Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton LLC and Sheraton International IP, LLC, of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Laura Puckett of Naples, Florida, United States of America.
The disputed domain names <luxurycollection.build> and <luxurycollection.rentals> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2016. On January 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 19, 2016 the Center sent an email requesting Complainants to clarify its choice of jurisdiction. On the same date, Complainants filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 17, 2016. 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.
Late and Supplemental filings
On March 9, 2016, Respondent sent an email to the Center, which was forwarded to the Panel. This email was received one month after the due date for submission of a Response. Respondent stated that she had not been given adequate notice to secure counsel in this case and thus was presenting her own arguments. Complainants, on the other hand, replied that Respondent has had ample time to secure counsel and respond to the Complaint, observing that Respondent acknowledged receiving emails relating to this matter on January 19, 2016, three weeks before the Response was due and Complainants’ counsel sent a copy of the Complaint to Respondent that same day. Complainants have now also submitted arguments in response to Respondent’s late-filed email responses.
The Rules make no express provision for the filing of materials by either party at this stage of the proceedings. The Rules provide for the submission of the complaint by a complainant and the response by a respondent. No express provision is made for late or supplemental filings by either party. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either Party.
Accordingly, the Panel determines that it will accept Respondent’s late-filed email responses dated March 9 and 11, 2016. The Panel will also accept and consider Complainants’ supplemental filings in this case.
Complainants are a leading hotel and leisure company group, which own, manage or franchise over 1,100 properties in approximately 100 countries. Complainants are a fully integrated owner, operator and franchisor of hotels and resorts operating under the following names: The Luxury Collection, Sheraton, Four Points By Sheraton, Westin, W, Le Meridien, St. Regis, Tribute Portfolio, Aloft and Element.
Complainants own the THE LUXURY COLLECTION and LUXURY COLLECTION trademarks, which are used in connection with its luxury property holdings, goods and services in the hotel and leisure industry. Complainants obtained their first U.S. registration for THE LUXURY COLLECTION marks in 1997. Complainants have obtained numerous registrations for these marks throughout the world in connection with its hotel services and related goods and services, including the following:
|
Mark |
Country |
Class |
Registration No. |
Registration Date |
|
THE LUXURY COLLECTION |
United States of America |
42 |
2033783 |
January 28, 1997 |
|
THE LUXURY COLLECTION |
United States of America |
45 |
3335081 |
November 13, 2007 |
|
THE LUXURY COLLECTION |
United States of America |
44 |
3335082 |
November 13, 2007 |
|
THE LUXURY COLLECTION |
United States of America |
39 |
4099802 |
February 14, 2012 |
|
LUXURY COLLECTION |
Benelux |
43 |
781420 |
December 2, 2005 |
As of the filing date of this Complaint, there are more than 100 existing and planned The Luxury Collection hotels in over 30 countries worldwide, including in the state of Florida where Respondent is located. Each hotel in Complainants’ The Luxury Collection group is a unique luxury hotel or resort, including palaces, remote retreats and modem facilities, each distinguished by unique and high quality properties, decor, settings and service.
Complainants have developed an Internet presence for their THE LUXURY COLLECTION marks, with a website located at “www.theluxurycollection.com”, which is also accessible through other of Complainants’ owned domain names. The website enables users to access information and learn about Complainants and their The Luxury Collection hotels and related services. The domain name <theluxurycollection.com> was registered by Complainants on December 26, 2007.
The Domain Names <luxurycollection.build> and <luxurycollection.rentals> were registered by Respondent on July 16, 2014 and July 28, 2014, respectively. Respondent operates a number of businesses in Naples, Florida, including luxury vacations rentals and sales of luxury real estate, as indicated by Respondent’s website at “www.luxurygroup.net”.
