WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Worldwide Franchise Systems, Inc., Westin License Company v. Digi Real Estate Foundation
Case No. D2007-0107
1. The Parties
Complainant is Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Worldwide Franchise Systems, Inc., Westin License Company, of White Plains, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Names and Registrars
The disputed domain names (“Disputed Domain Names”) are:
<fourpointsheratonhotel.com>
<sheratinhotel.com>
<sheratonaddis.com>
<sheratonboston.com>
<sheratonbuganvilias.com>
<sheratoncrossroads.com>
<sheratoncrossroadshote.com>
<sheratondoha.com>
<sheratongateway.com>
<sheratongrand.com>
<sheratonhacienda.com>
<sheratonkauairesort.com>
<sheratonmanhatten.com>
<sheratonmoana.com>
<sheratonnashua.com>
<sheratonpalace.com>
<sheratonrittenhouse.com>
<sheratonstationsquare.com>
<sheratonsuitesftl.com>
<sheratonsurfrider.com>
<sheratonvistanahotel.com>
<sheritoninn.com>
<wesin.com>
<whotelchicago.com>
<whotelhonolulu.com>
<whotelseoul.com>
<4pointsheraton.com>
are registered with, respectively
Netheadz.ca Inc.
eNom
eNom
eNom
eNom
eNom
Affordable Computer Solutions Inc. dba
eNom
Affordable Computer Solutions Inc. dba
eNom
eNom
Affordable Computer Solutions Inc. dba
eNom
Affordable Computer Solutions Inc. dba
eNom
eNom
Tarton Domain Names Ltd
Domain Band Inc.
eNom
eNom
eNom
eNom
eNom
eNom
Bizcn.com, Inc.
Bizcn.com, Inc.
Abstract Names, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2007. On January 29, 2007, the Center transmitted by email, a request for registrar verification in connection with the domain names listed in section 2 above, to, respectively:
Netheadz.ca Inc.
eNom
eNom
eNom
eNom
eNom
Affordable Computer Solutions Inc. dba
eNom
Affordable Computer Solutions Inc. dba
eNom
eNom
Affordable Computer Solutions Inc. dba
eNom
Affordable Computer Solutions Inc. dba
eNom
eNom
Tarton Domain Names Ltd
Domain Band Inc.
eNom
eNom
eNom
eNom
eNom
eNom
Bizcn.com, Inc.
Bizcn.com, Inc.
Abstract Names, Inc.
The registrar below, on the date indicated beside it,
Netheadz.ca Inc. January 31, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
Affordable Computer Solutions Inc. dba February 7, 2007
eNom February 7, 2007
Affordable Computer Solutions Inc. dba February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
Affordable Computer Solutions Inc. dba February 7, 2007
eNom February 7, 2007
Affordable Computer Solutions Inc. dba February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
Tarton Domain Names Ltd. January 31, 2007
Domain Band Inc. February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
eNom February 7, 2007
Bizcn.com, Inc. January 30, 2007
Bizcn.com, Inc. January 30, 2007
Abstract Names, Inc. January 30, 2007
transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient in respect of the identification of the registrar of two of the Disputed Domain Names, Complainant filed an amendment to the Complaint on February 12, 2007. The Center verified that the Complaint, with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on February 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 15, 2007.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on April 3, 2007. 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.
4. Factual Background
Complainant has the following trademarks and registrations at the United States Patent Office.
Trademark |
Class(es) |
Registration No. |
Registration Date |
SHERATON |
42 |
679,027 |
May 19, 1959 |
SHERATON |
42 |
1,784,580 |
July 27, 1993 |
SHERATON (and |
42 |
1,401,715 |
July 15, 1986 |
design) SHERATON (and |
42 |
1,401,714 |
July 15, 1986 |
design) SHERATON |
38 |
954,454 |
March 6, 1973 |
SHERATON |
41 |
1,884,365 |
March 15, 1995 |
SHERATON |
42 |
1,493,704 |
June 21, 1998 |
SUITES W |
41, 43, 44 |
3,000,219 |
Sept. 27, 2005 |
W |
36, 37 |
2,863,392 |
July 13, 2004 |
W HOTELS |
20, 24, 25 |
2,694,849 |
Dec. 17, 2002 |
W |
35, 41, 42 |
3,021,235 |
Nov. 29, 2005 |
W |
42 |
2,289,607 |
Oct. 26, 1999 |
W HOTELS |
42 |
2,294,753 |
Nov. 23, 1999 |
WESTIN |
42 |
1,320,080 |
Feb. 12, 1985 |
WESTIN HOTELS & |
42 |
1,428,848 |
Feb. 10, 1987 |
RESORTS WESTIN |
41 |
1,720,799 |
Sept. 29, 1992 |
WESTIN |
36 |
2,257,629 |
June 29, 1999 |
FOUR POINTS |
42 |
2,003,614 |
Sept. 24, 1996 |
FOUR POINTS BY SHERATON |
43 |
3,018,022 |
Nov. 22, 2005 |
The Complainant also has trademark registrations for SHERATON in Panama
Collectively, these trademarks and registrations are called herein “Starwood Marks”.
