIS trade mark and hotel chain. The hotel was founded in 1904 by John Jacob Astor of the well-known Astor family and was acquired by Starwood Hotels which has expanded the brand to over 60 properties worldwide including San Francisco, Moscow, Abu Dhabi and Istanbul. The ST REGIS trade mark is registered in many jurisdictions around the world including the United States and the European Union. The earliest trade mark registration submitted in evidence which includes hotel services dates back to June 6, 1995 (United States trade mark registration no. 1897870). The ST REGIS trade mark is also extensively promoted through the website “www.starwoodhotels.com” which the domain name <stregis.com> redirect users as well as through social media, advertising and other means.
Westin Hotels own the WESTIN trade mark and hotel chain. The hotel was founded in 1930 by a small group of hotel owners and sold in 1994 to Starwood Hotels. The Complainant operates the chain all over the world including Cape Town, Bangkok, Frankfurt and Dallas. The WESTIN trade mark is registered in many jurisdictions around the world including the United States and the European Union. The earliest trade mark registration submitted in evidence which includes hotel services dates back to February 12, 1985 (United States trade mark registration No. 1320080). The WESTIN trade mark is also extensively promoted through the website “www.starwoodhotels.com” which the domain name <westin.com> redirect users as well as through social media, advertising and other means.
Starwood Hotels own the W HOTELS trade mark. The hotel chain was founded in 1998 and is owned by the Marriott. It has a chain of hotels worldwide including New York, London, Hong Kong and Dubai. The W HOTELS trade mark is registered in many jurisdictions around the world including the United States and the European Union. The earliest trade mark registration submitted in evidence which includes hotel services dates back to November 23, 1999 (United States trade mark registration no. 2294753). The W HOTELS trade mark is also extensively promoted through the website “www.starwoodhotels.com” which the domain name <whotels.com> redirect users as well as through social media, advertising and other means.
The BULGARI trade mark, DESIGN HOTELS trade mark, ST REGIS trade mark, WESTIN trade mark and W HOTELS trade mark will be referred to collectively as the Trade Marks.
The Respondent, an individual based in Shanghai, China, registered the Domain Names on May 18, 2016. The Domain Names are not connected to any active websites. In December 2017, the Complainants’ representative wrote a cease-and-desist letter to the Respondent. The Respondent was offered USD 500 to transfer the Domain Names to the Complainants. The Respondent refused and demanded the sum of USD 2,500 whereupon the Complainants commenced the proceeding.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names to Starwood Hotels.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issues
6.1 Consolidation of Complaints
The case before the Panel involves five individual brand owners who wish to bring a single consolidated complaint in relation to five domain names against a single registrant. The preliminary issue to be determined is whether the Complainants are entitled to bring a consolidated complaint against the Respondent.
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants in a single complaint in a single administrative proceeding. Paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”.
Section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
With regard to the first limb of the test, the Complainants are all related to each other as they are through their business structures connected to the Marriott. Although they all individually own the different Trade Marks, the corporate relationship of the different entities means that they have a common legal interest and therefore a common grievance against the Respondent who they allege has registered and used the Domain Names in bad faith. Further, the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. Common conduct has been found to exist in the following cases:
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) where there is a clear pattern of registration and use of all the disputed domain names.
In this case, the indications of the Respondent engaging in common conduct which has affected the Complainants legal rights in a similar fashion are as follows:
(i) the generic Top-Level Domain (“gTLD”) of all the Domain Names is “.vip”;
(ii) the Complainants are all affiliated to the Marriott:
(iii) the Domain Names comprise well-known hotel trade marks;
(iv) the Respondent was prepared to sell the Domain Names as a package deal for USD 2,500;
(v) The Domain Names are not linked to active websites.
The Panel is satisfied from the above that common conduct is found to exist.
The Panel now turns to the second limb of the test as to whether it would be equitable and procedurally efficient to permit the consolidation. In considering this, the Panel also is satisfied that this is the case for the following reasons:
(i) the Complainants’ substantive arguments made under each of the three elements of the Policy are common to the Domain Names;
(ii) All the Complainants are represented by a single authorized representative for the purpose of the proceedings.
Accordingly the Panel determines that this Complaint consisting of multiple Complainants should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a response and consequently there are no submissions to be taken into account on the procedural issues. In light of the above, the Complainants may be referred to collectively as the Complainant hereafter.
6.2 Word Limit
In view that there are five different Complainants and five different Trade Marks, the Panel agrees to suspend the word limit set out in paragraph 10(a) of the Supplemental Rules.
6.3 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Complainant’s representative has had significant correspondence with the Respondent in the English language which indicates that he is able to communicate in English;
- The Respondent has sought to extort money from the Complainant and, as such, should not be permitted to use the Complainant’s potential language translation costs as leverage in this dispute;
- Each of the Domain Names are clearly an intentional copy of the Complainant’s respective Trade Marks; and
- The Complainant operates their business in the English language.
In light of the foregoing, it is the Complainant’s position that the Respondent is capable of communicating in the English language. As such, it would be inequitable for the Respondent to now hide behind a language requirement, other than English, and requiring the Complainant to translate the Complaint into Chinese would be unduly unfair on the Complainant when the Domain Names are in English, and requiring such translation would not allow the proceedings to take place with due expedition. It would place undue burden on the Complainant and cause undue delay to the proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
7.2 Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Marks in their entirety plus the descriptive term “hotels” in the case of <bulgarihotels.vip> and <westinhotels.vip> and the geographical name “ San Francisco” in the case of <stregissanfrancisco.vip>. The addition of these terms does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Names. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD which in this case is “.vip”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not commonly known by any of the Domain Names or the Trade Marks nor does he operate a business or other organisations under the Trade Marks. Further he does not own any trade mark rights in the Trade Marks which comprise the Domain Names. The Domain Names are being passively held and therefore does not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register a well-known trade mark which he has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he registered the Domain Names. It is implausible that he was unaware of the Complainants when he registered the Domain Names. The Trade Marks are all well-known trade marks of hotels and they are all affiliated to a single organization. Further they were all registered on the same day.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The Respondent indicated that he was prepared to sell the Domain Names for USD 2,500. The registration of the Domain Names together with the attempt to sell the Domain Names for a sum far in excess of its out-of-pocket costs relating to the Domain Names, which is the case here, is bad faith under paragraph 4(b)(i).
Further, the Respondent is the owner of five domain names which comprise five different trade marks owned by five entities. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“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 you have engaged in a pattern of such conduct”). This is part of a flagrant pattern of conduct as the Respondent is engaged in a pattern of registration of a series of well-known trade marks and therefore his use of the Domain Names are in bad faith.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element as well.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <bulgarihotels.vip>, <designhotels.vip>, <stregissanfrancisco.vip>, <westinhotels.vip>, and <whotels.vip> be transferred to the Complainant.
Date: June 11, 2018