DECISION

 

Starwood Hotels & Resorts Worldwide, LLC v. HAN KUK KIM

Claim Number: FA2412002128708

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, LLC ("Complainant"), represented by David K. Caplan of KILPATRICK TOWNSEND & STOCKTON LLP, California, USA. Respondent is HAN KUK KIM ("Respondent"), Hong Kong SAR China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <awayspa.com>, registered with Automattic Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Flip Petillion as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 9, 2024; Forum received payment on December 9, 2024.

 

On December 11, 2024, Automattic Inc. confirmed by e-mail to Forum that the <awayspa.com> domain name is registered with Automattic Inc. and that Respondent is the current registrant of the name. Automattic Inc. has verified that Respondent is bound by the Automattic Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@awayspa.com. Also on December 16, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on December 17, 2024.

 

On the same day, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Flip Petillion as Panelist.

 

On December 19, 2024, the Complainant submitted an Additional Submission. On December 20, the Respondent submitted an Additional Response.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant claims that the <awayspa.com> domain name (hereafter, the "Disputed Domain Name") is identical or confusingly similar to its AWAY and AWAY SPA trademarks.

 

The Complainant further contends that the Respondent should be considered as having no rights or legitimate interests in respect to the Disputed Domain Name. According to the Complainant:

-       there is no relationship between the Complainant and the Respondent;

-       the Respondent is not commonly known by the Disputed Domain Name;

-       where a complainant's marks are so well-known and recognized, there can be no rights or legitimate use by a respondent;

-       the Respondent admitted he registered the Disputed Domain Name when he was an employee of the Complainant's W Hotels, which operate Away Spa locations. The Respondent therefore purchased the Disputed Domain Name in reference to W Hotels' Away Spa locations without receiving permission by the Complainant to use the AWAY SPA trademarks;

-       the Respondent has used the Disputed Domain Name for a website with pages listing the Complainant's Away Spa locations, falsely suggesting that the website was operated by the Complainant;

-       the Respondent offered to sell the Disputed Domain Name to the Complainant in exchange for payment above his registration costs.

 

Finally, the Complainant alleges that the Disputed Domain Name should be considered to have been registered and used in bad faith because, according to the Complainant:

-       the Respondent has registered and is using the Disputed Domain Name for commercial gain and to benefit from the goodwill and reputation associated with the Complainant's AWAY SPA trademarks;

-       upon seeing the AWAY SPA trademarks in the Disputed Domain Name, consumers will initially be confused as to the website's association with or sponsorship by the Complainant;

-       the Respondent's use of the Disputed Domain Name resulted in the Respondent attempting to pass himself off as the Complainant;

-       the Respondent's use of the Disputed Domain Name has resulted in actual confusion, as evidenced by the Respondent's own emails;

-       the Respondent offers to sell the Disputed Domain Name at an amount that is greater than the Respondent's registration costs.

 

B. Respondent

The Respondent asserts that he purchased the Disputed Domain Name with the intent to create a personal blog documenting and sharing spa treatments he experienced during his time working as a staff member at AWAY SPA in W Hotels Seoul from June 2003 to July 2004. He states that he is commonly known by the Disputed Domain Name as he has a strong, personal connection to the name "AWAY SPA". 

 

The Respondent claims that he purchased the Disputed Domain Name solely for personal memories and non-commercial documentation, and took immediate action to remove any materials (such as Marriott property images) that might confuse the website with the Complainant's brand. 

 

The Respondent further asserts that:

-       the Disputed Domain Name was not acquired with the purpose of preventing the Complainant from registering the Disputed Domain Name or reflecting its trademark in a domain name. His interest was personal, based on his time working at AWAY SPA;

-       he has not registered the Disputed Domain Name to disrupt the business of the Complainant for the same reasons mentioned above. The fact that the website linked to the Disputed Domain Name has been inactive for a considerable period, further demonstrates that it was not acquired or used to interfere with any business;

-       the Disputed Domain Name was not registered to attract users for commercial gain by creating confusion with the Complainant's brand. When the Respondent realized that some content might create confusion, he removed it. 

