The Complainants are Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC (hereinafter, “the Complainant”) of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Name Supply of Sweden.
The disputed domain name <sheraton.cab> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on July 22, 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 one of the leading hotel and leisure companies in the world and owns, manages or franchises over 1,100 properties in approximately 100 countries. The Complainant is owner, operator and franchisor of hotels and resorts operating under the following names: SHERATON, WESTIN, FOUR POINTS BY SHERATON, W, LE MÉRIDIEN, ST. REGIS, THE LUXURY COLLECTION, ALOFT and ELEMENT.
The Complainant has used the trademark SHERATON in connection with its goods and services in the hotel and leisure industry for over 80 years and became the first hotel chain to be listed on the New York Stock Exchange. Today, there are over 400 SHERATON hotels worldwide, including the Sheraton Stockholm Hotel.
The Complainant is the owner of several trademark registrations for SHERATON throughout the world in connection with its hotel services and related goods and services. Amongst others, the Complainant is the owner of the following trademark registrations:
- The United States trademark Nos. 679027, registered on May 19, 1059, in International class 42; 954454, registered on March 6, 1973, in International class 16; 1784580, registered on July 27, 1993, in International class 42; 1884365, registered on March 14, 1995 in International class 41; and 3020845, registered on November 29, 2005, in International classes 41, 43 and 44;
- The Swedish trademark Nos. 182695, registered on August 13, 1982, in class 42; and 155253, registered on April 30, 1976, in class 42;
- The Community trademark No. 154450, registered on January 20, 1999, in class 25, 41 and 42.
The Complainant operates on the Internet through its web sites “www.sheraton.com” and “www.sheratonhotels.com”, where users are enabled to make reservations at Complainant’s SHERATON hotels and to access information regarding the Complainant and its hotels and related services.
The disputed domain name <sheraton.cab> was registered on March 12, 2014, and is pointed to a parking page of the concerned Registrar.
The Complainant states that, through its widespread and extensive use of the trademark SHERATON in connection with hotel services and various related goods and services, as well as its investments of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the trademark SHERATON has become uniquely associated with the Complainant and its services, and has acquired considerable fame and widespread acclaim in the United States, Argentina, Sweden, and throughout the world. The Complainant also underlines that its exclusive rights in the trademark SHERATON have been recognized in several WIPO UDRP decisions that ordered the transfer of infringing domain names to the Complainant.
The Complainant informs the Panel that, in order to protect its trademark SHERATON from cybersquatting, the Complainant submitted its Community trademark No. 154450 to the Trademark Clearinghouse (TMCH) and highlights that, therefore, when the Respondent attempted to register the disputed domain name, it has received “a warning notice” from the concerned registrar and, despite having received said notice, proceeded with the registration of the disputed domain name, being fully aware that its registration conflicted with the Complainant’s trademark.
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark SHERATON since the generic Top-Level Domain (gTLD) indicator “.cab” cannot be taken into consideration when judging confusing similarity.
The Complainant points out that, upon seeing the disputed domain name, consumers will reasonably believe that it is either owned by the Complainant or somehow related to or approved by the Complainant, when that is not the case.
With reference to the Respondent’s right or legitimate interest in the disputed domain name, the Complainant states that it has not granted Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademark SHERATON. The Complainant also states that the disputed domain name is not, nor could it 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.
The Complainant contends that the Respondent targeted the Complainant’s trademark, among other hotel and casino marks that it registered in the “.cab” gTLD, being well aware of the fame of the trademark SHERATON when it registered the Domain Name. The Complainant also alleges that the Respondent’s purpose when registering the disputed domain name was to offer the domain for sale, at a price substantially greater than what he paid for it, and to falsely imply some sort of endorsement by or connection with the Complainant and its SHERATON hotels that does not exist. The Complainant concludes that such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
As to bad faith at the time of the registration, the Complainant states that the Complainant’s trademark SHERATON is one of the best-known hotel-related marks in the world and has been found to be famous or well-known around the world in several prior UDRP disputes. The Complainant also highlights that the Respondent received notice of the Complainant’s rights via the TMCH when it registered the disputed domain name.
As to the use of the disputed domain name, the Complainant submits that the web site currently appearing at the Internet address associated with the disputed domain name merely displays a parking page provided by the concerned Registrar, which indicates that Respondent has not directed the DNS servers to any web site since the registration and solicits offers from visitors to the page to purchase the disputed domain name through the Registrar’s domain broker service.
