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Generic Top Level Domain Name (gTLD) Decisions |
Starwood Hotels & Resorts Worldwide,
Inc. v. 613 181 BC Ltd. a/k/a Travel Domains
Claim Number: FA0207000117051
Complainant is
Starwood Hotels & Resorts Worldwide, Inc., White Plains, NY, USA (“Complainant”)
represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC. Respondent is 613 181 BC Ltd.
a/k/a Travel Domains, Melbourne, AUSTRALIA (“Respondent”).
The domain
names at issue are <fourpointshotels.com>, <fourpointhotels.com>,
<fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>,
<sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>,
registered with Melbourne IT Limited, iHoldings.com.
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge has no known conflict in
serving as Panelist in this proceeding.
Tyrus R.
Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 26, 2002; the Forum received
a hard copy of the
Complaint on July 30, 2002.
On August 5,
2002, Melbourne IT Limited, iHoldings.com, confirmed by e-mail to the Forum
that the domain names <fourpointshotels.com>, <fourpointhotels.com>,
<fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>,
<sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>
are registered with Melbourne IT Limited, iHoldings.com, and that the
Respondent is the current registrant of the names. Melbourne IT Limited, iHoldings.com, has verified that Respondent
is bound by the Melbourne IT Limited, iHoldings.com, registration
agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the
“Policy”).
On August 7,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting
a deadline of August 27, 2002 by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail,
post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@fourpointshotels.com, postmaster@fourpointhotels.com,
postmaster@fourpointhotel.com, postmaster@starwoodhotel.com,
postmaster@westinhotelsandsuites.com, postmaster@sherraton.com,
postmaster@sharaton.com, postmaster@sheratonhotelsandresorts.com
by e-mail.
A timely
Response was received and determined to be complete on August 26, 2002.
On September
26, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is
Starwood Hotels & Resorts, Worldwide, Inc. located in White Plains, New
York.
Complainant is
owner of trademarks or service marks in the United States and elsewhere for the
marks; SHERATON; FOUR POINTS; FOUR
POINTS HOTELS SHERATON; STARWOOD; WESTIN;
WESTIN HOTELS; WESTIN EXECUTIVE CLUB; and WESTIN HOTELS & RESORTS.
The domain
names complained of contain Complainant’s trademarks in their entirety either
with identical spellings or with phonetic
equivalent spellings or common
misspellings of said trademarks. The
disputed domain names are identical in sound, appearance and meaning to Complainant’s
trademarks and are likely to be confused
with Complainant’s trademarks.
The websites
accessed by the disputed domain names, provides links to hotel booking
services, and others. Consumers may
believe or be confused or deceived into thinking that Respondent’s website
originates with or is in some way associated
with or connected with, sponsored,
authorized or endorsed by Complainant.
Respondent
owns no rights in the FOUR POINTS, SHERATON, WESTIN or STARWOOD trademarks nor
has a license to use the trademarks.
Respondent has
never been known by the domain names and Respondent’s use does not constitute a
fair use of the domain names.
Respondent’s
use of the domain names is for the purpose of attracting internet users to
Respondent’s website in order to promote and
advertise Respondent’s products
and services and to invite visitors to subscribe to a newsletter for which the
visitor’s e-mail addresses
for persons interested in hotel and travel
information are collected. Respondent
is trading on the goodwill of Complainant.
Respondent’s web site creates a likelihood of confusion with the
Complainant’s marks as to the source, sponsorship, affiliation or
endorsement
of Respondent’s website.
B. Respondent
Respondent is
613 181 BC LTD of Victoria, British Columbia, Canada.
Respondent
registered the following domain names: <fourpointshotels.com>,
<fourpointhotels.com>, <fourpointhotel.com>, <starwoodhotel.com>,
<westinhotelsandsuites.com>, <sherraton.com>, <sharaton.com>
and <sheratonhotelsandresorts.com>.
The domain
names are being used to divert traffic to Complainant’s properties, not away
from them. The various sites offered
three links to the hotel properties in question, using either a direct link to
the hotel site, a link through
one of their approved resellers
(<hotels.com>) or through their info posted at Expedia.com. These were not affiliate links or links for
profit.
The sites were
clearly labeled as part a service project that was to feature direct links to a
hotel’s info.
Respondent has
some legitimate interests in respect of the domain names.
There are no
fees being collected nor affiliate programs employed. It is not a commercial venture.
Respondent’s
use of the domains is both legitimate and fair, as the domains are sending traffic
directly to the referred to property
and its authorized agents.
The websites
were acquired for a legitimate web-service project. The domains have been registered for several years without
Complainant or contact from Complainant.
Respondent is
entirely willing to turn the domains over to the Complainant for costs, however
Respondent has never been given the
opportunity.
C. Additional
Submissions
None
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “decide a complaint
on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of
law that it deems applicable.”
Paragraph 4(a)
of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that
a domain name should be cancelled or
transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
The first
issue that must be proved is set out in Policy ¶ 4(a)(i). In Paragraph 4(a), Complainant is required,
“in the administrative proceeding” to prove that each of the three elements are
present. The first of the three
elements is as follows: “your domain
name is identical or confusingly similar to a trademark or service mark in
which complainant has rights”.
