Starwood Hotels & Resorts Worldwide, Inc. v. 613 181 BC Ltd. a/k/a Travel Domains
Claim Number: FA0207000117051
Complainant is Starwood Hotels & Resorts Worldwide, Inc., White Plains, NY, USA (“Complainant”) represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC. Respondent is 613 181 BC Ltd. a/k/a Travel Domains, Melbourne, AUSTRALIA (“Respondent”).
The domain names at issue are <fourpointshotels.com>, <fourpointhotels.com>, <fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>, <sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>, registered with Melbourne IT Limited, iHoldings.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 26, 2002; the Forum received a hard copy of the Complaint on July 30, 2002.
On August 5, 2002, Melbourne IT Limited, iHoldings.com, confirmed by e-mail to the Forum that the domain names <fourpointshotels.com>, <fourpointhotels.com>, <fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>, <sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com> are registered with Melbourne IT Limited, iHoldings.com, and that the Respondent is the current registrant of the names. Melbourne IT Limited, iHoldings.com, has verified that Respondent is bound by the Melbourne IT Limited, iHoldings.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 August 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 2002 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com by e-mail.
A timely Response was received and determined to be complete on August 26, 2002.
On September 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is Starwood Hotels & Resorts, Worldwide, Inc. located in White Plains, New York.
Complainant is owner of trademarks or service marks in the United States and elsewhere for the marks; SHERATON; FOUR POINTS; FOUR POINTS HOTELS SHERATON; STARWOOD; WESTIN; WESTIN HOTELS; WESTIN EXECUTIVE CLUB; and WESTIN HOTELS & RESORTS.
The domain names complained of contain Complainant’s trademarks in their entirety either with identical spellings or with phonetic equivalent spellings or common misspellings of said trademarks. The disputed domain names are identical in sound, appearance and meaning to Complainant’s trademarks and are likely to be confused with Complainant’s trademarks.
The websites accessed by the disputed domain names, provides links to hotel booking services, and others. Consumers may believe or be confused or deceived into thinking that Respondent’s website originates with or is in some way associated with or connected with, sponsored, authorized or endorsed by Complainant.
Respondent owns no rights in the FOUR POINTS, SHERATON, WESTIN or STARWOOD trademarks nor has a license to use the trademarks.
Respondent has never been known by the domain names and Respondent’s use does not constitute a fair use of the domain names.
Respondent’s use of the domain names is for the purpose of attracting internet users to Respondent’s website in order to promote and advertise Respondent’s products and services and to invite visitors to subscribe to a newsletter for which the visitor’s e-mail addresses for persons interested in hotel and travel information are collected. Respondent is trading on the goodwill of Complainant. Respondent’s web site creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Respondent is 613 181 BC LTD of Victoria, British Columbia, Canada.
Respondent registered the following domain names: <fourpointshotels.com>, <fourpointhotels.com>, <fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>, <sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>.
The domain names are being used to divert traffic to Complainant’s properties, not away from them. The various sites offered three links to the hotel properties in question, using either a direct link to the hotel site, a link through one of their approved resellers (<hotels.com>) or through their info posted at Expedia.com. These were not affiliate links or links for profit.
The sites were clearly labeled as part a service project that was to feature direct links to a hotel’s info.
Respondent has some legitimate interests in respect of the domain names.
There are no fees being collected nor affiliate programs employed. It is not a commercial venture.
Respondent’s use of the domains is both legitimate and fair, as the domains are sending traffic directly to the referred to property and its authorized agents.
The websites were acquired for a legitimate web-service project. The domains have been registered for several years without Complainant or contact from Complainant.
Respondent is entirely willing to turn the domains over to the Complainant for costs, however Respondent has never been given the opportunity.
C. Additional Submissions
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 first issue that must be proved is set out in Policy ¶ 4(a)(i). In Paragraph 4(a), Complainant is required, “in the administrative proceeding” to prove that each of the three elements are present. The first of the three elements is as follows: “your domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights”.
Before it is necessary to compare domain names to trademarks or service marks for the purpose of finding similarity, there must first be proof that Complainant has rights in some certain trademarks or service marks.
