DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Francios Trackette a/k/a Acide Image Voyage

Claim Number:  FA0405000274092

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 Francios Trackette a/k/a Acide Image Voyage (“Respondent”), 118 rue legendre, 92300 Levallois-Perret, Frankreich, France.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <starwoodhotelsinc.com>, registered with Domainstobeseen.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 20, 2004; the Forum received a hard copy of the Complaint on May 24, 2004.

On May 20, 2004, Domainstobeseen.com confirmed by e-mail to the Forum that the domain name <starwoodhotelsinc.com> is registered with Domainstobeseen.com and that Respondent is the current registrant of the name. Domainstobeseen.com has verified that Respondent is bound by the Domainstobeseen.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 May 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 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@starwoodhotelsinc.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 june 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <starwoodhotelsinc.com> domain name is confusingly similar to Complainant’s STARWOOD mark.

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

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

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

FINDINGS

Complainant, Starwood Hotels & Resorts Worldwide, Inc., is one of the world’s largest hotel and leisure companies.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the STARWOOD and related marks (Reg. No. 2,181,927 issued August 18, 1998, Reg. No. 2,119,638 issued December 9, 1997, Reg. No. 2,294,956 issued November 30, 1999, Reg. No. 2,313,334 issued February 1, 2000, Reg. No. 2,256,510 issued June 29, 1999, Reg. No. 2,525,771 issued January 1, 2002, Reg. No. 2,735,078 issued July 8, 2003, and Reg. No. 2,772,031 issued October 7, 2003).  Complainant also is the owner of applications and registrations for other STARWOOD and related marks both in the United States and in other countries.

Complainant, one of the world's largest hotel and leisure companies, has used the STARWOOD mark for the last twenty-four years. Complainant’s brand names include St. Regis, The Luxury Collection, Sheraton, Westin, W, Four Points by Sheraton and Starwood. Through these brands, Complainant is well represented in most major markets around the world. Complainant’s operations are grouped into two business segments, hotels and vacation ownership operations.  Currently, Complainant’s hotel business manages and franchises 748 hotels with approximately 227,000 rooms in 79 countries.  Also, Complainant has 18 vacation ownership resorts in the United States and the Bahamas. 

Complainant owns registrations for the <starwood.com> and <starwoodhotels.com> domain names, where consumers can access Complainant’s services online.

Respondent registered the disputed domain name on November 26, 2003.  Respondent is using the domain name to link Internet users to a website with the content title, “Discount Hotel Room Booking and Car Rental.”  The website offers and advertises hotel reservations and related services.

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 that is has rights in the STARWOOD and related marks through registrations with the United States Patent and Trademark Office and through continued use of its marks in commerce over the last twenty-four years.  See 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction.); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Respondent’s domain name is confusingly similar to Complainant’s STARWOOD mark because the domain name incorporates a generic or descriptive term “hotels” and the abbreviation “inc.”  The addition of the generic or descriptive term “hotels” and the abbreviation “inc” do not distinguish Respondent’s domain name from Complainant’s mark.  Thus, the Panel finds that Respondent’s minor alterations to Complainant’s mark are not sufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

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

Rights or Legitimate Interests

Respondent has not submitted a Response in this proceeding.  Thus, the Panel chooses to view the Complaint in the light most favorable to Complainant and accepts as true all assertions made by Complainant.  Accordingly, the Panel presumes that Respondent lacks rights and legitimate interests in the <starwoodhotelsinc.com> domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

In the WHOIS contact information, Respondent lists its name and its administrative contact as “Acide Image Voyage.”  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was ever commonly known by the disputed domain name.  Moreover, Complainant’s first use of the STARWOOD marks in commerce and its registration of the marks predate Respondent’s registration of the domain name.  Furthermore, Respondent has not been authorized by Complainant to use the STARWOOD mark in its domain name.  Thus, the Panel concludes that Respondent has not been commonly known by the domain name pursuant 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also 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).

Respondent’s use of the infringing <starwoodhotelsinc.com> domain name to offer and advertise hotel reservations and related services, which are similar to services that Complainant offers at its website, is not 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).  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).  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 Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); 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).

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using Complainant’s mark in a domain name to attract Internet users to its competing website.  Since both Respondent and Complainant operate in the same line of business and market their similar products via the Internet, Respondent knew or should have known of the Complainant’s business under its registered mark.  Based on the foregoing, the Panel presumes that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

It is likely that Internet users will be confused by the services offered at Respondent’s website since the services are similar to services offered by Complainant, and the domain name hosting Respondent’s website wholly incorporates Complainant’s mark.  Thus, the Panel finds that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale 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).

The Panel finds that Complainant satisfied 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 <starwoodhotelsinc.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  July 2, 2004

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