WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., Sheraton International, LLC, The Sheraton LLC and Sheraton International IP, LLC v. Roslan Kasim

Case No. D2015-0917

1. The Parties

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

The Respondent is Roslan Kasim of Langkawi, Kedah, Malaysia.

2. The Domain Name and Registrar

The disputed domain name is <stregislangkawi.com> (the “Disputed Domain Name”) and is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 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 June 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2015. The Respondent did not submit any response; however, he sent an email communication on June 4, 2015, to the Complainant and the Center stating that he would “give up” the Disputed Domain Name. The Center notified the Respondent’s default on June 24, 2015.

The Center appointed Anders Janson as the sole panelist in this matter on June 30, 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 a fully integrated owner, operator and franchisor of hotels and resorts operating under the following internationally renowned names: Sheraton, Four Points by Sheraton, Westin, W, Le Méridien, St. Regis, The Luxury Collection, Tribute Portfolio, Aloft and Element.

The Complainant has used the ST. REGIS mark in connection with hotel services and related goods and services for more than a century. Since 1904, the Complainant’s illustrious ST. REGIS hotels and resorts have been known worldwide as premiere luxury hotels that provide unprecedented standards of hospitality and elegance. Currently, the Complainant owns, manages or franchises over 30 ST. REGIS hotels worldwide, and has almost 20 ST. REGIS projects under construction or opening soon. The Complainant has obtained numerous registrations for the Complainant’s ST. REGIS mark throughout the world in connection with its hotel services and related goods and services, amongst others eight registrations in Malaysia.

The Disputed Domain Name is <stregislangkawi.com> and was registered with the Registrar on November 9, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant is one of the leading hotel and leisure companies in the world and is a fully integrated owner, operator and franchisor of hotels and resorts operating under the following internationally renowned names: Sheraton, Four Points by Sheraton, Westin, W, Le Méridien, St. Regis, The Luxury Collection, Tribute Portfolio, Aloft and Element.

The Complainant’s properties under construction include The St. Regis Langkawi in Langkawi, Malaysia. First announced in November 2013, this property is set to open later this year, on November 15, 2015.

Through the Complainant’s widespread, extensive use of the ST. REGIS mark in connection with hotel services and various related goods and services, as well as its expenditure of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the ST. REGIS mark has become associated with the Complainant and its services, and has attained considerable fame and widespread acclaim in the United States and China and throughout the world. As a result, the Complainant’s ST. REGIS mark represents enormous goodwill.

In addition to its extensive use of the Complainant’s Mark, the Complainant has obtained numerous registrations for this mark throughout the world in connection with its hotel services and related goods and services.

The Disputed Domain Name is confusingly similar to the Complainant’s ST. REGIS trademark. The generic Top-Level Domain (gTLD) “.com” cannot be taken into consideration when judging confusing similarity.

The addition of a geographical indicator such as “Langkawi” to the Complainant’s famous ST. REGIS trademark “add[s] to rather than diminish[es] the likelihood of confusion”.

The Respondent has no rights or legitimate interests in the Disputed Domain Name. Given that the Complainant’s adoption and extensive use of the ST. REGIS trademark predates the Respondent’s registration of the Domain Name, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 at paragraph 6(B). The Respondent cannot demonstrate or establish any such rights or legitimate interests. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s ST. REGIS 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, which is further evidence that Respondent has no rights or legitimate interests in it. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 at paragraph 6(b). Accordingly, “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name.” BellSouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013, at paragraph 6 (quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 at paragraph 7).

The Respondent registered the Disputed Domain Name the same day that the Prime Minister of Malaysia visited Langkawi to announce the Complainant’s plans to develop the St. Regis Langkawi. Even if the Complainant did not have priority based on its trademark registrations in Malaysia and elsewhere (which it does), prior UDRP panels have found that use of a trademark in a press release or other press coverage can grant common law protection based on use of the mark as of the date on which the press release is issued. See Reveille LLC v. Theodore Lazier / Registrant c/o thebiggestloser.com / Whois Privacy Service, WIPO Case No. D2011-0601. Here, the Respondent’s opportunistic registration of the Disputed Domain Name could not have been legitimate and his attempted sale and threatened use of the Disputed Domain Name demonstrate that his only reason for registering the Disputed Domain Name was for financial gain by selling it to the Complainant or to a third-party.

