DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Billy Boy's

Claim Number:  FA0403000243496

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, Inc. (“Complainant”), represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC 55 South Commercial Street, Manchester, NH 03101.  Respondent is Billy Boy's  (“Respondent”), 4499 W. Hwy. 192, Kissimmee, FL 34746.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sheraton123.com>, registered with Tucows Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 2, 2004; the Forum received a hard copy of the Complaint on March 4, 2004.

On March 5, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <sheraton123.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 March 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 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@sheraton123.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 April 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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. Respondent’s <sheraton123.com> domain name is confusingly similar to Complainant’s SHERATON mark.

2. Respondent does not have any rights or legitimate interests in the <sheraton123.com> domain name.

3. Respondent registered and used the <sheraton123.com> domain name in bad faith.

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

FINDINGS

Complainant owns numerous registrations for the SHERATON mark with the United States Patent and Trademark Office (“USPTO”) including registration numbers 1,784,580 (registered on July 27, 1993 and used in connection with hotel, motel, motor inn, restaurant and lounge services), 679,027 (registered on May 19, 1959 and used in connection with motel or roadside hotel and restaurant services), and 1,884,365 (registered on Mar. 14, 1995 and used in connection with casino and gaming services).  Complainant has used the SHERATON mark in commerce since as early as 1958.

Respondent registered the disputed domain name on January 15, 2003.  Respondent is using the disputed domain name to advertise hotel accommodations.

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 draw such inferences it 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 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 and/or Confusingly Similar

Complainant has established rights in the SHERATON mark through its multiple registrations of the mark with the USPTO and continuous use of the mark in commerce since 1958. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (finding that the complainant established common law rights in a mark on account of long and substantial use of the mark.).

Domain names that contain numbers, which are added to third-party marks, have consistently been found to be confusingly similar to the marks. In this case, the disputed domain name contains Complainant’s SHERATON mark in its entirety.  Respondent has merely appended the consecutive numerals “123” to the SHERATON mark in the domain name. Thus, the disputed domain name is confusingly similar to Complainant’s mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The Panel infers from such a failure that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

The use of a domain name, which is confusingly similar to a third-party’s mark, to advertise goods or services that compete with the third-party’s mark, is not a bona fide offering of those goods or services. Here, the disputed domain name, which is confusingly similar to Complainant’s SHERATON mark, is being used to advertise services that directly compete with the services offered by Complainant under its mark. Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. LOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services).

Moreover, there is nothing in the record that indicates to the Panel that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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").

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

It has been inferred in previous cases that when a respondent uses a domain name, which is confusingly similar to a third-party’s mark, to advertise services that compete with a complainant’s business, the respondent has registered and used the disputed domain name primarily to disrupt the business of a competitor under Policy ¶ 4(b)(iii).  Here, Respondent registered a domain name, which is confusingly similar to Complainant’s SHERATON mark, to advertise hotel services that compete with Complainant’s hotel services offered under the SHERATON mark.  Thus, the Panel may infer that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Gorstew Ltd., Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from Respondent travel agency to Complainants, who operate Sandals hotels and resorts); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).

Advertising exists to attract and expose potential customers to a line of goods or services, which are offered for the purpose of earning a profit.  In this case, Respondent has used the disputed domain name to advertise hotel services.  Given these facts, Respondent has satisfied the first requirement of Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to its website. The remaining question is whether Respondent accomplished this end by creating a likelihood of confusion with the Complainant’s mark, pursuant to the second requirement under Policy ¶ 4(b)(iv). The facts speak for themselves.  Respondent registered a domain name that incorporates Complainant’s SHERATON mark in its entirety.  Respondent proceeded to use Complainant’s mark in the domain name to offer services that compete with Complainant’s services offered under the SHERATON mark.  These two facts, taken in conjunction, establish that Respondent created a likelihood of confusion with Complainant’s mark.  Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

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 <sheraton123.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  April 14, 2004

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