Complainant in this domain dispute proceeding is Starwood Hotels & Resorts Worldwide, Inc. The proof submitted by Complainant of its trademark or service mark rights is contained in Exhibit A of the Complaint. Exhibit A contains documents which purport to be the results of a search from the “TARR web server.” These documents show the ownership of the various trademarks or service marks upon which Complainant relies. All of the marks shown in Exhibit A of the Complaint are shown to be owned either by ITT Sheraton Corporation, Starwood Capital Group L.L.C., Westin Hotel Company, or Westin License Company. None of the trademark or service mark owners shown in the documents contained in Exhibit A contains the name of the Complainant, Starwood Hotels & Resorts Worldwide, Inc.
Complainant fails to show any relationship between itself and the registered owners of the marks. Such a failure to present proof of any relationship such as acquisition, merger or other contractual relationship could have resulted in dismissal of the Complaint except that Respondent admits that he is prepared to “turn the domains over to the Complainant”. The Panel takes this statement as an admission that Complainant has rights in the marks.
The first set of domain names to be examined is <fourpointhotels.com>, <fourpointshotels.com> and <fourpointhotel.com>. The only difference between the three is the additional of the letter “s” to some and not others. The marks relied upon by Complainant are FOUR POINTS and FOUR POINTS HOTELS SHERATON. Respondent’s domain names incorporate Complainant’s mark, FOUR POINTS, entirely. They incorporate the major portion of the mark, FOUR POINTS HOTELS SHERATON. Simple addition or deletion of a letter or a generic word does not make domain names and marks dissimilar. See Toyota v. Double Time Jazz a/k/a Jamey Aebersold, FA113316 (Nat. Arb. Forum July 10, 2002); see also Brown & Bigelow, Inc. v. Rodela, FA96466 (Nat. Arb. Forum Mar. 5, 2001). The top level of the domain name such as “com” does not affect the domain for the purpose of determining whether it is identical or confusingly similar. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). The three domain names are confusingly similar to Complainant’s marks
The next domain name to be examined is <starwoodhotel.com>. Complainant’s mark is STARWOOD. Respondent completely incorporates Complainant’s mark in the domain name. The addition of the generic word “hotel” does nothing to make the domain name and mark dissimilar particularly when the additional word “hotel” is a generic term that has an obvious relationship to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000).
Respondent’s <starwoodhotel.com> domain name is confusingly similar to the STARWOOD mark.
The next domain name is <westinhotelsandsuites.com>. Complainant’s marks are WESTIN, WESTIN HOTELS and WESTIN HOTELS & RESORTS. The domain name incorporates Complainant’s WESTIN and WESTIN HOTELS marks. The addition of the generic word “suites” does not make the domain name and marks dissimilar. See Space Imaging LLC v. Brownwell, ibid. The use of “and” to substitute for the ampersand makes no difference. See Wright & Lato Inc v. Epstein, D2000-0621 (WIPO Sept. 2, 2000). The domain name, <westinhotelsandsuites.com> is confusingly similar to Complainant’s marks.
The last set of domain names consist of <sherraton.com>, <sharaton.com>, and <sheratonhotelsandresorts.com>. They are to be compared with Complainant’s mark, SHERATON. Respondent has slightly misspelled the word, SHERATON, in two of the domain names. This circumstance has arisen in other domain name disputes. The issue was dealt with at length in the case of Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO June 19, 2001) where Respondent had slightly misspelled the word “world” in domain names as “worl”, “wold”, “wolrd” and “word”. The Panel rejected Respondent’s argument that such misspellings made the domain names and the mark dissimilar. This Panel adopts the same reasoning. Respondent’s <sherraton.com> and <sharaton.com> domain names are confusingly similar to the mark, SHERATON.
The remaining domain name is <sheratonhotelsandresorts.com>. The addition of the words “hotelsandresorts” constitutes the addition of generic words that have an obvious relationship to Complainant’s business. For that reason, the domain name and mark are confusingly similar. See Space Imaging LLC v. Brownwell, supra.
