DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Andrey Michailov

Claim Number:  FA0312000216801

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, USA 03101.  Respondent is Andrey Michailov (“Respondent”), Lesnaya 14-11, Moscow, Russia 21041.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sheratin.com>, registered with Enom, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 8, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.

On December 10, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <sheratin.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 2003 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@sheratin.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 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <sheratin.com> domain name is confusingly similar to Complainant’s SHERATON mark.

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

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

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

FINDINGS

Complainant, Starwood Hotels & Resorts Worldwide, Inc., is the owner of numerous registrations for the SHERATON mark (e.g. U.S. Reg. No. 1,784,580), used in connection with, inter alia, hotel, motel, motor inn, restaurant, casino and gaming services. Complainant’s SHERATON marks have been in use in commerce since as early as 1928. Complainant also operates a website at the <sheraton.com> domain name, which provides, among other things, hotel advertising and hotel reservation services.

Respondent, Andrey Michailov, registered the <sheratin.com> domain name on June 13, 2000. Respondent uses the disputed domain name to resolve to a webpage that displays an alert window stating “Congratulations!!! You’ve Won Virtual Reality Casino…Click on OK and get up to +$100 Bonus on your first deposit.” Clicking anywhere on this window brings the user to a travel discount website at the <vipfares.com> domain name, which provides travel and hotel reservation services similar to those offered at the <sheraton.com> domain name.

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 registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce.

Respondent’s <sheratin.com> domain name is confusingly similar to Complainant’s SHERATON mark. Respondent has merely replaced the letter “o” in Complainant’s mark with the letter “i.” The resultant domain name is phonetically and visually similar to Complainant’s mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Accordingly, the Panel finds that the <sheratin.com> domain name is confusingly similar to Complainant’s SHERATON mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is primarily using the disputed domain name to host what amounts to a deceptive click-through banner advertisement. However, Internet users who are ensnared by Respondent’s misspelling of Complainant’s SHERATON mark are not given “up to +$100 Bonus” on their first deposit as promised when they click on Respondent’s banner, but are instead redirected to the <vipfares.com> domain name. The services offered at this domain name compete with those offered by Complainant at the <sheraton.com> domain name. More importantly, it appears that Respondent is simply using the disputed domain name to receive referral fees from the <vipfares.com> domain name. Using Complainant’s mark for these purposes does not evidence rights or legitmate interests in the disputed domain name. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum March 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); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sheratin.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

With the disputed domain name, Respondent is attempting to capitalize on a likelihood of confusion with Complainant’s mark, duping Internet users into accessing the disputed domain name instead of Complainant’s website at the <sheraton.com> domain name. Misappropriating Complainant’s goodwill in this fashion so that Respondent can earn referral fees or commissions from one of Complainant’s competitors is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website, presumably receiving a portion of the advertising revenue from the website by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain in bad faith); 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).

The Panel thus finds that Respondent registered and used the <sheratin.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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

James A. Carmody, Esq., Panelist

Dated:  January 19, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/65.html