DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Shasliva Pty Ltd.

Claim Number: FA0312000216872

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, Inc. (“Complainant”) represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Phleger PLLC, 55 South Commercial Street, Manchester, NH 03101. Respondent is Shasliva Pty Ltd.  (“Respondent”), 290 Woongarra Scenic Drive; Barbara, Queensland 4670; Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lailai-sheraton.com> registered with Dotster.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 9, 2003; the Forum received a hard copy of the Complaint on December 15, 2003.

On December 12, 2003, Dotster confirmed by e-mail to the Forum that the domain name <lailai-sheraton.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 December 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2004 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@lailai-sheraton.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <lailai-sheraton.com>, is confusingly similar to Complainant’s SHERATON mark.

2. Respondent has no rights to or legitimate interests in the <lailai-sheraton.com> domain name.

3. Respondent registered and used the <lailai-sheraton.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS:

Complainant asserts that it has trademark rights in the SHERATON mark. Complainant produced evidence in this proceeding of a number of trademark registrations for the SHERATON mark, showing that an assignment of the trademark has been recorded, including Reg. No. 1,784,580 (registered on July 27, 1993) related to hotel, motel, motor inn, restaurant and lounge services.

Respondent registered the <lailai-sheraton.com> domain name May 23, 2003. Respondent is using the disputed domain name to redirect Internet users to a website at the <supersearch24.com> domain name, which purportedly links to various travel websites. The principal web page is titled “LAILAI-SHERATON.COM” and offers links to travel websites such as Las Vegas Hotel, Expedia, Orbitz and Travelocity.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant demonstrated in this proceeding its rights in the SHERATON mark through copies of trademark registration certificates with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Complainant contends that the domain name registered by Respondent, <lailai-sheraton.com>, is confusingly similar to Complainant’s SHERATON mark because the domain name appropriates Complainant’s entire mark and adds the term “lailai,” a commonly used name for Malolo Lailai Island in the Fiji Islands. The addition of the geographic term “lailai” to Complainant’s internationally known mark does not sufficiently distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i) because the mark remains the dominant element of the domain name. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent has not come forward to challenge the allegations outlined in the Complaint. Thus, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, Respondent failed to invoke any circumstances that could demonstrate rights to and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights to or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <lailai-sheraton.com> domain name to redirect Internet users to a website at the <supersearch24.com> domain name, which purportedly links to various travel websites. Respondent’s use of the disputed domain name to compete with Complainant’s own hotel advertising and reservation services fails to demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); see also Avery Dennison Corp. v. Ray Steele d/b/a Mercian Labels Ltd. and selfadhesivelabels.com, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

While the principal web page at the <lailai-sheraton.com> domain name is titled “LAILAI-SHERATON.COM,” there are no further references to either the Fiji Islands or Sheraton hotels. In fact, the remainder of the page simply offers links to a number of travel-related websites. The Panel concludes that Respondent is not commonly known by either LAILAI SHERATON or <lailai-sheraton.com>; therefore, Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s registration and use of the <lailai-sheraton.com> domain name to divert Internet traffic to a portal website that purportedly links to various travel websites demonstrates registration and use in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using a domain name that is confusingly similar to Complainant’s mark to compete with Complainant in the same area of business in which Complainant is engaged. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Moreover, the Panel presumes that Respondent had actual or constructive knowledge of Complainant’s rights in the SHERATON mark based on Respondent’s use of the domain name to redirect Internet users to travel-related websites. Registration and use of a domain name that is confusingly similar to a trademark, despite actual or constructive knowledge of the trademark holder’s rights, is conduct that supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  Accordingly, it is Ordered that the <lailai-sheraton.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

January 26, 2004.

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