 

C. Additional Submissions

1.       The Complainant

The Complainant claims that there is no evidence that the Respondent has ever used the Disputed Domain Name in connection with a blog and that, even if the Respondent had used the Disputed Domain Name for a blog, the Respondent cannot have a "legitimate" interest in identifying himself as the Complainant through the use of the Complainant's exact AWAY SPA mark as a domain name.

 

The Complainant further contends that the fact that the Respondent removed all content from the website linked to the Disputed Domain Name after the Complainant objected to it does not absolve a finding of bad faith.

 

2.       The Respondent

The Respondent provides a screenshot of files and videos dating back to 2004, which he claims proves his longstanding personal interest in the Disputed Domain Name. The Respondent claims the project was paused due to personal circumstances.

 

The Respondent further contends that in 2004, when he registered the Disputed Domain Name, he did not receive any objection from the Complainant. According to the Respondent, his recent web design activities were just temporary and experimental, as he was learning web design and testing different functionalities.

 

FINDINGS

The Complainant, Starwood Hotels & Resorts Worldwide, LLC, operates the W Hotels in the United States and in several other countries. At its W Hotels, the Complainant offers luxury wellness and beauty spa services through the Complainant's Away Spa locations.

 

The Complainant is the owner of numerous trademarks including:   

 

-       AWAY SPA, Chinese word mark, registered under No. 7186116 on October 14, 2012, in class 44;

-       AWAY, USPTO word mark, registered under No. 2655262 on December 3, 2002, in classes 41 and 42.

 

The Respondent, HAN KUK KIM, claims to have been an employee of the Complainant's W Hotels.

 

The Disputed Domain Name was registered on July 10, 2004. According to the Complainant's evidence, on April 1st, 2023, the Disputed Domain Name appeared to resolve to a website offering spa treatments and products. The website also included pages, referring to the Complainant's W hotels and using photographs of the Complainant's Away Spa websites. The Disputed Domain Name is currently redirecting to the domain <awayspa.wordpress.com> displaying the AWAY SPA mark and a "coming soon" message.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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

The Policy ¶ 4(a)(i) requires the Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.   

 

The Complainant provided evidence that it owns AWAY trademarks (e.g., USA trademark No. 2655262 registered on December 3, 2002) and AWAY SPA trademarks (e.g., Chinese trademark No. 7186116 registered on October 14, 2012).

 

The entirety of the AWAY SPA mark is reproduced within the Disputed Domain Name.  Accordingly, the Disputed Domain Name is identical to the Complainant's AWAY SPA mark for the purposes of the Policy. See principles set out in WIPO Jurisprudential Overview 3.0 at ¶1.7.   

 

A domain name's top-level is generally not considered in the confusingly similar analysis under the Policy. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) ("Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.").

 

Therefore, the Panel finds that the Disputed Domain Name is identical to the Complainant's AWAY SPA mark per Policy ¶ 4(a)(i).  

 

Rights or Legitimate Interests

The Policy ¶ 4(a)(ii) requires the Complainant to show that the Respondent has no rights or interests in respect of the Disputed Domain Name. Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect of the Disputed Domain Name. See WIPO Jurisprudential Overview 3.0 at ¶2.1 and Google LLC v. Alex Xavier/ Alexander Xavier / Sustineri Foresight Ltd, FA 28296 (Forum  Mar. 15, 2023).  

 

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has shown to be the holder of registered AWAY SPA trademarks since 2010 and in China since 2012. Although the Disputed Domain Name was registered in 2004, the Respondent admitted that it worked for the Complainant's W hotels that offers luxury wellness and beauty spa services through the Complainant's Away Spa locations before the Disputed Domain Name was registered. Moreover, the Complainant has shown to be the holder of a registered AWAY trademark since 2002. The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademark. See IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc., FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence of that it is commonly known by the disputed domain name).  

