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Generic Top Level Domain Name (gTLD) Decisions |
Starwood Hotels & Resorts Worldwide,
Inc. v. Hotel Partners
Claim
Number: FA0403000248943
Complainant is Starwood Hotels & Resorts Worldwide,
Inc. (“Complainant”), represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Phleger
PLLC, 55 S. Commercial
Street, Manchester, NH 03101.
Respondent is Hotel Partners (“Respondent”), 2509 E. Broad St., Richmond,
VA 23223.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sheratonfourpointshotel.com>, registered
with Bulkregister, Llc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 23, 2004; the
Forum received a hard copy of the
Complaint on March 31, 2004.
On
March 24, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <sheratonfourpointshotel.com> is registered with Bulkregister,
Llc. and that Respondent is the current registrant of the name. Bulkregister,
Llc. has verified
that Respondent is bound by the Bulkregister, Llc. 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 31, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 20, 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@sheratonfourpointshotel.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 29, 2004 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sheratonfourpointshotel.com>
domain name is confusingly similar to Complainant’s SHERATON and FOUR POINTS
marks.
2. Respondent does not have any rights or
legitimate interests in the <sheratonfourpointshotel.com> domain
name.
3. Respondent registered and used the <sheratonfourpointshotel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Starwood Hotels & Resorts Worldwide, Inc., is in the hotel, motel and
restaurant business.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the SHERATON mark (Reg.
No. 1,784,580, issued July 27,
1993; Reg. No. 679,027, issued May 19, 1959; Reg. No. 1,884,365, issued March
14 1995 and Reg. No.
954,454, issued March 6, 1973) and the FOUR POINTS mark
(Reg. No. 2,003,614, issued September 24, 1996 and Reg. No. 2,014,840, issued
November 12, 1996). Complainant has used the SHERATON and FOUR POINTS marks
continuously and extensively in connection with its hotel,
motel, and
restaurant services since 1928 and 1995, respectively. Thus, Complainant’s
marks are well-known to the public.
Complainant owns
registrations for the <sheraton.com>, <fourpoints.com>,
<fourpointshotels.com>, <sheratonfourpoints.com>
and
<sheratonfourpointshotels.com> domain names, where consumers can access
Complainant’s services online.
Respondent
registered the disputed domain name on March 15, 2002 and is using the domain
name to offer and advertise hotel reservation
and related services
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.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <sheratonfourpointshotel.com> domain name to redirect
Internet users to a website that advertises and offers hotel reservation and
related services, services identical
to those offered by Complainant.
Respondent’s use of a domain name confusingly similar to Complainant’s SHERATON
and FOUR POINTS
marks to redirect Internet users interested in Complainant’s
products to a commercial website that offers identical hotel reservation
and
related services is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), nor
a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide
offering of services in a respondent’s
operation of a website using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”); see also Am. Online
Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000)
(finding that Respondent’s operation of
a website offering essentially the same services as Complainant and
displaying Complainant’s mark was insufficient for a finding of
bona fide
offering of goods or services); see also Avery Dennison Corp. v. Steele
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).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the
<sheratonfourpointshotel.com>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent’s domain name
diverts Internet users wishing to search under
Complainant’s well-known mark to
Respondent’s commercial website through the use of a domain name confusingly
similar to Complainant’s
mark. Respondent’s practice of diversion, motivated by
commercial gain, through the use of a confusingly similar domain name evidences
bad faith registration and use pursuant to 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 America 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 chat
services via his website as Complainant);
see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where
similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the
domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial
gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
Furthermore,
Respondent registered the domain name for the primary purpose of disrupting
Complainant’s business by redirecting Internet
traffic intended for Complainant
to Respondent’s website that directly competed with Complainant. Registration
of a domain name for
the primary purpose of disrupting the business of a
competitor is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and
Complainant were in the same line of business in the same market
area); see also Hewlett Packard
Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that
Respondent registered and used the domain name primarily for the purpose of
disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical
to Complainant’s
services under the OPENMAIL mark); see also Clear Channel Communications,
Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and
registration where Respondent and Complainant both operated in the highly
regulated field of
radio broadcasting and Respondent registered a domain name
incorporating Complainant’s call letters).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sheratonfourpointshotel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 13, 2004
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