The Complainants are Starwood Hotels & Resorts Worldwide, Inc and Westin Hotel Management, L.P. of Stamford, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Lan Guo Jing of Shanghai, China.
The disputed domain name <westinjinmao.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2016. On January 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2016, 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 January 26, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 26, 2016, the Complainants confirmed their 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 1, 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.
The Complainants are Starwood Hotels & Resorts Worldwide, Inc and its affiliated entity Westin Hotel Management, L.P, both are United States based companies (hereinafter, collectively, the “Complainant”). The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises several hundred properties in approximately one hundred countries. The Complainant owns the following brands: Westin, Sheraton, Four Points by Sheraton, W, Le Meridien, St. Regis, the Luxury Collection, Alost and Element hotels. Today, there are more than 200 WESTIN hotels in more than 30 countries worldwide.
The Complainant is the owner of numerous trademark registrations for the WESTIN mark around the world. For example: United States registration number 1320080, of February 12, 1985; United States registration number 1720799, of September 29, 1992; Chinese registration number 4758623, of February 14, 2009; Chinese registration number 773940, of December 14, 1994, and more.
Through extensive use around the world, the WESTIN trademark has generated vast good will and has become well-known in connection with hotels.
The Complainant has also developed a presence on the Internet and is the owners of several domain names which contain the mark WESTIN. For example: <westin.com> and <westinhotels.com>.
The disputed domain name <westinjinmao.com> was registered on March 19, 2015.
The disputed domain name resolves to a website offering the Complainant’s goods for sale and contains the logo trademark of the Complainant and the mark WESTIN.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s WESTIN trademark. The disputed domain name consists of nothing more than the Complainant’s registered trademark, the descriptive term “jinmao” and the “.com” generic Top-Level Domain (“gTLD”) extension.
The Complainant further argues that “jinmao” is transliteration of a Chinses term for “golden” and considering the Complainant’s given reputation, Internet users are likely to immediately recognize and assume the disputed domain name is associated, owned, controlled or approved by the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark in the disputed domain name.
The Complainant further argues that the Respondent has registered and used the disputed domain name is bad faith.
The Complainant further argues that it is inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the disputed domain name.
The Complainant further argues that the Respondent has registered the disputed domain name to mislead Internet users to believe that the disputed domain name and its owner are somehow related to, endorsed by, or otherwise affiliated with the Complainant.
The Complainant further argues that the fact the disputed domain name directs to a website which is a virtual copy of the Complainant’s own official website for the property provides further evidence that the Respondent knew of the Complainant’s rights in the WESTIN mark and suggest the Respondent’s opportunistic bad faith in registering the disputed domain name.
The Complainant further argues that the Respondent is using unauthorized copies of copyrighted photographs from the Complainant’s website on the website at the dispute domain name.
The Complainant further argues that the Respondent is aware of the Complainant’s objection to the use of WESTIN mark as part of the disputed domain name, since the Complainant sent the Respondent a cease-and-desist letter to which the Respondent did not answer.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainants requested that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of Latin characters, rather than Chinese characters;
b) According to the evidence provided by the Complainant, the disputed domain name resolves to a website operating and displaying content in Chinese and in English;
c) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous trademark registrations for the WESTIN mark around the world. For example: United States registration number 1320080, of February 12, 1985; United States registration number 1720799, of September 29, 1992; Chinese registration number 4758623, of February 14, 2009; Chinese registration number 773940, of December 14, 1994, and more.
The Panel finds the disputed domain name integrates the Complainant’s WESTIN trademark in its entirety, as a dominant element.
The additional term “jinmao” which means “golden”, does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: “The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant’s YAHOO! mark), the addition of the descriptive word ‘page’ does not at all serve to remove the confusing similarity with the Complainant’s mark, all the more in the context of webpages or websites”. (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).
The addition of the gTLD “.com” to the disputed domain name does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the WESTIN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which clearly shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark WESTIN and long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the WESTIN trademark at least since the year 1981. This trademark has been used extensively worldwide. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name and has been used widely in the local language variant (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name is confusingly similar to the Complainant’s trademark (registered and used). Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Further, the Complainant submitted evidence proving that the Respondent has incorporated the WESTIN marks and logos on its website, this use is made in order to attract consumers for commercial gain by purporting to sell services for the alleged Complainant’s products. That past practice confirms not only the Respondent’s awareness of the Complainant and its products, but also the Respondent’s actual use of the Complainant’s name in bad faith (see Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170).
In the instant case, the Complainant has provided evidence to show that its WESTIN trademark has a strong reputation and is widely known both worldwide and in China. The record also shows that the Respondent provided no evidence and did not respond to the Complaint nor the cease-and-desist letter the Complainant sent to it. These facts lead to a clear conclusion that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
The Respondent’s lack of response to the cease and desist letter sent by the Complainant, is a further indication of the Respondent’s bad faith registration and use of the disputed domain name.
Another indication for the Respondent’s bad faith use is raised from the incorporation of the Complainant’s well-known trademark together into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). The circumstances of this case indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name.
In light of the Complainant’s registered trademarks and the Respondent’s use of a confusingly similar disputed domain name, offering the Complainant’s services, using the Complainant’s trademarks and all the other circumstances noted above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <westinjinmao.com> be transferred to the Complainant Starwood Hotels & Resorts Worldwide, Inc.
Jonathan Agmon
Sole Panelist
Date: March 14, 2016