Before it is
necessary to compare domain names to trademarks or service marks for the
purpose of finding similarity, there must first
be proof that Complainant has
rights in some certain trademarks or service marks.
Complainant in
this domain dispute proceeding is Starwood Hotels & Resorts Worldwide,
Inc. The proof submitted by Complainant
of its trademark or service mark rights is contained in Exhibit A of the
Complaint. Exhibit A contains documents
which purport to be the results of a search from the “TARR web server.” These documents show the ownership of the
various trademarks or service marks upon which Complainant relies. All of the marks shown in Exhibit A of the
Complaint are shown to be owned either by ITT Sheraton Corporation, Starwood
Capital Group
L.L.C., Westin Hotel Company, or Westin License Company. None of the trademark or service mark
owners shown in the documents contained in Exhibit A contains the name of the
Complainant, Starwood
Hotels & Resorts Worldwide, Inc.
Complainant
fails to show any relationship between itself and the registered owners of the
marks. Such a failure to present proof
of any relationship such as acquisition, merger or other contractual relationship
could have resulted
in dismissal of the Complaint except that Respondent admits
that he is prepared to “turn the domains over to the Complainant”. The Panel takes this statement as an
admission that Complainant has rights in the marks.
The first set
of domain names to be examined is <fourpointhotels.com>, <fourpointshotels.com>
and <fourpointhotel.com>.
The only difference between the three is the additional of the letter
“s” to some and not others. The marks
relied upon by Complainant are FOUR POINTS and FOUR POINTS HOTELS
SHERATON. Respondent’s domain names
incorporate Complainant’s mark, FOUR POINTS, entirely. They incorporate the major portion of the
mark, FOUR POINTS HOTELS SHERATON.
Simple addition or deletion of a letter or a generic word does not make
domain names and marks dissimilar. See Toyota v. Double Time Jazz a/k/a
Jamey Aebersold, FA113316 (Nat. Arb. Forum July 10, 2002); see also
Brown & Bigelow, Inc. v. Rodela, FA96466 (Nat. Arb. Forum Mar. 5,
2001). The top level of the domain name
such as “com” does not affect the domain for the purpose of determining whether
it is identical or
confusingly similar.
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000). The three domain names are confusingly
similar to Complainant’s marks
The next
domain name to be examined is <starwoodhotel.com>. Complainant’s mark is STARWOOD. Respondent completely incorporates
Complainant’s mark in the domain name.
The addition of the generic word “hotel” does nothing to make the domain
name and mark dissimilar particularly when the additional
word “hotel” is a
generic term that has an obvious relationship to Complainant’s business. See
Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000).
Respondent’s <starwoodhotel.com>
domain name is confusingly similar to the STARWOOD mark.
The next
domain name is <westinhotelsandsuites.com>. Complainant’s marks are WESTIN, WESTIN
HOTELS and WESTIN HOTELS & RESORTS.
The domain name incorporates Complainant’s WESTIN and WESTIN HOTELS
marks. The addition of the generic word
“suites” does not make the domain name and marks dissimilar. See Space Imaging LLC v. Brownwell, ibid.
The use of “and” to
substitute for the ampersand makes no difference. See Wright & Lato Inc
v. Epstein, D2000-0621 (WIPO Sept. 2, 2000). The domain name, <westinhotelsandsuites.com> is
confusingly similar to Complainant’s marks.
The last set
of domain names consist of <sherraton.com>, <sharaton.com>,
and <sheratonhotelsandresorts.com>. They are to be compared with Complainant’s mark, SHERATON. Respondent has slightly misspelled the word,
SHERATON, in two of the domain names.
This circumstance has arisen in other domain name disputes. The issue was dealt with at length in the
case of Disney Enterprises, Inc. v.
John Zuccarini, Cupcake City and
Cupcake Patrol, D2001-0489 (WIPO June 19, 2001) where Respondent had
slightly misspelled the word “world” in domain names as “worl”, “wold”, “wolrd”
and “word”. The Panel rejected Respondent’s
argument that such misspellings made the domain names and the mark
dissimilar. This Panel adopts the same
reasoning. Respondent’s <sherraton.com>
and <sharaton.com> domain names are confusingly similar to the
mark, SHERATON.
The remaining
domain name is <sheratonhotelsandresorts.com>. The addition of the words “hotelsandresorts”
constitutes the addition of generic words that have an obvious relationship to
Complainant’s
business. For that
reason, the domain name and mark are confusingly similar. See Space Imaging
LLC v. Brownwell, supra.
All of the
domain names at issue in this proceeding are confusingly similar to
Complainant’s marks; thus, Complainant has satisfied
the requirements of Policy
¶ 4(a)(i).
Complainant
shows that it has never authorized or licensed Respondent to use Complainant’s
registered marks. Neither Complainant
nor Respondent contends that Respondent has any registered trademarks or
service marks of any kind. There is no
evidence in the pleadings to suggest that Respondent has ever been known by any
of the domain names at issue in this proceeding. Complainant contends that it has exclusive rights to use its
registered marks. See Am. Online v.
Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000).
As a result of
Complainant’s showing, and Respondent’s apparent lack of rights and legitimate
interests in the domain names, the burden
must shift to Respondent to
demonstrate Respondent’s rights and legitimate interests in the domain names. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000).
Respondent may
demonstrate its rights and legitimate interests in the domain names by any of
the methods set out in Policy ¶ 4(c).
The first
method is to show that “before any notice to you of the dispute, your 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 gods or services.” Respondent admits that the domain names are
being used to acquire Internet users seeking to reach Complainant. These Internet users are, Respondent
alleges, being directed to Complainant’s properties. Respondent states its
method as follows:
“The various sites offered three links to the hotel
properties in question, using either a direct link to the hotel site, a link
through one of their approved resellers (<hotels.com>) or through their
info posted at Expedia.com.” Respondent
does not deny that he chose the domain names with full knowledge that the
domain names contained the marks of Complainant. Respondent chose them for this precise reason. “A deliberately infringing use…should not be
considered bona fide use. To conclude
otherwise would mean that a Respondent could rely on intentional infringement
to demonstrate legitimate interest, an interpretation
that is obviously
contrary to the intent of the Policy.” See Lava Trademark Holding Company.
LLC v. Creative Labs, Inc., D2001-0994 (WIPO Nov. 2, 2001). Respondent cannot succeed under Policy ¶
4(c)(i). See also Primedia Magazine
Finance, Inc. v. Richard Manzo, D2001-1258 (WIPO Dec. 13, 2001).
Respondent
makes no argument that he has ever been commonly known by the domain names
incorporating Complainant’s marks.
Respondent cannot prevail under Policy ¶ 4(c)(ii).
Respondent
does contend that he “was preparing…to use the domains in question as a direct
linking service to the hotel properties
in question. This was not a commercial endeavor, as there were no fees being
collected, nor affiliate programs employed.”
The evidence in this case does not suggest that Respondent was making a
legitimate noncommercial or fair use of the domain names,
without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service marks in issue. The only
party who could produce evidence to
substantiate such a contention is Respondent.
No such evidence was offered.
“Where a complainant has asserted that the respondent has no rights or
legitimate interests in respect of a domain name, it is incumbent
upon the
respondent to come forward with concrete evidence rebutting this
assertion. This information is uniquely
within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is
tantamount to admitting the truth of complainant’s assertion in this
regard.” See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent has
presented no evidence to support a finding under Policy ¶ 4(c)(iii).
Accordingly, Complainant
has satisfied the requirements of Policy ¶ 4(a)(ii).
The burden is
upon Complainant to prove this issue.
Complainant may do so by any of the means set out in Policy ¶ 4(b).
It is abundantly
clear from the submissions that Respondent must be found to be in violation of
Policy ¶ 4(b)(iv). The provision reads
as follows: “by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet
users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark as
to source,
sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.”
Respondent was
fully aware of Complainant’s marks when he registered the domain names. Respondent chose the domain names for the
admitted purpose of obtaining Internet users looking to connect with
Complainant’s hotel
services and operations.
Such Internet users are then sent, according to Respondent, to
Complainant, or to <hotels.com> or to <expedia.com>. The
website
connected to <hotels.com> offers a number of hotels other than those
owned by Complainant. Expedia.com
offers a number of services in addition to any that might refer to
Complainant. Complainant is injured by
these referrals imposed upon Internet users by Respondent. Respondent is not
permitted to operate such a
“mouse trap” for Internet users. See Disney
Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, supra.
Such operations are evidence of bad faith.
Complainant
failed to allege and offered no evidence as to the fame of the marks under
which it does business. However, the
Panel takes notice that Complainant’s marks are famous and well known through
out the United States. In situations
where Respondent knows of Complainant’s famous mark at the time of registration
of a domain name infringing upon the
mark, it is clear evidence of bad faith
registration and use. See Samsonite Corp. v. Colony Holding, FA94313
(Nat. Arb. Forum Apr. 17, 2000); Northwest Airlines, Inc. v. Koch, FA95688
(Nat. Arb. Forum Oct. 27, 2000); Singapore Airlines Ltd. v. P & P
Servicios de Communicacion S. L., D2000-0643 (WIPO Aug. 29, 2000); SportSoft
Golf, Inc. v. Hale Irwin’s Golfers’ Passport, FA94956 (Nat. Arb. Forum July
11, 2000); Marriott Int’l, Inc. v.
John Marriot, FA94737 (Nat. Arb. Forum June 15, 2000).
Complainant
has satisfied the requirements of Policy ¶ 4(a)(iii).
The decision
of the Panel is that the domain names, <fourpointshotels.com>, <fourpointhotels.com>,
<fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>,
<sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>,
now registered to Respondent, 613 181 BC Ltd. a/k/a Travel Domains, be TRANSFERRED
to Complainant, Starwood Hotels and Resorts Worldwide, Inc.
Tyrus
R. Atkinson, Jr., Panelist
Dated: September 26, 2002
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