The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, and Sheraton International, Inc. of United States of America (collectively the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Pearson Network, S.A. / President of Panama.
The disputed domain name <sheratonphiladelphia.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2009. On March 12, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 12, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 8, 2009.
The Center appointed Derek M. Minus as the sole panelist in this matter on April 21, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is collectively; Starwood Hotels & Resorts Worldwide, Inc., a hotel and Leisure Company incorporated under the laws of Maryland, and The Sheraton LLC, a Delaware limited liability company and Sheraton International, Inc., a Delaware corporation. The Complainant is one of the leading hotel and leisure companies in the world and owns, manages or franchises several hundred properties in approximately one hundred countries.
The Complainant owns the SHERATON trademark among many others, which it has used in connection with its goods and services in the hotel and leisure industry since 1928. The Complainant claims to have spent considerable sums in promoting the mark on television, in print advertisements, on the Internet and in other media. Through the Complainant's widespread and extensive use of the SHERATON mark, it has become uniquely associated with the Complainant and its services throughout the world.
The Complainant has obtained numerous registrations for the SHERATON mark
throughout the world in connection with its hotel services and related goods and services. For example, the Complainant owns the following registrations issued by the United States Patent and Trademark Office:
|
Mark |
Class |
Registration No. |
Registration Date |
|
SHERATON |
42 |
679,027 |
May 19, 1959 |
|
SHERATON |
16 |
954,454 |
March 6, 1973 |
|
SHERATON |
42 |
1,784,580 |
July 27, 1993 |
|
SHERATON |
41 |
1,884,365 |
March 14, 1995 |
|
SHERATON |
41, 43, 44 |
3,020,845 |
November 29, 2005 |
The Complainant asserts that:
(a) The domain name <sheratonphiladelphia.com> is confusingly similar or identical to the Complainant's famous SHERATON trademark;
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant's contentions, the Panel shall decide the Complaint on the basis of the Complainant's submissions and such inferences that can be reasonably drawn from the failure to submit a Response, as the Panel considers applicable (Rules, paragraph 14(b)).
The Complainant submits that the disputed domain name, <sheratonphiladelphia.com>, is confusingly similar to the Complainant's famous SHERATON trademark. The Panel accepts that the Complainant is the owner of the trademark rights in the mark, SHERATON.
The Panel notes that it can be argued that the Complainant's trademarks for SHERATON have acquired renown so that they benefit from the protection afforded to well-known trademarks under Article 6bis of the Paris Convention for the Protection of Industrial Property which the United Kingdom of Great Britain and Northern Ireland and the United States of America have been members of respectively since July 7, 1884 and May 30, 1887.
Earlier UDRP decisions have found that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201). It was also decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The disputed domain name is confusingly similar to the Complainant's mark because it consists of the Complainant's mark combined with the geographic indicator “Philadelphia”. It was held in Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services LLC, WIPO Case No. D2007-0829 that “[t]he addition of geographic indicators, non-distinctive words or misspellings to said trademarks are not enough to avoid internet users' confusion between Complainants' widely-known services and the disputed domain names.” The addition of such a non-distinctive word to the Complainant's mark adds to rather than diminishes the likelihood of confusion, particularly as the Complainant operates several hotels in the Philadelphia area.
The Panel finds that the domain name <sheratonphiladelphia> is confusingly similar to the Complainant's registered trademark SHERATON in which the Complainant has rights, as the addition of the geographic indicator “Philadelphia” is not sufficient to preclude a finding of confusing similarity with the Complainant's registered trade mark.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to the Complainant, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's mark in a domain name or in any other manner. The Complainant contends that the Respondent has no rights or legitimate interests in the domain name <sheratonphiladelphia.com> because the Complainant has not agreed nor consented to the Respondent's use of, or registration of the disputed domain name.
Given that the Complainant has satisfactorily made out its prima facie case that the Respondent lacks rights or legitimate interests in the domain name, the burden is on the Respondent to establish its right or legitimate interest in the disputed domain name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services.
The Respondent did not provide a response and the only use of the disputed domain name that the Complainant is aware of, is the misdirection of Internet users looking for the Complainant's website to the Respondent's own pornographic and obscene website. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest. See, Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494 (no rights or legitimate interest found where the complainant has not licensed or otherwise permitted the respondent to use its trademark or to apply for a domain name incorporating its trademark).
(ii) the fact that the Respondent has been commonly known by the domain name.
There is no evidence that the Respondent is commonly known by the domain name. A preliminary search by the Complainant has revealed that the Respondent has no community or international trademark rights in the name SHERATON. Also, the Panel notes that the registration of the Complainant's trademark predates by over 75 years the registration of the disputed domain name by the Respondent.
(iii) legitimate noncommercial or fair use of a domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the Complainant's trademark.
The Panel notes that the Respondent has elected not to answer this charge by failing to provide a Response. The Panel finds that the Complainant has therefore made a prima facie case of the Respondent's lack of rights to or legitimate interests in the disputed domain name.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
These four circumstances, which are framed in the alternative, are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
According to the Complainant's submission, there are a number of circumstances that are relevant to finding that the Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site by creating the likelihood of confusion with the Complainant's mark.
The Complainant submits that its SHERATON mark is one of the most famous trademarks in the world and enjoys international recognition. It is therefore highly unlikely that the Respondent was unaware of the Complainant's mark when it registered the disputed domain name. The registration of the disputed domain name by the Respondent without authorization is evidence of its bad faith registration. See Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (where there was a finding that the international fame of a trademark precludes innocent registration of a confusingly similar domain name).
According to the Complainant's submission, the disputed domain name diverts or “clicks through” to the Respondent's display of pornographic content at its website. Evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another's well-known mark by attracting Internet users to the registrant's website, for commercial gain (see Société Air France v. Patrick Ory, WIPO Case No. D2003-0628).
It has been stated in L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, that “[s]uch exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g., Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.”
Moreover, the Respondent's display of pornographic content in these circumstances at the disputed domain name is further evidence of its bad faith use and registration of the disputed domain name. See Caesars World, Inc. v. Alaiksei Yahorau, WIPO Case No. D2004-0513 (bad faith shown by pornographic content at the respondent's website); ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (use of ABB as part of a domain name offering pornographic content tarnishes the complainant's mark and constitutes bad faith); Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370 (use of a domain name to link to graphic, adult-oriented material constitutes bad faith use and registration).
The Complainant also submits that it is not the first time that the Respondent has registered a domain name incorporating the well-known trademarks of others. In Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A., WIPO Case No. D2006-1271, the panel found that the Respondent had registered the <Hitachi-pavilion.com> domain name in violation of the Policy and required transfer of the domain name to trademark owner. In addition, the Respondent owns a number of domains incorporating the trademarks of others.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Further the use of the domain name to engage in fraudulent activities constitutes evidence of bad faith registration and use of a domain name for purposes of paragraph 4(a)(iii).
It is therefore established that the Complainant has made out each of the three elements that it is required to prove.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sheratonphiladelphia.com> be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: May 14, 2009