5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Names are confusingly similar with the Starwood Marks in which it has rights, that Respondent has no legitimate rights or interests in the Disputed Domain Names and that Respondent registered and uses the Disputed Domain Names in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for this Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall 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 appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must prove, in respect of each Disputed Domain Name (i) that the Disputed Domain Name is identical or confusingly similar to a trademark in which it has rights, and (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and (iii) that the Disputed Domain Name was registered and is being used in bad faith.
Before turning to the requirements of paragraph 4(a) of the Policy, the Panel addresses the preliminary issue of language of the proceedings.
The Registrar for the Disputed Domain Names <whotelhonolulu.com> and <whotelseoul.com> is Bizcn.com, Inc. Upon information and belief, Bizcn.com, Inc., is located in China and its registration agreement is in the Chinese language. Nevertheless, Complainant requests the Panel to exercise its discretion to conduct the proceedings in the English language, pursuant to paragraph 11 of the Rules (“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”). In this case, although two of the Disputed Domain Names are registered with a Chinese registrar, Respondent otherwise has no discernible connection to China. The Whois information identifies Panama, and not China, as Respondent’s home country. The registration agreements of all the other registrars with whom Respondent has registered the other Disputed Domain Names are in the English language. None of the Disputed Domain Names are in the Chinese language and the great majority of them are rendered in standard English language. Moreover, those active websites Respondent does maintain with some of the Disputed Domain Names, are in the English language only. These circumstances present strong evidence “that the Respondent is conversant and proficient in the English language”. See, e.g., Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432 at Paragraph 6.1 (ii) (June 12, 2006); and Credit Suisse Group v. Credit Suisse Group, WIPO Case No. D2005-0213 at Paragraph 6 (June 1, 2005). For the cumulative preceding reasons, this Panel exercises its discretion to hold the proceedings concerning domain name registered with Bizcn.com, Inc. in the English language rather than Chinese language.
A. Identical or Confusingly Similar
Complainant contends that it has substantial rights in its Starwood Marks. Specifically, Complainant contends (and the Panel accepts as uncontroverted) the following (excerpted from the Complaint, paragraphs 11-12, 14-16):
“Starwood is one of the leading hotel and leisure companies in the world with approximately 850 properties in more than 95 countries and 145,000 employees at its owned and managed properties. Starwood is a fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: SHERATON, WESTIN, FOUR POINTS BY SHERATON, W….Starwood owns the trademarks SHERATON, FOUR POINTS, WESTIN, W, and W HOTELS marks (collectively, the ‘Starwood Marks’), among many others. These marks signify some of the top brands in the hotel and leisure industry—indeed, Starwood owns, manages or franchises 192 SHERATON hotels, 91 FOUR POINTS hotels, 83 WESTIN hotels, and 18 W hotels, worldwide. After being introduced to the public in 1937, the SHERATON brand of hotels had proven to be so popular and relied upon that it was the first hotel chain to be listed on the New York Stock Exchange. Starwood’s WESTIN hotels, introduced in 1981, cater to both business and leisure travelers looking for spa retreats and other comfort amenities, while its mid-priced FOUR POINTS hotels cater to budget-minded business and leisure travelers around the world since 1995. Starwood’s W hotels have become well-known for their world class design, world class restaurants and fashionable bars and lounges since they first entered the market in 1998….Through its widespread, extensive use of its marks in connection with hotel and leisure and related goods and services, and its expenditure of large sums in promoting its marks on television, in print advertisements, on the Internet and in other media, Complainant’s Starwood Marks have become uniquely associated with Starwood and its services, and have attained considerable fame and widespread acclaim in the United States and throughout the world. As a result, the Starwood Marks represent enormous goodwill of Complainant. In addition to its extensive use of the Starwood Marks, Starwood has obtained numerous trademark registrations for these marks throughout the world in connection with its hotel, leisure and related goods and services. For example, the United States Patent and Trademark Office (‘USPTO’) has granted the following federal trademark registrations, among many others, to Starwood for various goods and services….and service mark registrations for the Starwood marks throughout the rest of the world, including several registrations in Panama—the country where Respondent is located…..Starwood also