The Complainants are Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. of Stamford, Connecticut, United States of America (collectively, the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is DVLPMNT Marketing of Charlestown, Nevis, Saint Kitts and Nevis.
The disputed domain name <westincasuarina.com> is registered with DNC Holdings, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2014. On February 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2014.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on March 21, 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 paragraph 7 of the Rules.
The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises over 1,100 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 bands: WESTIN, SHERATON, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT Hotels.
The Complainant owns the WESTIN trademark, among others, which is used in connection with its goods and services in the hotel and leisure industry. WESTIN hotels exist since 1981 and target both business and leisure travelers for spa retreats and comfort amenities.
There are presently almost 250 existing and planned WESTIN hotels in over 40 countries worldwide.
The use of the WESTIN trademark in connection with hotel services and related goods and services, and the large investments in promoting the mark on the appropriate communication means, such as television, print advertisements, Internet and other media, the WESTIN mark has become associated with the Complainant and its services, and has attained considerable fame and widespread acclaim throughout the world. Thus, the WESTIN mark represents enormous goodwill.
Furthermore, the Complainant has obtained several registrations for the WESTIN mark throughout the world, including in the Respondent’s home country of Saint Kitts and Nevis, in connection with its hotel services and related goods and services. For example, the Complainant owns the following registrations in the United States (Exhibit D of the Complaint):
|
Mark |
Country |
Class |
Registration No. |
Registration Date |
|
WESTIN |
United States |
42 |
1,320,080 |
Feb. 12, 1985 |
|
WESTIN |
United States |
41 |
1,720,799 |
Sept. 29, 1992 |
|
WESTIN |
United States |
36 |
2,257,629 |
June 29, 1999 |
|
WESTIN |
United States |
36 |
99-S/2007 |
Sept. 6, 2007 |
|
WESTIN |
United States |
42 |
276-S/2007 |
July 28, 1997 |
In addition to the registrations listed above, the Complainant also owns several non-U.S. trademark registrations (Exhibit E of the Complaint).
The Complainant has also developed a significant Internet presence for the WESTIN mark, including in connection with its websites located at “www.westin.com” and “www.westinhotels.com”, both of which are also accessible through other the Complainant-owned domain names. These websites allow computer users to access information regarding the Complainant’s various WESTIN hotels and related services and to learn more about the Complainant and its WESTIN hotels (Exhibit F of the Complaint).
The Complainant had two hotels that operated under the name Westin Casuarina: The Westin Casuarina Resort & Spa, Grand Cayman and The Westin Casuarina Las Vegas Hotel, Casino & Spa. Although both properties have been renamed, they are still commonly referred to as the “Westin Casuarina”.
Each of these Casuarina hotels has a dedicated domain name and website: “www.westingrandcayman.com” and “www.westinvegas.com”, respectively (Exhibit G of the Complaint).
Recently, the Complainant learned that the Respondent had registered the disputed domain name, which incorporates the Complainant’s WESTIN mark in its entirety, and the Respondent is using the disputed domain name to mislead Internet users to believe that the disputed domain name and its owners are somehow related to, endorsed by, or otherwise affiliated with the Complainant.
The Complainant has been using the WESTIN mark since 1981, while the Respondent did not acquire the registration for the disputed domain name until June 26, 2013 (Exhibits A, D, E and H of the Complaint). Presently, the website associated with the disputed domain name is a mere parked website that is using the WESTIN mark to attract users so that the Respondent can generate pay-per-click revenue from ads that populate the website.
The Complainant’s counsel sent a letter to the Respondent on September 6, 2013 requesting that the Respondent agree to voluntarily transfer the disputed domain name to the Complainant (Exhibit J of the Complaint). The Respondent has not yet responded to this letter.
The Complainant refers to several UDRP decisions on confusingly similar domain names to highlight the fact that the inclusion of the term “Casuarina” in the domain name adds to rather than diminishes the likelihood of confusion between the Complainant’s WESTIN trademark and the Respondent’s use of the WESTIN mark in the disputed domain name. In fact, the “westin” portion of the domain name is identical to the Complainant’s WESTIN trademark, which is likely to redirect consumers to the Respondent’s website in the reasonable believe that it is either the Complainant’s website or is somehow related to or approved by the Complainant, when it is not the case.
The Complainant also mentions previous UDRP decisions to underline that once a prima facie case is made the burden to demonstrate the Respondent’s rights or legitimate interests in the disputed domain name is on the Respondent and that it cannot in this case demonstrate such rights or legitimate interests.
The Complainant claims that the Respondent has no connection or affiliation to the Complainant or to the hotel services and goods developed by the Complainant and has not been authorized to use and register the disputed domain name or to seek a registration of any domain name incorporating said mark.
In addition, the Complainant contends that the Respondent’s registration of the disputed domain name has no purpose other than to use the Complainant’s fame to attract people to view advertising on the site for the Respondent’s commercial benefit. The Respondent’s only use of the disputed domain name is in connection with the conduct described above – to misdirect Internet traffic to competing companies and websites so that it can generate pay-per-click revenue.
Finally, the Complainant argues that it is inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the disputed domain name, as it is one of the most famous trademarks in the hotel and resort industry and enjoys international recognition. The mere fact that the Respondent registered the confusingly similar disputed domain name without authorization is, in itself, evidence of its bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
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).
The disputed domain name is confusingly similar to the Complainant’s WESTIN trademark. The disputed domain name consists of nothing more than the Complainant’s registered trademark, the term “Casuarina” and the generic .com (“gTLD”) extension.
According to previous Panel decisions, the gTLD “.com” may be disregarded when assessing whether a domain name is confusingly similar to a complainant’s trademark (Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723).
As alleged by the Complainant, the addition of the term “Casuarina” to the WESTIN mark in the disputed domain name is clearly meant to trade upon the historic connection between the WESTIN trademark and the name “Casuarina”. It has been held by previous Panels that the addition of a generic term – in the case at hand, “Casuarina” - with a famous trademark – in the case at hand, the WESTIN mark – aggravates rather than diminishes the level of confusing similarity (Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Said addition to the disputed domain name is likely to redirect Internet users, who seek information on the Complainant’s hotel goods and services, to the Respondent’s website and 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.
The Panel finds that the first element of the Policy has been satisfied.
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 found 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.
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.
Furthermore, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the WESTIN mark in a domain name or in any other manner.
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 non commercial 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.
Since the Respondent is using the disputed domain name solely in connection with a website that offers sponsored results, it is apparent that the only reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to trade on the Complainant’s fame and not for any legitimate noncommercial or fair use purpose (see, e.g., Chinmoy Kumar Ghose v. ICDSoft.com & Maria Sliwa, WIPO Case No. D2003-0248).
The Panel finds that the second element of the Policy has been satisfied.
Being the WESTIN trademark one of the most famous trademarks in the hotel and resort industry, with international recognition throughout the world, it is, as stated by the Complainant, inconceivable that Respondent was unaware of such trademark when registering the disputed domain name (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487.
In addition, in this case, as well as in other previous UDRP cases, the Panel is of the opinion that 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; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Moreover, the disputed domain name connects to a web page that provides sponsored links, which shows that the Respondent is seeking to profit from the disputed domain name by diverting Internet traffic to pay-for-traffic web engines that presumably pay compensation to the Respondent (Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Nintendo of America, Inc. v. Pokemonplanet.net, et al., WIPO Case No. D2001-1020). This falls within the prohibitions of the Policy and therefore constitutes bad faith registration and use of a domain name (Scania CV AB (Publ) v. Unaci, Inc., WIPO D2005-0585).
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.
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 <westincasuarina.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: April 1, 2014