The Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc., of New York, United States of America, (together “the Complainant”) represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is G Design/ Domains by Proxy, Inc., of Shanxi, China, and Arizona, United States of America, respectively.
The disputed domain name <sheratongunter.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, GoDaddy.com, Inc. 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 July 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2011.
The Center appointed Isabel Davies as the sole panelist in this matter on August 24, 2011. 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 one of the leading hotel and leisure companies in the world and states that it owns, manages and franchises over eight hundred hotels in approximately 100 countries throughout the world, including the Sheraton Gunter Hotel San Antonio in Texas. The Complainant contends that it has used the SHERATON mark in relation to the provision of hotel services for approximately 80 years. It has obtained numerous registrations for the mark throughout the world (including the United States and China) in connection with hotel and leisure services.
Examples of registrations issued by the United States Patent and Trade Mark Office include:
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 |
Examples of registrations issued by the Chinese Patent and Trade Mark Office include:
SHERATON 36 4758627 February 7, 2009
SHERATON 9 362790 September 30, 1989
SHERATON 35 5749281 September 21, 2009
SHERATON 16 362448 September 30, 1989
SHERATON 42 771447 November 7, 1994
The Complainant operates websites located at “www.sheraton.com” and “www.sheratonhotels.com” which can also be accessed by other domain names owned by the Complainant. Consumers may make online bookings at the Complainant’s hotels through these websites.
The disputed domain name was registered on July 15, 2004 using the services of Domains by Proxy, Inc. to protect the privacy of the registrant. The website which currently appears at the Internet address associated with the disputed domain name is a “parked” website featuring links to third-party websites, the majority of which offer hotel and leisure services. The Panel notes from an Internet search that the Sheraton Gunter Hotel San Antonio was open prior to 2004, as evidenced by various customer reviews of the hotel on sites such as “www.tripadvisor.com”.
The Complainant asserts that:
(a) The disputed domain name is confusingly similar or identical to the Complainant's famous SHERATON trade mark;
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(c) The disputed domain name was registered and is being used in bad faith.
The disputed domain name is identical and/or confusingly similar to the Complainant’s SHERATON mark
The Complainant asserts that, since the gltd indicator “.com” cannot be taken into consideration, the only additional element in the disputed domain name is ”Gunter”. It argues that, since “Gunter” is a geographical element and the name of one of the Complainant’s hotels in Texas, its inclusion in the disputed domain name serves to increase rather than diminish the likelihood of confusion, particularly in the context of hotels where a geographical element is commonly used to differentiate between properties. The Complainant contends that consumers will reasonably believe the Respondent’s website to be related to or approved by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and has not been granted any form of consent, express or implied, to use the SHERATON mark whether in a domain name or otherwise. In addition, it contends that there is no evidence that the Respondent is known by the name SHERATON or GUNTER. The Complainant states that, since the Claimant’s use of the SHERATON mark significantly predates the Respondent’s registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name.
The Respondent registered, used and is using the disputed domain name in bad faith
The Complainant asserts that, as the SHERATON mark is among the most famous in the travel and leisure industry, it is inconceivable that the Respondent was unaware of the mark when it registered the disputed domain name. That being the case, the mere fact of registration without authorisation is evidence of bad faith.
The Complainant further contends that, since the Respondent cannot demonstrate any plans to use the disputed domain name in connection with any bona fide use, the Respondent is clearly using the SHERATON mark to attract users to its website in order to generate “pay-per-click” revenue. The Complainant argues that this results in consumers seeking the Complainant’s services being redirected to websites belonging to the Complainant’s competitors. According to the Complainant, such use trades on the Complainant’s extensive goodwill and constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, in order to obtain relief, the Complainant must prove each of the following three elements, on the balance of probabilities:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant must establish all three elements even if the Respondent does not reply (see de Vanguard Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc.v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted.
The Panel accepts that the Complainant is the owner of the trade mark rights in the mark, SHERATON in relation to hotel and leisure services and that, as a result of the Complainant’s extensive use, a significant degree of goodwill has been built up in the SHERATON mark. The Complainant’s exclusive rights in its SHERATON mark have been recognised in several UDRP decisions that ordered the transfer of disputed domain names to the Complainant: Starwood Hotels & Resorts Worldwide, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0107 (transferring twenty-three Sheraton-formative domain names, including <sheratonboston.com> and <sheratonpalace.com>); Starwood Hotels & Resorts Worldwide, Inc. v. Services, LLC, WIPO Case No. D2007-0829 (transferring fourteen Sheraton-formative domain names, including <orlandosheraton.com> and <sheratonbostonhotel.com>).
The Complainant submits that the disputed domain name, <sheratongunter.com>, is confusingly similar to the Complainant's SHERATON trade mark.
