The Complainants are Starwood Hotels & Resorts Worldwide, Inc., and Westin Hotel Management, L.P., both of Stamford, Connecticut, United States of America (“US”).
The Respondent is Martin Mir of Dubai, United Arab Emirates (“UAE”).
The disputed domain name <westindubai.com> is registered with Ascio Technologies Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2013. On October 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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.
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 November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. The Center received an email communication from the Respondent on November 14, 2013. The Center acknowledged receipt of the Respondent’s communication on November 15, 2013. On November 14, 2013, the Center received a Supplemental Filing from the Complainants. The Center acknowledged receipt of the Supplemental Filing on November 15, 2013. Accordingly, the Center informed the parties about the commencement of panel appointment process on November 27, 2013.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 9, 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 Complainants are worldwide hotel and leisure companies belonging to the same group that own, manage and franchise over thousand properties in approximately one hundred countries with the following brands: Sheraton, Four Points by Sheraton, W, Le Méridien, St- Regis, The Luxury Collection, Aloft, Element Hotels and Westin.
The Second Complainant, Westin Hotel Management L.P., owns the WESTIN trademark, among others, which is used in connection with its goods and services in the hotel and leisure industry.
In connection with its hotel services and related goods and services, the Second Complainant is the right holder of numerous registered trademarks. It in particular owns the following US registered verbal trademarks:
- WESTIN (no. 1320080), registered on February 12, 1985, under class 42 of the Nice Classification with a priority date as of May 14, 1984;
- WESTIN (no. 1720799), registered on September 29, 1992, under class 41 of the Nice Classification with a priority date as of December 11, 1990;
- WESTIN (no, 2257629), registered on June 29, 1999, under class 36 of the Nice Classification with a priority date as of March 11, 1997.
It also owns the following UAE registered verbal trademarks where the Respondent is located:
- WESTIN (no, 91816), registered on November 10, 2008, under class 44 of the Nice Classification;
- WESTIN (no. 91815), registered on November 10, 2008, under class 43 of the Nice Classification;
- WESTIN (no. 86089), registered on January 14, 2008, under class 16 of the Nice Classification.
The Complainants operate hotels in Dubai, UAE, including The Westin Dubai Mina Seyahi Beach Resort & Marina, that can be found on the website hosted by Starwood Hotels & Resorts Worldwide, Inc. “www.starwoodhotels.com/westin/index.html” or on the dedicated website for The Westin Dubai Mina Seyahi Beach Resort & Marina “www.westinminaseyahi.com”.
The Respondent registered the disputed domain name on February 6, 2012. According to the screen captures of the website linked to the disputed domain name, the domain name has been inactive since at least October 21, 2012. According to the archived version of the website linked to the disputed domain name, the Respondent was using the website to direct bookings via “www.expedia.com“ and “www.hotels.com” at the The Westin Dubai Mina Seyahi Beach Resort & Marina as well as at other competing hotels, such as Metropolitan Palace Hotel, Hilton Dubai Jumeirah and The Palace The Old Town on September 29, 2012.
On February 5, 2013, the Complainants’ counsel sent to the Respondent a cease and desist letter, drawing its attention upon its trademarks and requesting the transfer of the disputed domain name. The Respondent did not respond.
The Complainants first allege that the disputed domain name would be confusingly similar to Westin Hotel Management L.P.’s well-known trademarks, as the disputed domain name consists of the Second Complainant’s registered trademark WESTIN, and that the mere addition of the geographic term “Dubai” and the generic Top-Level Domain (“gTLD”) “.com” would not exclude the resulting likelihood of confusion.
Second, the Complainants assert that the Respondent would have no rights or legitimate interests in respect of the disputed domain name. The Respondent would not have effectively used the disputed domain name since October 4, 2012. The Respondent has no connection or affiliation with the Complainants and, at the time it used the disputed domain name, did so to promote hotels in Dubai that are not owned or operated by the Complainants and to offer services at non-Westin properties on the site. This defeats any argument that the Respondent was making bona fide use of the disputed domain name as a “reseller”. The Respondent also failed to properly disclose that he is unaffiliated with the Complainants, since the disclaimer posted at the website merely stated that any trademarks used on the site are owned by their respective owners.
