Starwood Hotels and Resorts Worldwide,
Inc. v. Forum LLC
Claim
Number: FA0501000406631
Complainant is Starwood Hotels and Resorts Worldwide, Inc.
(“Complainant”), represented by Teresa
C. Tucker, of Grossman, Tucker, Perreault and Pfleger
PLLC, 55 South Commercial
Street, Manchester, NH 03101.
Respondent is Forum LLC (“Respondent”),
Cpothall, PO Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <starwoodhotles.com>, registered with Fabulous.com
Pty Ltd.
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 electronically on January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 21, 2005.
On
January 26, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <starwoodhotles.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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
January 27, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 16, 2005 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@starwoodhotles.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 28, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <starwoodhotles.com>
domain name is confusingly similar to Complainant’s STARWOOD mark.
2. Respondent does not have any rights or
legitimate interests in the <starwoodhotles.com> domain name.
3. Respondent registered and used the <starwoodhotles.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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
since at least March 1980. 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 July 12, 2004. Respondent is using the domain name to link Internet users to a
website with the content title, “Spoil each other. Special hotel weekends from 15% off.” The website offers and advertises hotel reservations and
travel-related services.
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 that it 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-five 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 <starwoodhotles.com>
domain name is confusingly similar because the domain name incorporates
Complainant’s mark and simply transposes two letters of the word “hotels.” See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the domain name <geociites.com> is
confusingly similar to Complainant’s GEOCITIES mark).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
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. In addition, Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name. Accordingly, the Panel
presumes that Respondent lacks rights and legitimate interests in the <starwoodhotles.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
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist).
In the WHOIS
contact information, Respondent lists its name as “Forum LLC.” Moreover, 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 and lacks rights and legitimate interests 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 <starwoodhotles.com> domain name to offer and
advertise hotel reservations and travel-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).
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 since
Respondent is commercially benefiting from using a confusingly similar domain
name, 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).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <starwoodhotles.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 14, 2005
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