Complainants are Starwood Hotels & Resorts Worldwide Inc, The Sheraton LLC, Sheraton International IP, LLC, Worldwide Franchise Systems, Inc (collectively “Complainant”) of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Jia Cheng of Guangzhou, Guangdong, China.
The disputed domain names <fourpointssheratonguangzhou.com> and <sheratonguangzhouhotels.com> are registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 18, 2014.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on January 6, 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.
Complainant is a leading hotel and leisure company that owns, manages or franchises a large number of properties in approximately 100 countries under several brands including SHERATON and FOUR POINTS. There are over 300 SHERATON hotels worldwide, including three in Guangzhou, China. Furthermore, there are over 120 FOUR POINTS hotels worldwide including one in Guangzhou, China.
Complainant owns numerous SHERATON and FOUR POINTS trademarks, claiming goods and services in the hotel and leisure industry, including several trademarks registered in China, e.g. the Chinese SHERATON trademarks Nos. 360,064, 166,137 and 5,479,280 which were registered between 1982 and 2009, and the Chinese FOUR POINTS trademarks Nos. 922798, 917196, 4968268, which were registered between 2007 and 2014. The oldest trademark registrations of SHERATON date back to 1959 and of FOUR POINTS to 1988.
According to the WhoIs records filed by Complainant as Exhibits A and B to the Complaint, the disputed domain names were registered on September 14, 2009 (<sheratonguangzhouhotels.com>) and on September 28, 2010 (<fourpointssheratonguangzhou.com>), respectively. As apparent from Exhibit L of the Complaint, Respondent is using the disputed domain names in connection with websites that look like official websites of Complainant and that use the trademarks SHERATON and/or FOUR POINTS not only in the disputed domain names, but also on each page of the websites in question.
Complainant contends that the disputed domain names are confusingly similar to its SHERATON and/or FOUR POINTS trademarks. It stresses the fact that the disputed domain names both entirely comprise the aforementioned trademark SHERATON, and that the disputed domain name <fourpointssheartonguangzhou.com> additionally comprises entirely the trademark FOUR POINTS.
Furthermore, Complainant states that Respondent is not affiliated or related to it in any way, and that it did not authorize Respondent to use the trademarks in question. Complainant also states that Respondent does not have any prior rights or legitimate interests in the disputed domain names and that he does not make any legitimate use of the disputed domain names.
Lastly, Complainant contends that Respondent registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the disputed domain names; and
C. The disputed domain names have been registered and are being used in bad faith.
Complainant holds several word marks for SHERATON and for FOUR POINTS, respectively. These trademarks are registered for various goods and services, in various classes, in many countries of the world. The trademarks put forward by Complainant are sufficient to ground the Complaint, at least under the first UDRP element, i.e. the issue of identity or confusing similarity.
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main elements in the disputed domain names, i.e. “sheraton” and “four points”, are identical with Complainant’s trademarks SHERATON and FOUR POINTS. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain names, would believe the disputed domain names belong to or are associated with Complainant. The integral incorporation of one or more trademarks into a domain name is typically sufficient to establish that a domain name is identical or confusingly similar to a trademark (RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059). The other elements of the disputed domain names, i.e. the elements “guangzhou” and “hotels” are not sufficient to avoid confusing similarity. Indeed, the addition of merely generic wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043).
Complainant rightly points out that the contrary is true in the case at hand, in the sense that the geographical indicator “Guangzhou” and the descriptive term “hotels” actually add to the confusion “because they relate directly to places where the Complainant has developed or might develop its core business through hotels and other leisure services.” (See Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136; see also Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658; see also ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649).
As far as the generic Top-Level Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore does not typically need to be taken into account when assessing the issue of identity or confusing similarity.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied.
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant has shown that it owns the SHERATON and FOUR POINTS trademarks, and it has explicitly contested having granted Respondent any right to use its trademarks.
In particular, Complainant contends (i) that Respondent has not been commonly known by any of the disputed domain names and (ii) that he has not used, or demonstrably prepared to use, the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, Complainant has shown that the disputed domain names are used in connection with websites that are intended to look like Complainant’s official websites, which – in the absence of any authorisation by Complainant – cannot be possibly viewed as a bona fide use. Indeed, using Complainant’s trademarks in a domain name over which Complainant has no control is not consistent with paragraphs 4(c)(i) and (iii) of the Policy.
Therefore, Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. In line with previous UDRP panel decisions, this means that the burden of production shifts to Respondent (e.g. Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Respondent having failed to respond to the Complaint, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and are being used in bad faith.
Complainant submits that Respondent registered and is using the disputed domain names in bad faith. The undisputed prima facie evidence establishes that Respondent is not affiliated with Complainant, and has no license or other authorisation to use Complainant’s trademark or name.
Respondent registered the disputed domain names well after Complainant’s marks were in use. Irrespective of whether Complainant’s trademarks SHERATON and FOUR POINTS are well known, as Complainant contends, the Panel finds that Respondent must have known about Complainant’s trademark and business when registering the disputed domain names. It is highly improbable to this Panel that Respondent would have registered the disputed domain names <fourpointssheratonguangzhou.com> and <sheratonguangzhouhotels.com>, had he been unaware of Complainant’s trademarks and of its hotels in Guangzhou, China.
These facts, combined with the fact that the disputed domain names are connected to websites that are clearly intended to look like official websites of Complainant, which in this Panel’s view cannot possibly constitute any legitimate purpose in the absence of Complainant’s authorisation, strongly indicate opportunistic bad faith. Therefore, registration and use in bad faith can be inferred.
Respondent has not submitted any evidence to rebut Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by Complainant and having regard to all the relevant circumstances, the Panel accepts Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning of 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 names <fourpointssheratonguangzhou.com> and <sheratonguangzhouhotels.com> be transferred to Complainant.
Lorenz Ehrler
Sole Panelist
Date: January 13, 2015