The Complainants are Starwood Hotels & Resorts Worldwide, Inc. of Maryland, United States of America (“United States”), The Sheraton LLC and Sheraton International IP, LLC of Delaware, United States, represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Ana Gomes Dias of Sao Paulo, Brazil.
The disputed domain name <sheraton-springfield.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2016. On July 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 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.
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 proceedings commenced on July 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 23, 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.
Complainant is a leading company in the hotel and leisure industry. It owns, manages or franchises over 1,100 properties in approximately 100 countries, including over 400 SHERATON hotels. Among Complainant’s properties is the Sheraton Springfield Monarch Place Hotel in Springfield, Massachusetts.
Complainant owns, inter alia, the following registrations for the SHERATON trademark:
|
COUNTRY |
MARK |
REGISTRATION NO. |
REGISTRATION DATE |
INTNL. CLASS |
|
United States |
SHERATON |
954454 |
March 6, 1973 |
16 |
|
United States |
SHERATON |
1784580 |
July 27, 1993 |
42 |
|
United States |
SHERATON |
1884365 |
March 14, 1995 |
41 |
|
Brazil |
SHERATON |
4519337 |
June 6, 1972 |
43 |
|
Brazil |
SHERATON |
831240440 |
October 11, 2011 |
44 |
|
Brazil |
SHERATON |
828943800 |
October 13, 2009 |
32 |
|
Brazil |
SHERATON |
829882561 |
May 24, 2011 |
36 |
Complainant owns and operates the websites “www.sheraton.com” and “www.sheratonhotels.com”.
The disputed domain name was registered on June 28, 2015.
Complainant wrote to Respondent concerning the registration and use of the disputed domain name on April 26, 2016 (SeeExhibit J). Respondent has not responded to this letter.
Complainant submitted evidence proving that the website at the disputed domain name contained a number of articles in Portuguese dealing with subjects as varied as the impact of the new Brazilian Code of Civil Procedure, women and investment decisions, sex, how to deal with difficult people, etc., indicating “ig.com.br” as the source for the articles. None of the articles appears to be related in any way either to Sheraton hotels in general or to the Sheraton hotel in Springfield, Massachusetts, in particular.
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s SHERATON trademark. The disputed domain name consists of nothing more than Complainant’s registered SHERATON trademark, the geographical term “Springfield” and the “.com” generic Top-Level Domain. Furthermore, the addition of a geographical indicator to Complainant’s SHERATON trademark “add[s] to rather than diminish[es] the likelihood of confusion” because “[t]he addition of a place name to a trademark … is a common method for indicating the location of a business enterprise identified by the trademark or service mark…. even more so in the case of hotels.” See Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244. The addition of a hyphen between “SHERATON” and “Springfield” does not distinguish the disputed domain name from Complainant’s trademark or its dedicated website for its SHERATON hotel in Springfield, Massachusetts.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name (More on this at section 6.B. below).
Respondent registered and is using the disputed domain name in bad faith. Complainant’s SHERATON mark 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. Furthermore, Complainant owns the <sheratonspringfield.com> domain name that is used in connection with the official website for the Sheraton Springfield Monarch Place Hotel in Springfield, Massachusetts. As such, it is inconceivable that Respondent was unaware of Complainant’s trademarks and use of the <sheratonspringfield.com> domain name when it registered the disputed domain name. The fact that Respondent registered the confusingly similar domain name without authorization is, in and of itself, evidence of bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Where, as here, Complainant’s mark is well known and recognized, the registration and commercial use of a domain name wholly incorporating the mark further evidences Respondent’s bad faith. Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055. See also Veuve Cliquot, supra at section 6 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The disputed domain name is not currently associated with an active website. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) was one of the earliest UDRP decisions, and it established that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”.
Respondent’s failure to respond to Complainant’s April 26, 2016 letter requesting that Respondent agree to voluntarily transfer the disputed domain name to Complainant is further evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
By submitting printouts of the United States Patent and Trademark Office (“USTPO”) and Brazilian IP office’s databases, Complainant has shown to the satisfaction of the Panel that it has trademark rights in the SHERATON mark, which it has been using since 1928. See section 4 above.