The Complainants finally claim that the disputed domain name has been registered and is being used in bad faith. Set aside the fact that the Respondent did not respond to the Complainants’ cease and desist letter sent on February 5, 2013, the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain name given the renown of the Second Complainant’s trademarks as well as given the fact that the domain name contained information about and promoted bookings at The Westin Dubai Mina Seyahi Beach Resort & Marina. In light of the above, the Complainants contend that the Respondent would have attempted to attract, for commercial gain, Internet users to its disputed domain name by creating a likelihood of confusion with the Second Complainant’s trademarks.
In its supplemental filing, the Complainants assert that the Respondent’s mere allegation that it would plan to use the disputed domain name in connection with a non-profit forum for Westerners is not a sufficiently demonstrable plan to use the domain name in connection with a bona fide offering of goods. Moreover, the Complainants consider that the Respondent failed to establish that it would be commonly known by the “WESTerner IN DUBAI” name, since the only use of this name that the Complainants could find in a search for “WESTerner IN DUBAI” at Google refers to a message board posting by an unrelated third party “www.skyscrapercity.com/showthread.php?t397941”. Furthermore, when the disputed domain name was active, the Respondent was offering or linking to websites that allowed visitors to make reservations at non-WESTIN properties. According to the Complainants, this fact would defeat any argument that the Respondent was making a bona fide use of the disputed domain name as a “reseller”.
The Respondent first asserts that there is currently no active website associated with the disputed domain name and that there has not been any active content since October 4, 2012 as a result of the Complainants’ request. The Respondent’s purpose would always have been to use the disputed domain name as a comprehensive guide to “all WESTeners IN DUBAI”, i.e. to Westeners and Expats in United Arab Emirates. The Respondent further argues that he would be commonly known under the term “WESTener”.
Second, the Respondent alleges that the disputed domain name has never been used or registered in bad faith, since it has merely made recommendations on where to book a hotel. To that end, it used commonly known hotel booking website, such as “www.expedia.com” and “www.booking.com”, but this use was not linked to any commission.
The Respondent finally asserts that there has never been use of any trademark or logos related to or from Westin, Starwood Group or any other trademarks related to any of these companies.
Paragraph 15(a) of the Rules instructs this Panel to “[…] 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 applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As a preliminary point, the Panel decides to accept the Supplemental Filing of the Complainants.
As the Panel stated in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151: “additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated”.
Such happens to be the case here. Considering that the website currently is inactive, the Complainants were not in a position to anticipate the Respondent’s arguments according to which the Respondent would have planned to use the disputed domain name in connection with a non-profit forum for Westerners and would have been commonly known under the “WESTerner IN DUBAI” name.
According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Second Complainant holds numerous word trademarks throughout the world consisting of the word “Westin”, including in UAE where the Respondent resides, and the disputed domain name is <westindubai.com>.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
The applicable gTLD, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a geographical term such as “dubai” is merely descriptive and does not exclude the likelihood of confusion (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). A comparison between “WESTIN” and <westindubai.com> rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be the Complainants’ official website in Dubai.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Second Complainant is the owner of numerous WESTIN trademarks. The Complainants have no business or other relationship with the Respondent. The Complainants thus have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent merely alleged that it registered the disputed domain name because the name “Westin” refers to “Westener”, a name it would be known by, and to provide a non-profit website for “Westerners in Dubai”. The Respondent does however not provide any evidence to support its allegations. Such allegations in this Panel’s view appear to be all the more dubious than the Respondent did not choose to register the term “Westener”, but “Westin”.
Considering the absence of any supporting evidence, there is no doubt in the Panel’s opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Second Complainant is the owner of numerous WESTIN trademarks, which enjoy a worldwide reputation. Considering the reputation of the Second Complainant’s trademarks and the express reference to the Westin hotels on the website attached to the disputed domain name at the time it was active, the Respondent was obviously aware of the Second Complainant’s trademarks. As a result, the Panel holds that the disputed domain name was registered in bad faith.
Furthermore, the Respondent’s registration of a well-known trademark such as WESTIN may, in itself, be sufficient to consider that the domain name is being used in bad faith (Comerica Inc. v. Horoshiy, Inc, WIPO Case No. D2004-0615).
Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain name was registered by the Respondent to exploit the Complainants’ goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Second Complainant’s trademark.
Consequently, the Panel is of the opinion that the disputed domain name <westindubai.com> has been registered and is being used in bad faith under the 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 name <westindubai.com> be transferred to Starwood Hotels & Resorts Worldwide, Inc.
Philippe Gilliéron
Sole Panelist
Dated: December 23, 2013