(i) Identical or Confusingly Similar
Complainants state that through widespread use of their THE LUXURY COLLECTION marks in connection with hotel services and related goods and services, and their expenditure of large sums in promoting the marks on television, in print advertisements, on the Internet and in other media, their THE LUXURY COLLECTION marks have become uniquely associated with Complainants and their services, and have attained fame and widespread acclaim in the United States and throughout the world. As a result, Complainants’ THE LUXURY COLLECTION marks represent enormous goodwill.
Complainants emphasize that Respondent registered the Domain Names in July 2014, long after Complainants first acquired rights in their THE LUXURY COLLECTION marks. To protect their THE LUXURY COLLECTION marks from cybersquatting, Complainants registered their trademarks with the Trademark Clearinghouse (“TMCH”), specifically the Benelux Trademark Reg. No. 781420 for LUXURY COLLECTION and the CTM Trademark Reg. No. 154500 for THE LUXURY COLLECTION. Because these marks are registered with the TMCH, Complainants assert that when Respondent attempted to register the Domain Names, she would have received a warning notice from the TMCH. Despite having received this notice, Respondent proceeded with registration of the Domain Names, fully aware that the registrations conflicted with Complainants’ THE LUXURY COLLECTION trademark registrations.
Complainants observe that there is no active website associated with either of the Domain Names other than a parked holding page from the Registrar. With no content on any website associated with either of the Domain Names, Respondent is making no actual use of the Domain Names.
Complainants’ counsel sent letters to Respondent on August 4, 2014 and again on August 25, 2015 notifying Respondent of Complainants’ rights in their LUXURY COLLECTION and THE LUXURY COLLECTION trademarks and requesting that Respondent agree to voluntarily transfer the Domain Names to Complainants. Respondent has not replied to these letters.
Complainants contend that the Domain Names are identical to Complainants’ registered LUXURY COLLECTION trademark, and incorporate Complainants’ registered THE LUXURY COLLECTION mark but for the article “the,” making the Domain Names confusingly similar to this latter mark. The Domain Names also could be said to consist exclusively of Complainants’ LUXURY COLLECTION trademark.
Complainants maintain that the inclusion of the generic Top-Level Domain (“gTLD”) indicators, “.build” and “.rentals”, does not distinguish the Domain Names from Complainants’ marks. In this instance, however, the gTLDs exacerbate the likelihood of confusion between the Domain Names and Complainants’ marks, because consumers are likely to connect the gTLD terms (“build” and “rentals”) with goods or services offered under Complainants’ marks and covered by Complainants’ trademark registrations.
In sum, the Domain Names are identical to Complainants’ LUXURY COLLECTION trademark, or confusingly similar to Complainants’ THE LUXURY COLLECTION mark. The remaining gTLD portion of each of the Domain Names only furthers the false association with Complainants and their business.
(ii) Rights or Legitimate Interests
Complainants contend that given their adoption and extensive use of the trademarks LUXURY COLLECTION and THE LUXURY COLLECTION predates Respondent’s registration of the Domain Names, the burden is on Respondent to establish rights or legitimate interests in the Domain Names.
Complainants contend that Respondent cannot demonstrate or establish any rights or legitimate interests in the Domain Names. There is no evidence that Respondent has ever been known by the Domain Names, further demonstrating that Respondent has no legitimate interests in or rights to the Domain Names. Complainants contend Respondent was aware of Complainants’ rights in their THE LUXURY COLLECTION marks, as Respondent received notice of Complainants’ registered LUXURY COLLECTION and THE LUXURY COLLECTION marks from the TMCH when she applied to register the Domain Names. Respondent has no connection or affiliation with Complainants and has not received any license or consent, express or implied, to use Complainants’ marks in a domain name or in any other manner. To the contrary, Complainants sent two letters to Respondent objecting to Respondent’s use and registration of the Domain Names, but Respondent ignored the letters and has not agreed to transfer the Domain Names to Complainants. Thus, Complainants argue there is no basis for Respondent to claim that she has legitimately registered the Domain Names, which consist of nothing more than Complainants’ LUXURY COLLECTION and THE LUXURY COLLECTION marks plus the “.build” and “.rentals” gTLDs.
