The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Zeng Zheng, Lin Qing Feng of Guangzhou, Guangdong, China.
The disputed domain names <sz-ostin.com> and <sz-westin.com> are registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2013. On May 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 21, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On May 21, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 28, 2013. 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, Starwood Hotels & Resorts Worldwide, Inc., is a company incorporated in the State of Maryland in the United States.
The Complainant is one of the leading hotel and leisure companies in the world and owns several hundred properties in approximately one hundred countries. One of the well-known hotels and resorts brand owned by the Complainant is WESTIN.
The Complainant has used the WESTIN trade Mark in respect of its hotels since 1981. To date there are more than 180 WESTIN hotels in almost 30 countries worldwide.
The Complainant is the owner of numerous worldwide trademark registrations for the mark WESTIN in many countries around the world. For example: United States trademark registration No. 1320080 – WESTIN, with the registration date of February 12, 1985; Chinese trademark registration No. 300749 – WESTIN, with the registration date of October 10, 1987; and many more.
The Complainant has also developed a presence on the Internet and is the owners of several domain names, which contain the word “westin”. For example: <westin.com> and <westinhotels.com>.
The disputed domain name <sz-westin.com> was registered by the Respondent Zeng Zheng, on October 17, 2012.
The disputed domain name <sz-ostin.com> was registered by the Respondent Lin Qing Feng, on March 6, 2013.
<sz-westin.com> and <sz-ostin.com> are collectively referred as the “disputed domain names” and the Respondents Zeng Zheng and Lin Qing Feng are collectively referred as the “Respondent”. 1
From the evidence provided by the Complainant, it appears that both disputed domain names resolved to a website promoting the Westin Shenzhen Nanshan hotel and using images and text copied from the Complainant’s official website, with a disclaimer at the bottom of the website. Annexes J and L of the Complaint.
The disputed domain name <sz-westin.com> currently resolves to an inactive webpage.
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s well-known trademark WESTIN, seeing that the dominant part of the disputed domain name comprises from the Complainant’s trademark WESTIN, which has been registered as a trademark and domain names in numerous countries all over the world.
The Complainant further argues that the disputed domain name <sz-westin.com> comprises the WESTIN trademark in its entirely, along with the geographic abbreviation “SZ”, which is common abbreviation for Shenzhen, China – the location of the Complainant’s hotel (The Westin Shenzhen Nanshan).
The Complainant further argues that the disputed domain name <sz-ostin.com> consists of nothing more than a misspelling of the Complainant’s WESTIN trademark, when replacing “we” by the letter “o” and the geographic abbreviation “SZ” for Shenzhen.
The Complainant further argues that with reference to the reputation of the WESTIN trademark there is a considerable risk that the public will perceive the disputed domain names as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further argues that the Respondent is not affiliated with or authorized by the Complainant in any way and is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant further argues that the Respondent has provided false and incomplete registration information for the disputed domain names in order to hide the Respondent’s identity.
The Complainant further argues that the disputed domain names have been used in respect of unauthorized websites which copied images, text layout and description from the Complainant’s official websites.
According to the Complainant, the websites to which the disputed domain names <sz-westin.com> and <sz-ostin.com> have resolved promoted the Westin Shenzhen Nanshan hotel and used photos and text copied from the Complainant’s website for its Westin Shenzhen Nanshan hotel.
The Complainant further argues that the disputed domain names have been registered and used in bad faith.
The Complainant further argues that the Respondent is using the disputed domain names in order to to mislead Internet users to believe that the disputed domain names and the Respondent is somehow related to, endorsed by, or otherwise affiliated with the Complainant.
The Complainant further argues that upon seeing the websites at the disputed domain names, consumers will reasonably but mistakenly believe they are the Complainant’s own websites or are somehow related to or approved by the Complainant.
The Complainant further argues that the considerable value and goodwill of the mark WESTIN is most likely what made the Respondent registered the disputed domain names.
The Complainant further argues that it wrote to the registrant of the <sz-westin.com> disputed domain name on February 26, 2013. The purported Respondent responded to the Complainant’s letter by email on February 28, 2013 stating they have changed the site logo and added a disclaimer “unofficial website” in the bottom of the website. However, the disclaimer was not prominently posted and the website continued to promote the Complainant’s hotel and using the WESTIN mark and images copied from the Complainant’s website. The Complainant sent another letter to the Respondent on February 28, 2013, to which the Respondent did not respond.
