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Generic Top Level Domain Name (gTLD) Decisions |
Starwood Hotels & Resorts Worldwide,
Inc. v. SRW Hotels Worldwide
Claim
Number: FA0311000214416
Complainant is Starwood Hotels & Resorts Worldwide,
Inc., White Plains, NY (“Complainant”) represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC, 55 South Commercial Street,
Manchester, NH 03101. Respondent
is SRW Hotels Worldwide, 264 St.
Sliken, Suite 7823, London 5D2 R9P, United Kingdom (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <srwhotels.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 24, 2003; the
Forum received a hard copy of the
Complaint on November 26, 2003.
On
November 25, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <srwhotels.com> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos
Media Group, Inc.
d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.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
December 1, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 22, 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@srwhotels.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
December 30, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr.,
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 <srwhotels.com>
domain name is confusingly similar to Complainant’s W HOTELS and
STARWOOD-related marks.
2. Respondent does not have any rights or
legitimate interests in the <srwhotels.com> domain name.
3. Respondent registered and used the <srwhotels.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
successfully registered its STARWOOD LODGING TRUST mark with United States
Patent and Trademark Office (“USPTO”) on December
9, 1997, in connection with
its real estate brokerage services, having begun using the mark in 1969 (Reg.
No. 2119638). Complainant successfully
registered its STARWOOD mark with USPTO on August 18, 1998, in connection with
its real estate investment
services, and first used the mark in 1991 (Reg. No.
2181927). Complainant successfully
registered its W HOTELS mark with the USPTO on November 23, 1999, in connection
with its hotel and restaurant
services, and first used the mark in 1998 (Reg.
No. 2294753). Complainant has operated
a website located at <starwood.com>, which has provided hotel reservation
services, among other offerings.
Respondent
registered the disputed domain name, <srwhotels.com>, on
August 11, 2001. Complainant asserts
that Respondent uses the name to automatically link Internet users to another
website located at <whotels.srwhotels.com>,
which provides hotel
reservation services. The Panel
presumes this allegation is true, absent evidence to the contrary. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Additionally,
Respondent has copied content from Complainant’s previous website, evidencing a
strong likelihood that Respondent has
attempted to pass itself off as
Complainant.
Respondent has
not been authorized to use Complainant’s marks.
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.
Complainant has
established rights in its W HOTELS and STARWOOD-related marks through
registration and use, as early as 1969.
The disputed
domain name, <srwhotels.com>, contains Complainant’s W HOTELS mark in its entirety. The name merely adds “sr” to the front of
Complainant’s W HOTELS mark. It is within
the realm of reasonableness to assume “sr” or “srw” is an abbreviation for
STARWOOD, a registered mark in competition
with Respondent’s hotel reservation
services. An abbreviation added to a
registered mark is sufficient, standing alone, to constitute a confusingly
similarity. But when an abbreviation is
connected to a mark operating in the same industry, mainly the hotel
reservation business, the confusing
similarity increases substantially. The additional fact that Respondent has
copied content from Complainant’s previous website, adds supportive weight to
Complainant’s
assertion that the disputed domain name is an abbreviated version
of Complainant’s mark. See Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding
that ‘modprops’ is shorthand for “Modern Props,” creating a substantial
similarity
of meaning.); see also Microsoft
Corp. v. Montrose Corp., D2000-1568
(WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com>
confusingly similar to the MICROSOFT mark, even
though it is abbreviated); see
also Slep-Tone Entm't Corp. v. Sounds
Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000)
(stating, “likelihood of confusion is further increased by the fact that the
Respondent
and [Complainant] operate within the same industry”); see also
Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb.
Forum Nov. 14, 2002) (finding that any distinctiveness resulting from the
addition of a word to Complainant’s
mark in a domain name is less significant
because Respondent and Complainant operate in the same industry).
Therefore,
Complainant prevails under Policy ¶ 4(a)(i).
Respondent’s
failure to respond to the Complaint can be regarded as an implicit admission
that it lacks rights 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii).
Though Respondent’s WHOIS information lists Respondent as “SRW Hotels
Worldwide,” part of which constitutes the disputed domain name,
there is no
evidence before the Panel that Respondent was actually commonly known by that
name. See 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 Yoga Works, Inc. v. Arpita d/b/a Shanti
Yoga Works, FA 155461
(Nat. Arb. Forum June 17, 2003) (finding
that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to
its registration of the disputed domain
name”); see also Web House USA, Inc. v. eDollarShop Hostmaster
a/k/a eDollarShop.com, FA 155180 (Nat.
Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by”
the <edollarshop.com> domain name, despite naming itself
“eDollarShop,” because Respondent’s website was almost identical to
Complainant’s
“first in use” website and infringed on Complainant’s marks).
Respondent also
has not used 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), because it provides
competing hotel reservation
services with Complainant, and is capitalizing on
Complainant’s mark in order to attract Internet users to its business. See Avery Dennison Corp. v. Steele d/b/a
Mercian Labels Ltd. & 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);
see also Computerized Sec. Sys., Inc. d/b/a SAFLOK 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 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).
Therefore,
Complainant prevails under Policy ¶ 4(a)(ii).
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) based on the following facts:
Respondent operates in competition with Complainant’s hotel services;
Respondent’s domain name incorporates Complainant’s entire W
HOTEL mark and
includes Complainant’s abbreviated STARWOOD mark; Respondent automatically
links Internet users from <srwhotels.com> to
<whotels.srwhotels.com>, evidencing a strong likelihood that the former
name is being used to attract Internet users from
Complainant’s competing
business. Taken as a whole, these facts
lead to the inference that Respondent has registered the domain name for the
purpose of disrupting a
competitor. See
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); see also 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 EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant's marks
suggests that Respondent,
Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business).
As stated above,
Respondent automatically links Internet users from <srwhotels.com>
to <whotels.srwhotels.com>, evidencing a strong likelihood that the
former name is being used to attract Internet users from
Complainant’s
competing business, for commercial gain.
Such use is evidence that Respondent registered the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iv).
See 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,
intentionally attempting to attract, for commercial gain,
Internet users to its
website by creating a likelihood of confusion with Complainant’s marks); 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).
Therefore,
Complainant prevails under Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <srwhotels.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
January 12, 3004
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