(iii) Registered and Used in Bad Faith
Complainants argue that Respondent’s failure to respond to Complainants’ letters requesting that Respondent agree to voluntarily transfer the Domain Names to Complainants is evidence of bad faith. Complainants’ LUXURY COLLECTION marks are among the most famous trademarks in the hotel and resort industry and each enjoy international recognition. It is therefore inconceivable that Respondent was unaware of Complainants’ trademarks when registering the Domain Names. Complainants contend that the fact that Respondent registered the confusingly similar Domain Names without authorization is, in and of itself, evidence of its bad faith registration.
Complainants also assert that Respondent’s passive holding of the Domain Names is itself bad faith use in view of the renown of the LUXURY COLLECTION marks and absence of likely legitimate uses by an unauthorized party like Respondent. Complainants refer to the case, Comerica Inc. v. Horoshy, Inc., WIPO Case No. D2004-0615, where the panel stated that “[t]he very act of having acquired [the domain names incorporating the Complainant’s mark] raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights.”
Therefore, for all of the reasons set forth above, Complainants claim that Respondent has registered and used the Domain Names in bad faith under the Policy.
Respondent emphasizes that she legally purchased the Domain Names. She asserts that “luxury collection” is a generic and descriptive phrase, which does not meet trademark guidelines and can imply a luxury collection of anything from silverware to cars. Although Complainants claim they have a recognized brand in their THE LUXURY COLLECTION mark, Respondent states that she took a poll of over 100 people and no one identified this brand. Further, Respondent contends that Complainants’ trademarks only cover the following categories, none of which correspond to an area where Respondent intends to use the Domain Names:
- Spa services, namely, cosmetic body care services
- Online trip and travel reservation services
- Hotel concierge services
- Hotel, resort, restaurant, lounge, bar services
Respondent states that she would agree not to use the Domain Names in any of the categories where Complainants hold trademark rights at this time.
Respondent argues that the Domain Names are not identical or confusingly similar to Complainants’ THE LUXURY COLLECTION mark. Respondent emphasizes that while Complainants own the trademark THE LUXURY COLLECTION, they do not own the mark LUXURY COLLECTION, as falsely claimed. Respondent’s Domain Names, <luxurycollection.build> and <luxurycollection.rentals>, do not include the noun marker “the” and Respondent does not own <theluxurycollection.[anything]> as a domain name.
Respondent states that she has a legitimate interest in the Domain Names and registered them with the intent to use them in her ongoing business matters. Respondent states that she owns and has been using very similar names involving the “luxury” brand in relation to her unrelated and ongoing business ventures since 2008. A view of Respondent’s website at <luxurygroup.net> confirms this. Respondent currently owns “Luxury Real Estate & Luxury rentals and are in the Real Estate Sales, Construction and Vacation Rental business.” Respondent states that she also partners with a high-end luxury car rental business. Respondent claims it is absurd that no one can use the term “luxury collection” for anything other than the hotel business. Respondent state that although Complainants also own the trademark, THE LUXURY COLLECTION RESIDENCE CLUB, which is registered in class 36 of the Nice Classifications [which includes coverage of real estate affairs] and is used to market a resort in Arizona, this mark would not be easily confused with Respondent’s Domain Names as they are significantly different and Respondent’s company has no interest in doing business in Arizona.
Respondent also urges that the new Top-Level Domains were created to open up name space to other businesses and to prevent monopolization by big companies. Because of Complainants’ size, Respondent argues that Complainants are intimidating a small company and using trademark bullying to force Respondent to relinquish legally obtained domain names. Complainants’ allegation that the Domain Names were registered only for the purpose of preventing Complainants from “monopolizing” the registration of such Domain Names is false. Complainants are the ones trying to monopolize descriptive generic terms and could have easily purchased the Domain Names themselves. Respondent argues that the Domain Names are of great value to her company and no offer has been made to pay fair market value for them; therefore, to transfer ownership of the Domain Names from their lawful owner would constitute unjust enrichment.