All of the domain names at issue in this proceeding are confusingly similar to Complainant’s marks; thus, Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant shows that it has never authorized or licensed Respondent to use Complainant’s registered marks. Neither Complainant nor Respondent contends that Respondent has any registered trademarks or service marks of any kind. There is no evidence in the pleadings to suggest that Respondent has ever been known by any of the domain names at issue in this proceeding. Complainant contends that it has exclusive rights to use its registered marks. See Am. Online v. Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000).
As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain names, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain names. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and legitimate interests in the domain names by any of the methods set out in Policy ¶ 4(c).
The first method is to show that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of gods or services.” Respondent admits that the domain names are being used to acquire Internet users seeking to reach Complainant. These Internet users are, Respondent alleges, being directed to Complainant’s properties. Respondent states its method as follows: “The various sites offered three links to the hotel properties in question, using either a direct link to the hotel site, a link through one of their approved resellers (<hotels.com>) or through their info posted at Expedia.com.” Respondent does not deny that he chose the domain names with full knowledge that the domain names contained the marks of Complainant. Respondent chose them for this precise reason. “A deliberately infringing use…should not be considered bona fide use. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” See Lava Trademark Holding Company. LLC v. Creative Labs, Inc., D2001-0994 (WIPO Nov. 2, 2001). Respondent cannot succeed under Policy ¶ 4(c)(i). See also Primedia Magazine Finance, Inc. v. Richard Manzo, D2001-1258 (WIPO Dec. 13, 2001).
Respondent makes no argument that he has ever been commonly known by the domain names incorporating Complainant’s marks. Respondent cannot prevail under Policy ¶ 4(c)(ii).
Respondent does contend that he “was preparing…to use the domains in question as a direct linking service to the hotel properties in question. This was not a commercial endeavor, as there were no fees being collected, nor affiliate programs employed.” The evidence in this case does not suggest that Respondent was making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service marks in issue. The only party who could produce evidence to substantiate such a contention is Respondent. No such evidence was offered. “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of a domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertion in this regard.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent has presented no evidence to support a finding under Policy ¶ 4(c)(iii).
Accordingly, Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The burden is upon Complainant to prove this issue. Complainant may do so by any of the means set out in Policy ¶ 4(b).
It is abundantly clear from the submissions that Respondent must be found to be in violation of Policy ¶ 4(b)(iv). The provision reads as follows: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Respondent was fully aware of Complainant’s marks when he registered the domain names. Respondent chose the domain names for the admitted purpose of obtaining Internet users looking to connect with Complainant’s hotel services and operations. Such Internet users are then sent, according to Respondent, to Complainant, or to <hotels.com> or to <expedia.com>. The website connected to <hotels.com> offers a number of hotels other than those owned by Complainant. Expedia.com offers a number of services in addition to any that might refer to Complainant. Complainant is injured by these referrals imposed upon Internet users by Respondent. Respondent is not permitted to operate such a “mouse trap” for Internet users. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, supra. Such operations are evidence of bad faith.
Complainant failed to allege and offered no evidence as to the fame of the marks under which it does business. However, the Panel takes notice that Complainant’s marks are famous and well known through out the United States. In situations where Respondent knows of Complainant’s famous mark at the time of registration of a domain name infringing upon the mark, it is clear evidence of bad faith registration and use. See Samsonite Corp. v. Colony Holding, FA94313 (Nat. Arb. Forum Apr. 17, 2000); Northwest Airlines, Inc. v. Koch, FA95688 (Nat. Arb. Forum Oct. 27, 2000); Singapore Airlines Ltd. v. P & P Servicios de Communicacion S. L., D2000-0643 (WIPO Aug. 29, 2000); SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, FA94956 (Nat. Arb. Forum July 11, 2000); Marriott Int’l, Inc. v. John Marriot, FA94737 (Nat. Arb. Forum June 15, 2000).
Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
The decision of the Panel is that the domain names, <fourpointshotels.com>, <fourpointhotels.com>, <fourpointhotel.com>, <starwoodhotel.com>, <westinhotelsandsuites.com>, <sherraton.com>, <sharaton.com> and <sheratonhotelsandresorts.com>, now registered to Respondent, 613 181 BC Ltd. a/k/a Travel Domains, be TRANSFERRED to Complainant, Starwood Hotels and Resorts Worldwide, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 26, 2002
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