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 firstname.lastname@example.org 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, 2004
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