has developed a prominent Internet presence for its Starwood Marks in connection with its hotel, leisure and related services. Thus, Starwood has established several websites featuring its marks, including websites located at ‘www.sheraton.com,’ ‘www.fourpoints.com,’ ‘www.whotels.com,’ ‘www.westin.com,’ ‘www.sheratonhotels.com,’ and ‘www.westinhotels.com,’ all of which are also accessible through other Starwood-owned domain names….In most instances, the Domain Name consists simply of one of the Starwood Marks and either a generic geographic location—e.g., ‘whotelchicago.com’, ‘sheratonboston.com’, or ‘sheratonnashua.com’—or a nondistinctive word commonly associated with the hotel or leisure industry—e.g., ‘sheratongrand.com’, ‘sheratonhacienda.com’, ‘sheratonpalace.com’. This ‘adds to rather than diminishes the likelihood of confusion.’ Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244, ¶ 7.2 (June 9, 2003) (‘The addition of a place name to a trademark ... is a common method for indicating the location of a business enterprise identified by the trademark or service mark. This is even more so in the case of hotels.’); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 at § 6 (WIPO Dec. 9, 2000) (‘Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY,’ and thus Policy ¶ 4(a)(i) is satisfied). In other instances, Respondent has included common misspellings of the Starwood Marks in the Disputed Domain Names. For instance, the names ‘sheratinhotel.com,’ ‘sheritoninn.com,’ and ‘wesin.com’ are visually and phonetically similar to the well-known Starwood Marks. Internet users who intend to visit one of Starwood’s websites may inadvertently type any one of these misspellings into the address bar of their web browser only to be misdirected to Respondent’s websites. This is a classic example of ‘typosquatting,’ a practice that ‘has been universally condemned in numerous URDP decisions’ and which numerous panelists have found to be sufficient to establish confusing similarity. See, e.g., Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095 at § 6(A) (Oct. 17, 2006) (‘Ample authority exists to support the conclusion that this virtual identity is sufficient to establish confusing similarity.’). The confusing similarity is compounded by the fact that Starwood owns and uses domain names that incorporate its Starwood marks—including, without ‘limitation—sheraton.com’, ‘fourpoints.com’, ‘westin.com’ and ‘whotels.com’—to direct Internet users to its official websites.”
Complainant conclusory contentions (excerpted from the Complaint, paragraph 17) are that Respondent registered the Disputed Domain Names “…which either (i) incorporate one of the Starwood Marks in their entirety… or (ii) are identical to one (or in some cases two) of the Starwood Marks but for the misspelling or omission of a single letter….”.
Based on the above, uncontroverted contentions, the registrations of the Starwood Marks, the Panel accepts that the Complainant has rights in the Starwood Marks and finds that the Disputed Domain Names are confusingly similar thereto.
The Panel concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names.
According to Complainant, Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the Starwood Marks in a domain name or in any other manner; Respondent’s only use of the Disputed Domain Names is in connection with the websites described in Section 6(C) (“Registered and Used in Bad Faith”) below; and Respondent is using some of the Disputed Domain Names to misdirect Internet traffic to Respondent’s own advertising websites, which advertise links to competing hotel and leisure companies and services; and that such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal status of the Starwood Marks as registered trademarks of Complainant, and Complainant’s uncontroverted contentions about its business with the Starwood Marks in the United States of America and elsewhere worldwide, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel, especially in the absence of any response from the Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Names, likely do not exist.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Names in bad faith.
Complainant contends that it would be inconceivable for Respondent to register the Disputed Domain Names, or any one of them, unaware of Complainant’s Starwood Marks and the substantial business associated therewith.
Complainant contends that Respondent’s use of the Disputed Domain Names fall into two categories.
First, Complainant contends that Respondent is using some of the Disputed Domain Names to advertise the services of entities and websites not related to Complainant. When Internet users looking for legitimate services offered by Complainant, type “www.whotelchicago.com”, “www.sheritoninn.com”, and “www.wesin.com” into the address bar of their Internet browser, they are directed to a website used to advertise links to competing hotel and leisure companies and to other entities not related to Complainant. Furthermore, when Internet users click on many of the links on Respondent’s websites at such domain names, they are directed to websites (most of which are not associated with Complainant) that advertise hotel and leisure services in competition with Complainant.