The gtld indicator “.com” is typically not to be taken into consideration when judging confusing similarity. (Foundation LeCorbusier v. Mercado M., WIPO Case No. D2004-0723).
Numerous panels have held that the incorporation of a complainant’s trade mark in a disputed domain name can be strong evidence of confusing similarity between the disputed domain name and the complainant’s trade mark (see Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782). It was 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 the purposes of the Policy”.
“Gunter,” being the name of a city in Texas, does function as a geographical indicator. It was held in Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services LL, WIPO Case No. D2007-0829 that “the 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.”
Whilst the Panel accepts that “Gunter” is a geographical indicator, given that the Complainant does not operate a hotel in Gunter, the Panel finds that the more persuasive argument is that the “Gunter” element adds to the likelihood of confusion because the Complainant already operates a hotel called the Sheraton Gunter Hotel San Antonio.
The Panel finds that the disputed domain name <sheratongunter.com> is confusingly similar to the Complainant's registered trade mark SHERATON in which the Complainant has rights. The addition of the “Gunter” element is not sufficient to preclude a finding of confusing similarity with the Complainant's registered trade mark. The Panel finds that the Complainant has met the requirements of paragraph 4(a(i)) of the Policy.
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. Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the disputed domain name. The list includes: (i) using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark. A complainant must show a prima facie case that the respondent lacks rights or legitimate interest in a disputed domain name, after which the burden of production passes to the respondent. (See Croatia Airlines d.d v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In the absence of any information to the contrary, the Panel accepts the Complainant’s assertion that 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 SHERATON mark.
The Panel has received no evidence or information to suggest that the Respondent is commonly known by the disputed domain name and notes that the Sheraton Gunter Hotel San Antonio was open prior to registration of the disputed domain name.
The Claimant contends that the Respondent is using the SHERATON mark to attract users to its website in order to generate “pay-per-click” revenue, the result being that legitimate users seeking the Complainant’s services are being redirected to websites belonging to the Complainant’s competitors. The Panel notes that the website associated with the disputed domain name is a “parked” website currently containing links to websites offering hotel and leisure related services including, among others, sites promoting Intercontinental Hotels and Millennium Hotels. The links on the website do change but, on each visit by the Panel, the website has included links to third party websites offering hotel accommodation. There is no evidence before the Panel to suggest that the disputed domain name has been used by the Respondent in any other way.
The Panel considers that the Complainant has made a prima facie case of the Respondent's lack of rights to or legitimate interests in the disputed domain name. The Panel notes that the Respondent has elected not to answer this charge by failing to provide a Response and has not provided evidence of any of the circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed 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 circumstances include the situation where a respondent registered the disputed domain name primarily for the purpose of selling it to the complainant or a competitor for valuable consideration exceeding the “out of pocket” expenses incurred by the respondent in relation to acquiring the disputed domain name. They also include the situation where a respondent uses the disputed domain name intentionally to 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 its website.
The Panel notes that the Complainant’s use of and registration of the SHERATON mark significantly predates the Respondent’s registration of the disputed domain name and that the Complainant’s Sheraton Gunter Hotel was already in existence when the disputed domain name was registered. This being the case and given the significant goodwill attached to the SHERATON mark, the Panel finds it unlikely that the Respondent registered the disputed domain name without having the Complainant and its SHERATON mark in mind.
The website associated with the disputed domain name does not link to any of the Complainant’s sites or allow Internet users to purchase the Complainant’s services despite the disputed domain name being, in the Panel’s view, confusingly similar to the SHERATON mark. Instead it contains links to third party websites offering competing hotel and leisure services. This indicates that the Respondent is seeking to trade on the goodwill in the SHERATON mark and use the likely confusion with the SHERATON mark to divert business away from the Complainant whilst attracting Internet users to the Respondent’s website instead for commercial gain. This suggests that registration of the disputed domain name was done in bad faith. (see Société Air France v. Patrick Ory, WIPO Case No. D2003-0628).
The Complainant has produced no evidence that the Respondent is generating Internet advertising revenue from the website. It has been stated in L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, that “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. D2004-0068; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.” However, the Panel does not consider it necessary to rely on this in reaching its decision.
The Panel considers that Internet users typing in the disputed domain name might click on one of the links on the Respondent’s site without realising that the website is unconnected with the Complainant. Even users who appreciate that the website is not one of the Complainant’s sites might still be tempted to click on a sponsored link allowing the Respondent potentially to profit from their confusion and generate revenue. Such use of the disputed domain name is clearly in bad faith.
The Panel also notes that there is a statement on the Respondent’s website to the effect that the disputed domain name may be for sale. The Panel considers that this further supports its finding that the disputed domain name has not been registered and used in good faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. It is therefore established that the Complainant has made out each of the three elements that it is required to prove.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sheratongunter.com> be transferred to the Complainant.
Isabel Davies
Sole Panelist
Dated: September 9, 2011