WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Wendy Webbe and Ancient Holding, LLC

Case No. D2014-0260

1. The Parties

The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC , Sheraton International IP, LLC, (collectively, the “Complainant”), United States of America (the “United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.

The Respondent is Wendy Webbe and Ancient Holding, LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <sanyasheratonhotel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2014. On February 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2014, 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 February 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2014.

The Center appointed Mr. Gonçalo Cunha Ferreira as the sole panelist in this matter on March 25, 2014. 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

The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises over 1,000 properties in approximately one hundred countries. The Complainant 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, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT hotel.

The Complainant owns the SHERATON trademark, among others, which is used in connection with its goods and services in the hotel and leisure industry for over 80 years. The SHERATON brand exists since 1928 and became the first hotel chain to be listed on the New York Stock Exchange.

There are presently almost 400 existing SHERATON hotels worldwide, including the Sheraton Sanya Resort, Sheraton Sanya Haitang Bay Resort, and the soon to open Sheraton Sanya Tufu Bay Resort. The Complainant owns the following websites:

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=1447”; and

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=3507”; and

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=3584”.

These websites provide online reservations to the above mentioned Sheraton hotels, among others, providing information regarding other hotel brands and related services (Exhibit D of the Complaint).

Furthermore, the Complainant has obtained several registrations for the SHERATON mark throughout the world in several classes in connection with its hotel services and related goods and services. Namely, Complainant owns the following registrations in the United States, China and Saint Kitts and Nevis:

The Complainant has also developed an Internet presence for the SHERATON mark, including in connection with its websites located at “www.sheraton.com” and “www.sheratonhotels.com”, both of which are also accessible through other Complainant-owned domain names and websites. These websites allow Internet users to access information regarding Complainant’s various SHERATON hotels and related services and to learn more about Complainant and its SHERATON hotels.

Furthermore, the Complainant’s exclusive rights in its SHERATON marks have been recognized in several UDRP decisions that ordered the transfer of domain names to the Complainant (among others, Starwood Hotels & Resorts Worldwide, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0107; Starwood Hotels & Resorts Worldwide, Inc. v. Services, LLC, WIPO Case No. D2007-0829, Starwood Hotels & Resorts Worldwide, Inc. v. Kerryweb, WIPO Case No. D2007-1150, Starwood Hotels & Resorts Worldwide, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2007-1406).

The disputed domain name was registered in 2012. Presently, the website associated with the disputed domain name is a parked website containing pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it is one of the leading hotel and leisure companies in the world, and owns, manages and franchises over 1,000 properties in approximately one hundred countries. Complainant also argues that it is the fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned bands: SHERATON, WESTIN, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT Hotels.

The Complainant owns the SHERATON trademark, among others, which is used in connection with its goods and services in the hotel and leisure industry for over 80 years. The SHERATON brand exists since 1928 and became the first hotel chain to be listed on the New York Stock Exchange.

The SHERATON mark has become uniquely associated with the Complainant and its services, and has attained considerable fame and acclaim in the United States and throughout the world as a result of the extensive use of this mark by the Complainant in connection with hotel services and related goods and services, as well as the expenditure of large sums in promoting the mark on several communication means, such as television, print advertisements, on the Internet and other media. Consequently, the SHERATON mark represents enormous goodwill.

The Complainant owns, among others, the following websites:

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=1447”; and

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=3507”; and

“www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=3584” (Exhibit D of the Complaint).

The Complainant has also developed a significant Internet presence for the SHERATON mark, including in connection with its websites located at “www.sheraton.com” and “www.sheratonhotels.com”, both of which are also accessible through other Complainant-owned domain names and websites. These websites allow computer users to access information regarding Complainant’s various SHERATON hotels and related services and to learn more about Complainant and its SHERATON hotels.