Secondly, Complainant contends that Respondent is also passively holding the other Disputed Domain Names with no legitimate business purpose. According to the Complainant, with respect to the addresses “www.whotelhonolulu.com”, “www.whotelseoul.com”, “www.sheratoncrossroadshotel.com”, “www.sheratonmoana.com”, “www.sheratonhacienda.com”, “www.sheratonbuganvilias.com”, “www.sheratonsurfrider.com”, “www.sheratoncrossroads.com”, “www.sheratonmanhatten.com”, “www.sheratongrand.com”, “www.sheratonvistanahotel.com”, “www.sheratonnashua.com”, “www.sheratinhotel.com”, “www.sheratondoha.com”, “www.sheratonaddis.com”, “www.sheratonboston.com”, “www.sheratonsuitesftl.com”, “www.sheratonkauairesort.com”, “www.sheratongateway.com”, “www.sheratonpalace.com”, “www.4pointsheraton.com”, “www.fourpointsheratonhotel.com”, “www.sheratonrittenhouse.com”, and “www.sheratonstationsquare.com”, when a user types any of the above into the address bar of his or her Internet browser, either a blank page appears or the browser reports that the website could not be found.
Furthermore, Complainant contends that Respondent has in effect “inventoried” (to use the expression of the Complaint) the Complainant’s “brands” by registering confusingly similar domain names for use to divert Internet traffic improperly. Complainant points to the very large number implicated in these proceedings (twenty-seven Disputed Domain Names).
Complainant further contends that Respondent is a “Notorious Cybersquatter”. According to Complainant, Respondent has been named in at least thirty-six (36) other UDRP administrative proceedings requiring the transfer of domain names that either were identical or otherwise confusingly similar to well-known trademarks. In each of these proceedings, Respondent was held to have registered and used domain names in bad faith and ordered the transfer of such domain names to the respective complainant.
The most recent of Respondent’s UDRP cases—Choice Hotels Int’l, Inc. v. Digi Real Estate Foundation a/k/a Digi Real Estate, NAF Case No. FA0609000787950 (October 31, 2006)—involved conduct by Respondent that is very similar to the conduct considered herein. There, Respondent had registered several domain names that either were identical to, or common misspellings of, the following trademarks of a major hotel and leisure company (and a competitor of Complainant): <qualityinnn.com>; <clarionresorts.com>; <choicehotelinternational.com>; <comfortsuiets.com>; <quailtyinn.com>; <qualityinndaytona.com>; <wwwqualityinn.com>; <sleepinnn.com>; <sleepinnhotel.com>; <wwwsleepinn.com>; <econolog.com>; <qaulityinn.com>; <ecnolodge.com>; <choicehhotels.com>; <comfirtinn.com>; and <qualityinnn.com>. The administrative panel held that Respondent’s conduct violated the Policy and ordered the transfer of all the domain names.
The Panel accepts Complainant’s contentions (of Respondent’s large number of confusingly similar Disputed Domain Names; its past practices as reflected in the nature and large number of administrative panel decisions adverse to Respondent; of it, in effect, having “inventoried” the Complainant’s “brands”) as indicative of Respondent’s bad faith registration and use. The Panel so accepts especially in the absence of any counter-arguments or contrary evidence from Respondent.
The Panel concludes that the third requirement of the Policy is met.
7. Decision
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 names
<fourpointsheratonhotel.com>
<sheratinhotel.com>
<sheratonaddis.com>
<sheratonboston.com>
<sheratonbuganvilias.com>
<sheratoncrossroads.com>
<sheratoncrossroadshote.com>
<sheratondoha.com>
<sheratongateway.com>
<sheratongrand.com>
<sheratonhacienda.com>
<sheratonkauairesort.com>
<sheratonmanhatten.com>
<sheratonmoana.com>
<sheratonnashua.com>
<sheratonpalace.com>
<sheratonrittenhouse.com>
<sheratonstationsquare.com>
<sheratonsuitesftl.com>
<sheratonsurfrider.com>
<sheratonvistanahotel.com>
<sheritoninn.com>
<wesin.com>
<whotelchicago.com>
<whotelhonolulu.com>
<whotelseoul.com>
<4pointsheraton.com>
be transferred to Complainant.
Mark Ming-Jen Yang
Sole Panelist
Dated: April 17, 2007