The Complainants are Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC , Sheraton International IP, LLC of Stamford, Connecticut, United States of America ("United States"), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Mikhail G. Polikutin of Yaroslavl, Russian Federation.
The disputed domain name <sheraton.moscow> is registered with Regional Network Information Center, JSC d/b/a RU-CENTER (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2015. On February 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2015, 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 February 18, 2015, the Center transmitted a communication regarding the language of the proceedings to the parties in both English and Russian. On February 21, 2015, the Respondent filed a request that Russian be recognized as the language of the proceedings. On February 24, 2015, the Complainants requested that English be recognized as the language of the proceeding. On March 6, 2015, the Center informed the parties that, given the provided submissions and circumstances of the case, it had decided to: (1) accept the Complaint as filed in English; (2) accept a Response in either English or Russian; (3) communicate to the Parties in both languages, and (4) appoint a Panel familiar with both languages mentioned above, if available.
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 in both Russian and English, and the proceedings commenced on March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. The Center received communications from the Respondent on February 11, 2015, February 13, 2015, February 14, 2015, February 21, 2015 and March 24, 2015. The Respondent did not file a formal response.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 10, 2015. 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 Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its affiliates, Sheraton LLC, a Delaware limited liability company, and Sheraton International IP, LLC, a Delaware limited liability company. The Complainants are one of the leading hotel and leisure companies in the world.
The expressive presence of Complainants in the hotel and leisure industry was achieved with years of investments that started in 1928 with the introduction of the Sheraton brand in the market which became the first hotel chain to be listed on the New York Stock Exchange. Today, there are over four hundred Sheraton hotels worldwide, including the Sheraton Palace Moscow.
The Complainants have several registrations for the SHERATON trademarks in several countries, including the United States of America and Russia Federation, as shows the list below:
|
Trademark Office |
Class |
Registration No. |
Registration Date |
|
U.S. Patent and Trademark Office |
42 |
679,027 |
May 19, 1959 |
|
U.S. Patent and Trademark Office |
16 |
954,454 |
March 6, 1973 |
|
U.S. Patent and Trademark Office |
42 |
1,784,580 |
July 27, 1993 |
|
U.S. Patent and Trademark Office |
41 |
1,884,365 |
March 14, 1995 |
|
U.S. Patent and Trademark Office |
41,43,44 |
3,020,845 |
November 29, 2005 |
|
The Federal Service for Intellectual Property (Rospatent) |
36 |
379809 |
May 22, 2009 |
|
The Federal Service for Intellectual Property (Rospatent) |
37,39 |
379819 |
March 22, 2009 |
|
The Federal Service for Intellectual Property(Rospatent) |
42 |
60833 |
March 9, 1978 |
The Complainants also registered their SHERATON trademark (CTM registration, No.154450) with the Trademark Clearinghouse ("TMCH") which means that when the Respondent attempted to register the disputed domain name he would have received "a warning notice" from the TMCH.
In addition, the Complainant has registered domain names reflecting its trademark such as: <sheraton.com> and <sheratonhotels.com>.
The Respondent is Mikhail G. Polikutin of Yaroslavl, Moscow. The Respondent did not provide any further information about himself.
The disputed domain name was registered on December 6, 2014. It resolves to an inactive page.
On December 8, 2014 the Complainants' attorney wrote a cease and desist letter. On December 9, 2014 the Respondent agreed to transfer the disputed domain name at that time. Then, the Respondent claimed that he is unable to access his domain management account and therefore cannot transfer the domain as promised without visiting the offices of the registry in person. The last communication from the Respondent before the Complaint was sent to the Centre was on January 15, 2015.
Firstly, the Complainants underline that the Respondent has offered to transfer the disputed domain name to them. Therefore, the Complainants request the Panel to order an immediate transfer of the disputed domain name without consideration of the paragraph 4(a) of the Policy elements.
Secondly, the Complainants contend that the disputed domain name is identical to its SHERATON trademark as it incorporates the trademark in its entirety. Moreover, the Complainants refer the Panel to many UDRP decisions stating that the addition of a generic Top-Level Domain ("gTLD") such as ".moscow" is irrelevant when determining whether a disputed domain name confusingly similar to a protected mark. In any case, the gTLD ".moscow" indicates a location in which the Complainants operate a well-known SHERATON hotel - the Sheraton Palace Moscow.