Furthermore, the Complainant’s exclusive rights in its SHERATON marks have been recognized in several UDRP decisions that ordered the transfer of domain names to the Complainant (among others, Starwood Hotels & Resorts Worldwide, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0107, Starwood Hotels & Resorts Worldwide, Inc. v. Services, LLC, WIPO Case No. D2007-0829, Starwood Hotels & Resorts Worldwide, Inc. v. Kerryweb, WIPO Case No. D2007-1150, Starwood Hotels & Resorts Worldwide, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2007-1406).

The Complainant has registered the SHERATON mark in the United States in 1959, and has registered the mark in several countries around the world, while the Respondent registered the disputed domain name in 2012. Presently, the website associated with the disputed domain name is a mere parked website that is using the SHERATON mark to attract users so that the Respondent can generate “pay-per-click” revenue from ads that populate the website.

In fact, the website associated with the disputed domain name was an exact duplicate of the Complainant’s actual website for the Sheraton Sanya Resort, except for the fact that the site was in Chinese and listed a different phone number for reservations, which was also used on other similarly infringing websites.

Finally, the Complainant argues that there is no evidence that the Respondent is commonly known by either SHERATON or SANYA or that the Respondent has any plans to use the disputed domain name in connection with a bona fide use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a disputed domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s SHERATON trademark. The disputed domain name consists of nothing more than the Complainant’s registered trademark, the generic term “Hotel” and the geographic term “Sanya”, which is a city on Hainan Island in China and the generic “.com” (“gTLD”) extension.

According to previous panel decisions, the gTLD “.com” may be disregarded when assessing confusing similarity (Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723,

As held by previous panels, the addition to the geographical indicator such as “Sanya” to the SHERATON mark in the disputed domain name aggravates, rather than diminishes, the likelihood of confusion, because “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… even more so in the case of hotels” (Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).

Also, the addition of “hotel”, a non-distinctive word, to the Complainant’s SHERATON mark adds to, rather than diminishes, the likelihood of confusion (ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649.

Said additions to the disputed domain name are likely to redirect Internet users, who seek information on the Complainant’s hotel goods and services, to Respondent’s website and to lead these Internet users to reasonably believe that it is either the Complainant’s website or is somehow related to or approved by the Complainant, when this is not the case.

The Panelist finds that the first element of the Policy has been satisfied.

B. Rights or Legitimate Interests

Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, in order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case. (See, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent, who must demonstrate its rights or legitimate interests in the disputed domain name to the Panel.

It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been known by the disputed domain name as held in Compagnie de Saint Gobain V. Com-Union Corp., WIPO Case No. D2000-0020.

Furthermore, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the SHERATON mark in a domain name or in any other manner.

Also, as decided in Tracy Morgan v. Fundacion Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0078, Credit Industriel et Commercial S. A. v. XUBO, WIPO Case No. D2006-1268, and Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name if the disputed domain name directs Internet users to competing companies and websites so that it can generate “pay-per-click” revenue.

Finally, since the Complainant’s adoption and extensive use of the SHERATON trademark predates the Respondent’s registration of the disputed domain name, the burden is on the Respondent to prove its rights and legitimate interests in the disputed domain name.

Respondent has not come, forward with evidence of any such right or legitimate interest.

Therefore, the Panel finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Considering that the SHERATON trademark is one of the most famous trademarks in the travel and leisure industry, with international recognition throughout the world, it is, as stated by the Complainant, inconceivable that Respondent was unaware of said trademark when registering the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487).

In addition, in this case, which follows other previous UDRP panel decisions, it is found bad faith exists where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0613).

Moreover, Respondent’s use of the disputed domain name to deceptively draw traffic to its parked website, which contains links to Complainant’s competitors and others, to earn pay-per-click revenue constitutes bad faith use of the disputed domain name, opportunistically taking advantage of the Complainant’s fame and goodwill. This falls within the example of paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use of a domain name (Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649; Etro S.p.A. Domain Registrations, WIPO Case No. D2006-0207).

In conclusion, in this Panel’s view, the Respondent “intentionally attempted to attract, for commercial gain, internet users to [the] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] web site or location or of a product or service on [the] web site or location”. Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the third element of the Policy has been satisfied.

7. Decision

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 <sanyasheratonhotel.com> be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: April 7, 2014