Complainants assert that their THE LUXURY COLLECTION and LUXURY COLLECTION trademarks are not generic or descriptive terms, but instead are trademarks that have been registered in dozens of jurisdictions around the world, as shown in the evidence submitted with the Complaint. Further, as to Respondent’s claim that Complainants do not have a registered trademark for its LUXURY COLLECTION mark, Complainants refer to the trademark registration from Benelux, Registration No. 781,420 for LUXURY COLLECTION. Complainants contend that the consensus view among UDRP panelists is that if a complainant owns a registered trademark, this satisfies the threshold requirement of having trademark rights and the strength of the mark is not relevant. Complainants cite Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073, where the panel stated that “[e]xcept in the most extraordinary circumstances, the Panel lacks jurisdiction or authority (not to mention the competence) to set aside a trademark registration issued by governmental authority.” Complainants argue that, similarly, this case is exceptionally ordinary and there is no reason for the Panel to set aside Complainants’ dozens of trademark registrations based on a poll of 100 of Respondent’s contacts.
Complainants further assert that the goods covered by a trademark registration are not relevant when assessing similarity. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the Policy. In any event, Respondent’s description of Complainants’ services under its LUXURY COLLECTION marks is incomplete. Complainants have also registered several trademarks for its real estate business. Among these registrations is U.S. Registration No. 3636970 for THE LUXURY COLLECTION RESIDENCE CLUB in Class 36 for “real estate management, namely management of condominiums” which was registered on November 6, 2008. Among the LUXURY COLLECTION properties that offer vacation ownership options is The Phoenician Resort in Scottsdale, Arizona, with the Phoenician Residences, a Luxury Collection Residence Club.
Furthermore, Complainants contend that Respondent has not shown through sufficient evidence that, prior to notice of the dispute, she has made “use of, or demonstrable preparations to use, the domain name[s] in connection with a bona fide offering of goods or services.” In summary, Complainants contend that, as shown in the Complaint, the Domain Names are identical or confusingly similar to Complainants’ LUXURY COLLECTION and THE LUXURY COLLECTION trademarks, Respondent has no legitimate interest in the Domain Names, and the Domain Names were registered and have been used in bad faith.
In order to succeed in their claim, Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
The Panel must first determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainants have rights. Complainants have submitted evidence of ownership of their registered trademarks, THE LUXURY COLLECTION and LUXURY COLLECTION. The marks have been registered in in a number of jurisdictions, including the United States and European Union, with the earliest registration dating from 1997. Respondent has argued that the term “luxury collection” should be considered generic and descriptive.
Paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following consensus view:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.”
Here, the Panel determines that Complainants have established their trademarks rights for purposes of the first element of the Policy. Further, the Panel finds that the Domain Names are identical to Complainants’ LUXURY COLLECTION mark and confusingly similar to Complainants’ THE LUXURY COLLECTION mark (the omission of the noun marker “the” in the Domain Names does not avoid confusion). The Top-Level Domains, “.build” and “.rentals”, serve to accentuate the possibility of confusion with Complainants’ marks, especially given that Complainants and Respondent operate in closely related businesses that compete, at least indirectly, with one another (i.e., Complainants provide luxury vacation opportunities through their hotels and resorts and manage privately owned luxury real estate condominiums, while Respondent provides luxury vacation opportunities through rentals of luxury properties, as well as sales services for luxury real estate properties).