Thirdly, according to the Complainants the Respondent cannot demonstrate or establish any legitimate interests in the disputed domain name. The Complainants assert that they have not granted the Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating the SHERATON trademark. The Complainants also state that the disputed domain name is not, nor could be contended to be, a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent. Further, the burden is on the Respondent to establish his rights or legitimate interests in <sheraton.moscow>. The Complainants emphasize that the Respondent has never claimed to intend to use the disputed domain name for a legitimate purpose - to the contrary, his agreement to transfer <sheraton.moscow> to the Complainants is an acknowledgement that he lacks any legitimate right or purpose to keep it.
Finally, the Complainants contend that due to the world-wide fame of the SHERATON trademark, it is inconceivable that the Respondent was unaware of the Complainants' trademark when he registered the disputed domain name. In any event, according to the Complainants the Respondent received notice of the Complainant's rights from the TMCH when he registered <sheraton.moscow>. Moreover, the fact that the Respondent registered the <sheraton.moscow> without authorization is, in and of itself, evidence of bad faith. The Complainants assert that this case is an example of passive holding, but it does not preclude the Panel from finding bad faith.
The Respondent has never submitted any formal Response. On February 14, 2015 the Respondent has written: "I'm confirm that I will support tranferring during necessary time".
According to the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. 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 Complaint was filed in English. The Complainants requested English to be the language of proceedings claiming inter alia that the registration agreement is also available in the English language. All procedural communications by the Center was sent to the Respondent in both English and Russian. However, the Respondent has always been communicating with the Center and the Complainant in English.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English as per paragraph 11(a) of the Rules.
It is crucial to note that notwithstanding the Respondent's offer to voluntarily transfer the disputed domain name to the Complainants, this case may nevertheless be decided on the merits of the various arguments and issues raised under the Policy. Specifically, in the Panel's view, the Respondent's offer to transfer <sheraton.moscow> is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796).
While there is no formal response on the part of the Respondent, the Policy envisages that administrative proceedings may take place without any response at all. Even in such cases, and it is effectively the case here, the burden of proving all of the required elements of the case under paragraph 4 of the Policy must be borne by the Complainant.
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
The Complainants hold many trademark registrations for the SHERATON trademark. The disputed domain name <sheraton.moscow> incorporates the Complainants' trademark in its entirety without any other word or letter. The Panel notes that the generic gTLD ".moscow" should not be taken into account while comparing the Complainant's trademark and the disputed domain name. In any case, the Panel agrees with the Complainants contentions that gTLD ".moscow" may even increase the level of confusion of the Internet users as it indicates a location in which the Complainants operate a well-known SHERATON hotel - the Sheraton Palace Moscow.
Therefore, the Panel finds that the disputed domain name is identical to the SHERATON trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainants in any way; (b) the Respondent is neither licensed nor authorized by the Complainants to use the SHERATON trademark; (c) there is no evidence that the Respondent has been commonly known by the names used in the disputed domain names; (d) the disputed domain names do not resolve to any website; the Respondent.
Consequently, in the absence of any contrary allegations of the Respondent or any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no such rights or legitimate interests.
Therefore, the second element of paragraph 4(a) of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove the registration as well as use in bad faith use of the disputed domain names.
Firstly, the disputed domain names were registered in bad faith as the Respondent knew or should have known about the Complainants' rights in the SHERATON trademark. The world-wide fame of the SHERATON trademark has been already recognized by numerous UDRP panels (Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Wendy Webbe and Ancient Holding, LLC., WIPO Case No. D2014- 0260; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Worldwide Franchise Systems, Inc., Westin License Company v. Digi Real Estate Foundation, WIPO Case No. D2007-0107). The Panel underlines that the Respondent received notice of the Complainant's rights from the TMCH when he registered <sheraton.moscow> which is another proof of bad faith.
In the Panel's opinion, it is sufficient to establish a bad faith registration under the Policy.
Secondly, the disputed domain name is being used in bad faith as this case is a classic example of passive holding which was outlined in many UDRP cases (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615). The Panel believes that the very act of having acquired the disputed domain name raise the probability of the Respondent using them in a manner that is contrary to the Complainants' legal rights and legitimate interests.
The fact that the Respondent agreed voluntarily to transfer the disputed domain name to the Complainants does not undermine the bad faith finding in this case due to the delay in executing it, a result of which made the Complainants commence the administrative proceedings.
Thus, the Panel finds that the Complaint has satisfied 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 <sheraton.moscow> be transferred to the Complainant Starwood Hotels & Resorts Worldwide Inc., as indicated in the Complaint.
Piotr Nowaczyk
Sole Panelist
Date: April 24, 2014