The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC of Stamford, Connecticut, United States of America ("USA"), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Lin Qing Feng of Guangzhou, Guangdong, China.
The disputed domain name <sanya-sheraton.com> (the "Disputed Domain Name") is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the "Registrar").
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 26, 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. On February 26, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 26, 2014, 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 March 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 1, 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.
The Complainant is a leading hotel and leisure company with over 1,000 properties in about 100 countries. In particular, the Complainant owns, operates and franchises hotels and resorts under the trademark SHERATON among others (e.g., WESTIN). The Complainant has been using the trademark SHERATON since 1928. There are over 400 Sheraton hotels worldwide including in China (Sheraton Sanya Resort, Sheraton Sanya Haitang Bay Resort, and soon to be opened Sheraton Sanya Tufu Bay Resort). Sheraton Sanya Resort is located in the city of Sanya on Hainan Island in China.
The Complainant has several trademark registrations for SHERATON including:
|
Country |
Registration No. |
Registration Date |
|
USA |
679,027 |
May 19, 1959 |
|
USA |
954,454 |
March 6, 1973 |
|
USA |
1,784,580 |
July 27, 1993 |
|
USA |
1,884,365 |
March 14, 1995 |
|
USA |
3,020,845 |
November 29, 2005 |
|
China |
360,064 |
August 30, 1989 |
|
China |
166,137 |
November 30, 1982 |
|
China |
5,479,280 |
September 21, 2009 |
The Complainant operates websites under the domain names <starwoodhotels.com>, <sheraton.com>, <sheratonhotels.com> which offer online hotel reservation services. The Complainant's websites prominently feature the following trademark (the "S Logo"):
Details regarding the Complainant's Sheraton Sanya Resort are located online at the following webpage which prominently features the S Logo:
"www.starwoodhotels.com/sheraton/property/overview/index.html?propertyID=1447"
The website also showcased photographs, in particular, one depicting a hotel room and another showing a skyline view of the resort.
SHERATON-formative domain names appear to be a popular subject matter of disputes under the Policy, considering the Complainant's history of cases (see 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; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Sheraton International, Inc., Westin Hotel Management L.P. v. Services LLC, WIPO Case No. D2007-0829; Starwood Hotels & Resorts Worldwide, Inc. , The Sheraton, LLC , Worldwide Franchise Systems, Inc. , Sheraton International, Inc. v. KerryWeb Enterprise, Inc , North West Enterprise, Inc. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc., Westin Hotel Management, L.P. v. Caribbean Online International Ltd., WIPO Case No. D2007-1406; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Hong Yunju, WIPO Case No. D2007-1764; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Sean Gerrity, WIPO Case No. D2009-0277; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC, Sheraton International, Inc. v. Pearson Network, S.A. / President, WIPO Case No. D2009-0328).
There is limited information on the Respondent. It is noted that the WhoIs database provided a building name but omits the street name and unit number for the Respondent's address. The telephone and fax numbers both comprised a string of the same number repeated eight times. The Respondent was previously a respondent of another complaint filed by the Complainant under the Policy (Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, WIPO Case No. D2013-0840) in relation to the domain name <sz-westin.com>.
The Disputed Domain Name was registered on July 21, 2013 and resolved to a website which also features the S Logo (albeit in gold on a black background) next to the words "Sheraton Sanya Resort". The website also included the photographs of the hotel room and skyline view found on the Complainant's webpage for the Sheraton Sanya Resort. The website appeared to promote the Sheraton Sanya Resort and listed a telephone number for reservations different from the Complainant's actual telephone number for reservations. The same telephone number was also listed as the reservations number on websites at "www.sanya-hilton.com/contact.html" (purportedly associated with the Hilton Sanya Resort & Spa), "www.sanya-ritzcarlton.com/contact.html" (purportedly associated with Ritz-Carlton Sanya) and "www.sanya-intercontinental.com/contact.html" (purportedly associated with the International Sanya Resort). The footer of the website contains the Chinese characters "非官方网站" (translated, "non-official website").
The Complainant sent a cease and desist letter to the Respondent on January 22, 2014. The Complainant did not receive any reply from the Respondent.
The Complainant contends that:
(i) The Disputed Domain Name is confusingly similar to the SHERATON mark. It consists of nothing more than the SHERATON mark and the geographical indicator, "Sanya", a city in China, separated by a hyphen. Visitors to the website resolved from the Disputed Domain Name will be led into thinking that the website is operated by or related to the Complainant.