The Panel notes that the disputed domain name incorporates the SHERATON mark in its entirety, adding the geographic term “Springfield”, plus a hyphen and the Top-Level Domain “.com”. It is well established that the addition in a disputed domain name of a geographic term to a mark generally is inapt to distinguish the resulting domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 (“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”). The fact that Complainant owns and operates the Sheraton Springfield Monarch Place Hotel in Springfield, Massachusetts rather reinforces the impression of association of the disputed domain name with Complainant’s mark.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark and that the first element of the Policy is met.
Complainant contends that Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. Complainant’s adoption and extensive use of the SHERATON trademark predates
Respondent’s registration of the disputed domain name. Thus, the burden is on Respondent to produce evidence of its rights or legitimate interest in the disputed domain name following the Complainant’s prima facie case. Complainant adds that it has not granted Respondent any license, permission, or other right by which Respondent could own or use any domain names incorporating Complainant’s SHERATON trademark. Further, the disputed domain name is not a name or nickname of Respondent (or of any purported client of Respondent). The disputed domain name is not in any other way identified with or related to any rights or legitimate interests of Respondent. Respondent has provided no evidence that the disputed domain name was registered legitimately or that Respondent has plans to make a bona fide use of the disputed domain name. In order for Respondent to make a bona fide use of the disputed domain name, she would have to present evidence of concrete steps taken to develop a legitimate website.
In the opinion of the Panel, the available evidence supports the contentions of Complainant. First, according to the current WhoIs data, Respondent´s name appears to be “Ana Gomes Dias”, while the section “Quem somos” (Portuguese for “Who are we”) in the website currently, upon the Panel’s visit, at the disputed domain name does not give any hint as to the identity of the owner of the website. Accordingly, the circumstance of Policy paragraph 4(c)(ii) should be discarded.
Also, as seen in section 3 in fine, the current contents of the website at the disputed domain name consists of various articles totally unrelated to Sheraton hotels. Under the title “Who are we”, the website displays a questionnaire apparently intended to gather names and email addresses from Internet users presumably looking for Complainant’s Sheraton hotel in Springfield, Massachusetts. Since these contact data are a commodity with economic value, in the opinion of the Panel the attempt to gather them by using the cover of a well known mark such as SHERATON, whether or not it constitutes a phishing maneuver, is neither a use in connection with a bona fide offer of goods or services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use of the disputed domain name, pursuant to Policy paragraph 4(c)(iii).
The consensus view of UDRP panels is that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) In absence of any argument or evidence in favor of Respondent, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name and that the second element of the Policy is met.
Complainant has shown that it has trademark registrations for the SHERATON trademark in the United States since at least 1973, and that this mark was first used in 1928. The Panel, like prior UDRP panels, agrees with Complainant that its SHERATON mark is well-known. See, e.g., Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Hieu Doan, WIPO Case No. D2009-1734 and Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd, WIPO Case No. D2012-1125 (finding that SHERATON is a well known mark). Also, Complainant has shown that it owns and operates a Sheraton hotel in Springfield, Massachusetts. Accordingly, the Panel is of the opinion that Respondent must have known Complainant and its SHERATON hotels, and had them in mind, at the time of registering the disputed domain name. In the circumstances of this case, this is evidence of registration in bad faith.
As to use in bad faith, Complainant has shown that the website at the disputed domain name contains articles in Portuguese totally unrelated to Complainant, its SHERATON mark or its hotels. Complainant concludes that despite the lack of active use, the disputed domain name is passively held in bad faith as described in Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel agrees with Complainant that Respondent is using the disputed domain name in bad faith, however in an active way, because Respondent on the “www.sheraton-springfield.com” website is currently availing itself of Complainant’s mark to extract by means of an online questionnaire valuable personal information (name and email address) from visitors presumably looking for Complainant, its SHERATON mark and services. Since these data have economic value, the Panel believes that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s SHERATON mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). See AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455 (“Respondent […] is […] trying to elicit personal information from Internet users presumably looking for Complainant and its […] mark. The purposes for this behavior were neither stated on Respondent’s website nor elsewhere explained by Respondent, but it is rather obvious that personal information obtained from Internet users is a valuable commodity in an age of marketing through massive emailing. Given the renown of Complainant’s [ …] mark and products, it is evident that Respondent has availed itself of this renown to elicit these data.”)
The Panel concludes that the third element of the Policy is met.
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-springfield.com> be transferred to Complainant, Starwood Hotels & Resorts Worldwide, Inc.
Roberto Bianchi
Sole Panelist
Date: September 6, 2016