Accordingly, the Panel finds that the Domain Names are identical and confusingly similar to trademarks in which Complainants have rights.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainants have made out their prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Complainants have established that their adoption and extensive use of the THE LUXURY COLLECTION and LUXURY COLLECTION trademarks predates Respondent’s registration of the Domain Names by as much as 14 years in the case of one mark, and 9 years in the case of the other. Complainants indicated that Respondent was aware of Complainants’ rights in their marks because Respondent received notice of Complainants’ registered marks from the TMCH service when she applied to register the Domain Names. Respondent did not respond to or deny this allegation. Respondent has no connection to or affiliation with Complainants and has not received any license or consent, express or implied, to use Complainants’ marks in the Domain Names. There is no evidence that Respondent is commonly known by these Domain Names. Respondent owns the domain name <luxurygroup.net>, which links to a website where the banner reads “Luxury Rentals” and the site offers vacation rentals. Prior to initiating this dispute, Complainants sent two letters to Respondent objecting to Respondent’s use and registration of the Domain Names, but Respondent did not reply to these letters. Finally, Complainants have showed that the Domain Names are currently inactive, and Respondent is thus not making any current legitimate use of the Domain Names for commercial or noncommercial activities.
In response to this prima facie showing, Respondent claimed that the “luxury collection” phrase is generic and descriptive, and Respondent’s informal poll of 100 people showed no one was able to identify this brand. Moreover, Respondent indicated that she registered the Domain Names with the intent to use them in her business, stating that she owns businesses called “Luxury Rentals” and “Luxury Real Estate”, and is in the vacation rental, real estate sales, and construction businesses.
The Panel finds that Complainants numerous trademarks registrations in multiple jurisdictions – most of which have been registered for many years predating Respondent’s Domain Name registrations – and Complainants’ extensive use and promotion of their THE LUXURY COLLECTION and LUXURY COLLECTION trademarks in the leisure field encompassing rentals and sales for luxury hotel and other vacation properties, and related leisure goods and services, strongly rebut Respondent’s arguments that Complainants’ marks should be treated as generic and fail to meet trademark guidelines. The Panel also determines that at least a key part of Respondent’s business (i.e., vacation rentals and sales of luxury properties) competes, at least indirectly, with Complainants’ business. Respondent has not demonstrated any use of the Domain Names to show that such use would be non-infringing with respect to Complainants’ trademarks. Trademark rights should operate most forcefully in circumstances where competition is involved. Finally, as noted above, Complainants’ submitted evidence that Respondent was provided with notice of these marks at the time when she registered the Domain Names.
For all these reasons, the Panel concludes that Respondent has failed to rebut Complainants’ prima facie case. Accordingly, in view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Names.
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Names in bad faith. The Panel determines, on the balance of the probabilities, that Complainants have established both elements. Complainants, as noted above, indicated that Respondent, at the time she registered the Domain Names, had notice from the TMCH service of Complainants’ LUXURY COLLECTION and THE LUXURY COLLECTION trademarks. Respondent did not dispute this assertion. Further, Respondent operates luxury vacation rentals and luxury real estate businesses that compete, at least indirectly, with Complainants’ business of operating luxury hotel, resort and other vacation properties. Therefore, any active use of the Domain Names by Respondent in relation to her businesses would be illegitimate as it would infringe upon Complainants’ rights under trademark law. While Respondent suggests that the Domain Names could be used, hypothetically, for unrelated areas such as for collections of silverware or cars, the evidence indicates that Respondent’s actual use would be infringing on Complainants’ marks.
Taking into account all of the above, the Panel determines that Respondent’s passive holding of the Domain Names – which are identical to Complainants’ LUXURY COLLECTION mark and virtually identical to Complainants’ THE LUXURY COLLECTION marks – constitutes bad faith because any active use of the Domain Names by Respondent in relation to her businesses would be illegitimate and an infringement of Complainants’ rights under trademark law. Under paragraph 2(b) of the Policy a domain name registrant must represent and warrant that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” In this case, Respondent, perhaps without having an adequate understanding of trademark law, has failed to satisfy this representation and warranty.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <luxurycollection.build> and <luxurycollection.rentals> be transferred to Complainant Starwood Hotel & Resorts Worldwide, Inc.
Christopher S. Gibson
Sole Panelist
Date: March 18, 2016