The Complainant further argues that after failing to respond to its second letter the Respondent registered the disputed domain name <sz-ostin.com> and directed the website under the disputed domain name <sz-westin.com> to the website associate with <sz-ostin.com>. The website associated with the disputed domain name <sz-ostin.com> is virtually identical to the website used under the disputed domain name <sz-westin.com>.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“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.”
The language of the Registration Agreement for the disputed domain names is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain names <sz-westin.com> and <sz-ostin.com> contain Latin characters;
b) The Respondent has communicated with counsel for the Complainant in English, clearly having read the demand letter that was sent to the Respondent in the English language. See Exhibits I and K.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademark registrations for the mark WESTIN. For example: United States trademark registration No. 1320080 – WESTIN, with the registration date of February 12, 1985; Chinese trademark registration No. 300749 – WESTIN, with the registration date of October 10, 1987; and many more.
The Complainant also owns numerous domain names, which contain the word “westin”. For example: <westin.com> and <westinhotels.com>.
Also, the Complainant’s rights in the WESTIN mark have been established in previous UDRP decisions, i.e.: Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. China, blesswarrior, WIPO Case No. D2012-1515.
The disputed domain name <sz-westin.com> differs from the registered WESTIN trademark by the addition of the geographical abbreviation “SZ” and the additional gTLD “.com”. The disputed domain name integrates the Complainant’s WESTIN trademark in its entirety, as a dominant element.
The disputed domain name <sz-ostin.com> differs from the registered WESTIN trademark by replacing the “we” with the letter “o” and by the addition of the geographical abbreviation “SZ” and the additional gTLD “.com”
The addition of the geographical abbreviation “SZ” does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s WESTIN trademark. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the addition of the generic and descriptive letters “-sh”, a common acronym for “Shanghai”, does not serve to distinguish the disputed domain names from the Trade Marks in any way, particularly given the content of the Websites purportedly relates to hotels in Shanghai” (Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. China, blesswarrior, WIPO Case No. D2012-1515).
Furthermore, the addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.
Lastly, the replacement of the letters “we” in the WESTIN trademark with the letter “o” in the disputed domain name <sz-ostin.com> is not sufficient to escape a finding of confusing similarity (see Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).
The fact that the disputed domain names redirect users to websites promoting the Complainant’s hotel and using copied images and text from the Complainant’s official website, helps this Panel to conclude that the disputed domain name <sz-ostin.com> is confusingly similar to the Complainant’s trademarks.2
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights.
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the WESTIN trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant started to use the name and trademark WESTIN (since the year 1981) and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the WESTIN trademark since the year 1985. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
From the evidence provided by the Complainant, it appears that the disputed domain names <sz-westin.com> and <sz-ostin.com> resolved to websites which were used to promote reservations at the Complainant’s Westin Shenzhen Nanshan hotel and contained marks, images and text which were taken from the Complainant’s official website. Using the disputed domain name to promote the Complainant’s hotel is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its websites with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s websites falls under paragraph 4(b) of the Policy. The existence of a disclaimer at the bottom of the websites does not, in this Panel’s view and in the circumstances of this case, cure bad faith. See paragraph 3.5 of the WIPO Overview 2.0.
Another indication for the Respondent’s bad faith is raised from the fact that the Respondent has apparently hidden its true identity, has not responded to the second letter from the Complainant and registered and directed the disputed domain name <sz-westin.com> to the website at the disputed domain name <sz-ostin.com> after receiving the second letter from the Complainant (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Another indication for the Respondent’s bad faith is raised from the incorporation of the Complainant well-known trademark into the disputed domain names by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the Respondent’s registration and using of the disputed domain names with no conceivable explanation for doing so, the Respondent has copied and reproduced on the websites various images and text the copyright in which is owned by the Complainant, the Panel finds this conduct amounts to further evidence of bad faith.
The fact that the website at the disputed domain name <sz-westin.com> is currently inactive does not change the Panel’s findings.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 names, <sz-ostin.com> and <sz-westin.com> be transferred to the Complainant Starwood Hotels & Resorts Worldwide, Inc.
Jonathan Agmon
Sole Panelist
Date: July 12, 2013
1 As alleged by the Complainant, and confirmed by the Registrar in its registrar verification response to the Center, both disputed domain names list the same email address for both registrants.
2 “The aural and visual comparison of the domain names with a complainant’s trademark is an important part of the issue of confusing similarity. In addition, the content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441). Here, the disputed domain names direct to webpages displaying commercial links reproducing Complainants’ trademarks. The Panel thus considers that Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainants’ websites, a practice known as “typosquatting” and condemned in a number of WIPO panel decisions. (See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587, and Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492)”, Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641.