The Complainant therefore states that, by registering and using the disputed domain name, the Respondent has unfairly capitalized on the goodwill and fame of Complainant’s trademark and improperly benefited financially in violation of the Policy, paragraph 4(b)(iv), which provides relief for a trademark owner when “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site …, by creating a likelihood of confusion” with the Complainant’s trademarks “as to the source, sponsorship, affiliation, or endorsement of [its] web site … or of a product or service on [its] web site…”.
The Complainant also highlights that the fact that the disputed domain name is not currently associated with an active web site does not exclude bad faith registration and use and asserts that the offer to sell the disputed domain name at the web page to which the disputed domain name resolves is also evidence of bad faith use.
As additional circumstances evidencing bad faith, the Complainant states that the Respondent has registered several additional domain names that suggest that the Respondent plans to, or is currently offering, taxi cab information or services to guests of several famous hotels, such as <hilton.cab> and <mariott.cab> and casinos, like <mgmgrand.cab>, <caesars.cab>, <mandalay.cab> and <wynn.cab>.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of several trademark registrations for SHERATON and has, therefore, established rights in the trademark SHERATON.
The disputed domain name <sheraton.cab> entirely reproduces the Complainant’s registered trademark with the mere addition of the gTLD “.cab”, which, in line with prior UDRP decisions issued under the Policy, can be disregarded for the purpose of determining identity or confusing similarity in UDRP proceedings.
The Panel therefore finds that the disputed domain name is identical to the Complainant’s registered trademark SHERATON according to paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate the existence of any rights and/or legitimate interests in the disputed domain name.
The Complainant has not authorized the Respondent’s use of the trademark SHERATON and there is no evidence showing that the Respondent might be commonly known by the disputed domain name or by a name corresponding to it.
The Panel notes that the disputed domain name has not been used in connection with an offering of goods of services, as it has been pointed to a parking page of the concerned Registrar and no evidence has been provided by the Respondent as to a possible preparation to use of the disputed domain name in good faith.
Furthermore, in view of the identity of the disputed domain name with the Complainant’s trademark, which is highly distinctive and exclusively referable to the Complainant, the Panel cannot conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain name (see, along these lines, Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229).
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
In light of the Complainant’s prior registration and use of the trademark SHERATON in connection with the Complainant’s hotels and related goods and services in several countries of the world, including in Sweden, where the Respondent is based, the Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
Moreover, since the Complainant’s Community trademark No. 154450 for SHERATON was submitted to the Trademark Clearinghouse and the disputed domain name was registered during the Trademark Claims period of the “.cab” gTLD, the Respondent was provided with a Trademark Claims notice of the Complainant’s rights in the trademark SHERATON.
Furthermore, the unauthorized registration of a domain name identical to the Complainant’s well-known trademark suggests opportunistic bad faith. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to the use of the disputed domain name, the Panel notes that the disputed domain name is currently pointed to a parking page of the concerned Registrar displaying links which promote the Registrar’s registration and brokerage services. The Panel finds that, while the presence of said links on the page is likely not ascribable to the Respondent and is thus not sufficient to demonstrate that the Respondent is actively using the disputed domain name by offering it for sale, the Respondent’s redirection to a mere parking page does not prevent a finding of bad faith registration and use.
Indeed, as mentioned above, the Panel finds that the Respondent has no right or legitimate interest in the disputed domain name and, in view of the identity of the disputed domain name with the Complainant’s well-known trademark, any use would result in misleading diversion, since users visiting a web site published at the disputed domain name could believe that said web site be operated by the Complainant.
Furthermore, as an additional circumstance evidencing bad faith, the Respondent’s registration of several domain names identical or confusingly similar to trademarks used by third parties in connection with renown hotels and casinos, as highlighted above and in Annex K to the Complaint, suggests that the owner has engaged in a pattern of domain name registrations corresponding to trademarks, likely for profit, by preventing the legitimate trademark owners to reflect their distinctive signs in the corresponding domain names.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to 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.cab> be transferred to the Complainant Starwood Hotels & Resorts Worldwide, Inc.
Luca Barbero
Sole Panelist
Date: August 4, 2014