The Respondent registered and is using the Disputed Domain Name in bad faith.

The Complainant’s ST. REGIS Mark is among the most famous trademarks in the travel and leisure industry. See Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, WIPO Case No. D2014-1040, at paragraph 6.B. It is therefore inconceivable that the Respondent was unaware of the Complainant’s trademark when it registered the Disputed Domain Name. See Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 at paragraph 6(3) (finding bad faith where complainant’s international fame precludes innocent registration of a confusingly similar domain name). The mere fact that the Respondent registered the confusingly similar Disputed Domain Name without authorization is, in and of itself, evidence of its bad faith registration. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 at paragraph 6.

The Disputed Domain Name is not currently associated with an active website. “It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The case of Telstra Corporation Limited v. Nuclear Marshmallows, supra, one of the earliest UDRP decisions, established that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” at paragraph 7.9; seealso Liebherr-International AG v. Domain For Sale!, WIPO Case No. D2003-0824, at paragraph 6.C.; see also Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232.

It is clear from the Complainant’s communications with the Respondent that the Respondent registered the Disputed Domain Name intending to profit from its sale to the Complainant. The Respondent first requested payment of USD 3,000 in exchange for the Disputed Domain Name, far in excess of what the Respondent actually paid to register the Disputed Domain Name. There is a long line of decisions pursuant to the UDRP (starting with one of the first decisions - World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001) that hold that an offer to sell a domain name to a trademark owner far in excess of actual out-of-pocket expenses is evidence of bad faith. See Telefonaktiebolaget L.M Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732; Six Continents Hotels, Inc. v. Interbase, Inc., WIPO Case No. D2002-1045.

B. Respondent

The Respondent did not submit a Response to the Complaint. However, he replied to the Complainant’s cease and desist letter on May 20, 2015, by offering to sell the Disputed Domain Name to the Complainant for USD 3,000. The Respondent has then offered to transfer the Disputed Domain Name to the Complainant with his email communication of June 4, 2015.

6. Discussion and Findings

Given the case file, the Panel accepts as true the contentions of the Complainant. The Respondent has “apologise[d]” and expressed its willingness to transfer the Disputed Domain Name to the Complainant. The Complainant still must establish that it is entitled to a transfer of the Disputed Domain Name under the Policy.

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Disputed Domain Name is identical or confusingly similar to the 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

The Panel finds that the Complainant does have trademark rights to ST. REGIS with reference to the trademark registrations provided in the annexes to the Complaint.

The Disputed Domain Name is <stregislangkawi.com> and therefore contains the words “St Regis”, which correspond to the Complainant’s registered trademark. The fact that the Disputed Domain Name also contains the term “langkawi” does not diminish the risk of confusion as it only describes a geographical location. The Panel agrees with the Complainant that the likelihood of confusion is further exacerbated by the fact that the geographic descriptor used by the Respondent identifies a locale where the Complainant plans to open a hotel under the ST. REGIS mark. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In this case, the Complainant has offered convincing explanations and enough evidence of its exclusive right concerning the ST. REGIS trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not provided any evidence or allegations of its rights or legitimate interests in the Disputed Domain Name, but has replied and approved of transferring the Disputed Domain Name to the Complainant. The Panel is thereby satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant’s trademark is well-known, and, that it is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark. Therefore, the Panel finds that the Disputed Domain Name was registered in bad faith.

With respect to the use, the record on file demonstrates that the Respondent has registered the Disputed Domain Name to sell it to the Complainant or a third-party in order to gain financial profit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(i) of the Policy. There is no material in the record which displaces this presumption.

The Panel finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) 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 <stregislangkawi.com> be transferred to the Complainant Starwood Hotels & Resorts Worldwide, Inc.

Anders Janson
Sole Panelist
Date: July 14, 2015