(ii) The Respondent has no legitimate interest or rights in the Disputed Domain Name. The Complainant registered the trademark significantly earlier than the registration of the Disputed Domain Name. The Complainant has not granted to the Respondent any form of license, permission or other right to use the SHERATON mark in any way. The Disputed Domain Name is not a name or nickname of the Respondent.
(ii) The Respondent registered and is using the Disputed Domain Name in bad faith. The SHERATON mark is well-known. It is inconceivable that the Respondent was unaware of the SHERATON mark when he registered the Disputed Domain Name. The Respondent's use of the Complainant's trademarks under the Disputed Domain Name confirms the Respondent's awareness of the fame in the SHERATON mark. The disclaimer on the website resolved from the Disputed Domain Name is insufficient to disassociate the Respondent from the Complainant. The Respondent has unfairly capitalized on the goodwill and fame of the Complainant's SHERATON mark and improperly benefited financially in violation of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
The language of the registration agreement was Chinese and the default language of the proceeding would therefore be Chinese. However paragraph 11(a) of the Rules empowers the Panel to determine otherwise having regard to the circumstances.
The Complainant has requested for the language of this proceeding to be English. Having reviewed the circumstances, the Panel hereby determines that the language of the proceeding shall be English. In arriving at this decision, the Panel took the following factors into consideration:
(a) The Respondent did not object to the Complainant's request that English be adopted;
(b) By failing to file a Response, the Respondent has elected not to participate in the proceeding;
(c) The parties were previously part of a dispute resolution process under the Policy conducted in English (Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, supra);
(d) The Complaint has already been filed in English. Insisting that the proceeding should be in Chinese will likely lead to unnecessary delay and burden on the Complainant; and
(e) There is no foreseeable benefit to the parties if the language of the proceedings is in Chinese
The Panel accepts that the Complainant is the owner of the SHERATON mark. The Disputed Domain Name incorporates the SHERATON mark in its entirety. The prefix "sanya" in the Disputed Domain Name is a geographical term. It is the consensus view of past UDRP panels that the addition of such prefixes to a domain name is insufficient to distinguish the domain name from the trademark incorporated in the domain name. The Panel agrees that the prefix "sanya" does not assist to distinguish the Disputed Domain Name from the SHERATON mark and holds that the first limb of paragraph 4(a) has been established on the facts.
The Complainant is required to at least show a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. It then falls on the Respondent to rebut the prima facie case. The Complainant has confirmed that the Complainant did not grant to the Respondent any license, permission or other right to use the SHERATON mark. There is also no evidence to suggest that the Respondent is known by the Disputed Domain Name. Therefore, the Panel is satisfied that the Complainant has established a prima facie case. Since no response was filed, the prima facie case has not been rebutted. The Panel accordingly finds for the Complainant in relation to the second limb of paragraph 4(a).
Paragraph 4(b)(iv) of the Policy identifies the following situation of bad faith registration and use:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
On the facts, it is inconceivable that the Respondent was not aware of the SHERATON mark at the time the Disputed Domain Name was registered. The use of the SHERATON mark, the "S Logo", and the name of the Complainant's Sheraton Sanya Resort on the website resolved from the Disputed Domain Name show beyond doubt that the Respondent not only had fore-knowledge of the SHERATON mark, but also that the Respondent registered the Disputed Domain Name to intentionally attract Internet users to the associated website by creating a likelihood of confusion with the SHERATON mark for commercial gain. It is obvious that the reservations telephone number on the website would have diverted potential customers of the Complainant's Sheraton Sanya Resort and other hotel franchises (i.e., Hilton, InterContinental, Ritz-Carlton) to the commercial benefit of the Respondent.
The Panel agrees with the Complainant that the Chinese characters "非官方网站" in the footer of the website are insufficient to dissociate the website from the Complainant. The claim that the website resolved from the Disputed Domain Name is a "non-official website" does not assist to inform a reasonable visitor that the website is unauthorized, licensed, endorsed, affiliated or sponsored by the Complainant. In any event, by the time a visitor notices the disclaimer, the Respondent would have already succeeded in attracting the visitor to the website.
In addition, the evidence shows that the contact particulars of the Respondent in the WhoIs database are invalid. The Center failed in its attempt to communicate with the Respondent using the address (delivery failed) and facsimile number (no dial tone). A registrant has a duty to act honestly and provide valid contact particulars when registering a domain name. The failure of the Respondent to do so in this case is further evidence of bad faith registration and use.
In the circumstances, the Panel concludes that the third limb of paragraph 4(a) of the Policy is also established.
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 <sanya-sheraton.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: April 29, 2014