The Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and 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 Timtik of Jeddah, Saudi Arabia.
The disputed domain name <sheraton.website> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent sent emails to the Center on August 20, 23 and 24, 2015. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 11, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on September 22, 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 in this matter are Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland (United States), and its affiliated entities Sheraton LLC and Sheraton International IP, LLC (hereinafter, collectively "Complainant").
Complainant owns the SHERATON trademark, which it has used in connection with its goods and services in the hotel and leisure industry for over eighty (80) years.
It became the first hotel chain to be listed on the New York Stock Exchange. Today, there are more than four hundred (400) SHERATON hotels worldwide.
Complainant has obtained numerous registrations for the SHERATON trademark throughout the world in several classes in connection with its hotel services and related goods and services. A representative list of Complainant's registrations in the United States and Saudi Arabia are shown below:
|
Mark |
Country |
Class |
Registration No. |
Registration Date |
|
SHERATON |
United States |
42 |
679,027 |
May 19, 1959 |
|
SHERATON |
United States |
16 |
954,454 |
March 6, 1973 |
|
SHERATON |
United States |
42 |
1,784,580 |
July 27, 1993 |
|
SHERATON |
United States |
41 |
1,884,365 |
March 14, 1995 |
|
SHERATON |
United States |
41,43,44 |
3,020,845 |
November 29, 2005 |
|
SHERATON |
Saudi Arabia |
16 |
119/87 |
December 11, 1985 |
|
SHERATON |
Saudi Arabia |
43 |
0130/9 |
June 16, 1986 |
|
SHERATON |
Saudi Arabia |
45 |
1368/9 |
March 5, 2011 |
Complainant also has developed a prominent Internet presence for Complainant's SHERATON trademarks, including in connection with its websites located at "www.sheraton.com" and "www.sheratonhotels.com", all of which are also accessible through other Complainant-owned domain names and websites. The above-mentioned websites enable computer users to make reservations at Complainant's SHERATON hotels and to access information regarding Complainant and its various SHERATON hotels and related services.
Respondent registered the disputed domain name <sheraton.website> on July 10, 2015.
On July 10, 2015, Complainant sent a cease-and-desist letter by email to Respondent. Respondent replied to Complainant's letter on July 16, 2015 by offering to sell the disputed domain name to Complainant for USD 100,000.
According to Complainant, the disputed domain name should be considered as identical or at the very least confusingly similar to Complainant's prior trademark SHERATON.
Through Complainant's widespread, extensive use of the SHERATON trademark in connection with hotel services and various related goods and services, as well as its expenditure of large sums in promoting the mark on television, in print advertisements, on the Internet and in other media, the SHERATON mark has become uniquely associated with Complainant and its services, and has attained considerable fame and widespread acclaim in the United States, Saudi Arabia and throughout the world. As a result, Complainant claims that SHERATON trademark represents enormous goodwill.
Besides, Complainant's exclusive rights in and the fame of its SHERATON trademark have been recognized in several UDRP decisions that ordered the transfer of infringing domain names to Complainant.
There never has been any relationship between Complainant and Respondent and there never has been any license, permission or authorization for Respondent to use or register the disputed domain name. Further, Respondent is not and has never been an authorized licensee of the SHERATON trademarks.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant further contends that Respondent registered and is using the disputed domain name in bad faith. Respondent offered the disputed domain name at a price exceeding the registration cost, and is using the disputed domain name to attract Internet users by creating a likelihood of confusion between Complainant's trademark and the disputed domain name.
Respondent did not reply to Complainant's contentions.
Notwithstanding the default of Respondent, it remains up to Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
According to paragraph 4(a)(i) of the Policy, Complainant must prove that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has clearly established prior rights in the SHERATON trademark.
The disputed domain name <sheraton.website> is entirely and exclusively composed of the SHERATON trademark.
UDRP panels have commonly disregarded the generic Top-Level Domain ("gTLD") suffix in evaluating identity or confusing similarity. E.g., Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723.
In more recent cases involving new gTLDs, UDRP panels have maintained this practice, typically only considering the second level domain, see: BHP Billiton Innovation Pty Ltd v. Geosum, WIPO Case No. D2015-1272.
In this case, the Panel finds that the new gTLD suffix ".website" does not dispel the confusing similarity between the disputed domain name and Complainant's trademarks; further, the Panel agrees with Complainant that it likely adds to any confusion since the gTLD infers a relationship between the two words "sheraton" and "website".
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademarks.
The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is typically established if a complainant makes out a prima facie case and the respondent does not file any response.
The Panel draws the inference therefrom, in accordance with paragraph 14(b) of the Rules, that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not licensed or otherwise permitted Respondent to use the SHERATON trademark in any way, and there is nothing in the record that indicates that Respondent is commonly known by the disputed domain name.
In addition, there is no evidence that Respondent makes a legitimate noncommercial or fair use of the disputed domain name without intention to divert consumers, as addressed under paragraph 4(c)(iii) of the Policy.
Since the disputed domain name resolves to a unique web page where it is offered for sale, the Panel concludes there is no bona fide use.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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."
Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Given the widespread use and fame of Complainant's SHERATON mark, the Panel infers that Respondent had actual knowledge of Complainant's mark.
See, e.g., Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC and The Sheraton LLC v. Robert Tokich, WIPO Case No. D2015-0927 "Many UDRP panels so far have found that the SHERATON trademark is one of the most famous trademarks in the travel and leisure industry, with international recognition throughout the world."
The mark had been registered and widely used for many years when Respondent registered the disputed domain name.
Complainant has also provided evidence to show that Respondent replied to the cease-and-desist letter sent by Complainant's counsel with an offer to sell the disputed domain name for USD 100,000, which amount is well in excess of initial registration costs. The Panel finds such description and the annexes to be credible evidence, upon which Respondent has declined to comment.
The sum of USD 100,000 clearly would exceed Respondent's out-of- pocket expenses for registering. The Panel finds bad faith on the basis that Respondent "registered the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark . . . for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the [disputed] domain name". Policy paragraph 4(b)(i). Respondent's choice to refrain from filing a Response to this proceeding is cumulative evidence of bad faith.
The requirements of Policy paragraph 4(a)(iii) are fulfilled.
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.website> be transferred to Complainant.
Alexandre Nappey
Sole Panelist
Date: October 14, 2015