 

The Respondent states that he is commonly known by the Disputed Domain Name as he has a strong, personal connection to the name "AWAY SPA", because he was a former employee of the Complainant's W hotels. The WHOIS information reveals the Respondent's name to be "HAN KUK KIM". The fact that the Respondent was previously employed by the Complainant does not constitute evidence that the Respondent is commonly known by the Disputed Domain Name. See WIPO Jurisprudential Overview 3.0, ¶2.3 and Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) ("Due to the fame of Complainant's FOOT LOCKER family of marks . . . and the fact that Respondent's WHOIS information reveals its name to be 'Bruce Gibson,' the Panel infers that Respondent was not 'commonly known by' any of the disputed domain names prior to their registration and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.")). 

 

The Respondent further claims that he has a legitimate interest and is making a legitimate noncommercial fair use of the Disputed Domain Name as he purchased the Disputed Domain Name with the intent to create a personal blog documenting and sharing spa treatments it experienced during its time working as a staff member at AWAY SPA. However, the Panel is of the opinion that the defendant did not provide sufficient evidence to establish a legitimate noncommercial fair use of the Disputed Domain Name. In any event, given the nature of the Disputed Domain Name being identical to the Complainant's AWAY SPA mark, the Panel finds that the Respondent's claimed intention to use the Dispute Domain Name cannot result in rights or legitimate interests in the Disputed Domain Name. See McGuireWoods LLP v. Bobby Jones / UTILITY BELLHOPS, FA1911001871096 (Forum Dec. 11, 2019).

 

According to the Complainant's evidence, the Disputed Domain Name resolved to a website offering services similar to the Complainant's spa services. The website also included pages referring to the Complainant's W hotels and using photographs of the Complainant's Away Spa websites. Although the Respondent claims the website was just temporary and experimental, the Panel finds that this website could easily be considered as being associated with the Complainant. Considering the overall circumstances of the case, as further addressed under the third element of the Policy below, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006).  

 

The Panel observes that the Disputed Domain Name currently resolves to a "Coming Soon" web page displaying the AWAY SPA mark. In the Panel's view, this does not amount to any legitimate noncommercial or fair use or use in connection with a bona fide offering of goods and services either.   

 

The Panel therefore concludes that Respondent has no rights or legitimate interests in the Disputed Domain Name. 

 

Registration and Use in Bad Faith

According to the Complainant's evidence, the Disputed Domain Name appeared to resolve to a website offering spa treatments and products. The website also included pages, referring to the Complainant's W hotels and using photographs of the Complainant's Away Spa websites. In the Panel's view, the above elements are indications of bad faith per Policy ¶ 4(b)(iii).

 

The Complainant argues that the Respondent registered and uses the Disputed Domain Name domain name in bad faith because the Respondent attempts to create confusion with the Complainant's well-known mark. The Complainant has brought evidence that at least one of its customers has reached out to the Respondent mistakenly believing the Respondent is associated with the Complainant's AWAY SPA mark and the Complainant. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant's MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant provides evidence to establish at least some kind of reputation of its AWAY and AWAY SPA marks, used in commerce for over ten years.

 

Moreover, the Respondent claims he was a former employee of the Complainant's W Hotels. Therefore, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the Disputed Domain Name. See Holding Company of The Villages, Inc. v. Jaime Goldsmith, FA 1673212 (Forum June 16, 2016) (finding the respondent's status as a former employee of complainant's dispositive in holding the respondent had actual knowledge of the complainant's mark and rights and thus registered the disputed domain name in bad faith).

 

Finally, the Complainant provides evidence of correspondence between the parties in which it appears that following the Complainant's cease and desist letter, the Respondent offered to transfer the Disputed Domain Name in exchange of a "reasonable compensation". However, the Respondent declined the Complainant's offer to reimburse the Respondent's reasonable registration costs in registering and maintaining the Disputed Domain Name, on the basis that "(…) a more appropriate and fair compensation should reflect not just the registration costs but also the time, effort, and resources I have invested over the years in maintaining the domain". Given the totality of the circumstances discussed above, the Panel finds that this serves as an additional indication of bad faith.

 

The fact that the Disputed Domain Name currently resolves to a "Coming Soon" web page does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Jurisprudential Overview 3.0, ¶3.3.  

  

Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. 

 

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

 

 

 

Flip Petillion, Panelist

Dated: December 31, 2024