DECISION

 

Starwood Hotels & Resorts Worldwide, Inc. v. Hotel Partners

Claim Number: FA0112000103368

 

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, Inc., White Plains, NY (“Complainant”) represented by Teresa C. Tucker, of Hayes Soloway.  Respondent is Hotel Partners, Richmond, VA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sheratonfourpoints.com>, registered with Bulkregister.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 21, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.

 

On January 11, 2002, Bulkregister.com confirmed by e-mail to the Forum that the domain name <sheratonfourpoints.com> is registered with Bulkregister.com and that Respondent is the current registrant of the name.  Bulkregister.com has verified that Respondent is bound by the Bulkregister.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 31, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@sheratonfourpoints.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On February 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <sheratonfourpoints.com> is identical to Complainant’s combined SHERATON and FOUR POINTS registered service marks.

 

Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Respondent registered and is using the disputed domain name in bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Complainant holds registered service marks in SHERATON and FOUR POINTS, which it has used continuously in association with hotel, motel, and restaurant services since 1928 and 1995 respectively.  The SHERATON mark was registered on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,784,580 on July 27, 1993, and the FOUR POINTS mark was registered on December 9, 1994 as Registration No. 2,003,614.

 

Respondent registered the disputed domain name on June 12, 2001, and has used the domain name to provide hotel reservation services, in competition with Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant has established its rights in SHERATON and FOUR POINTS marks through registration with the U.S. Patent and Trademark Office and subsequent continuous use.  The disputed domain name is identical to Complainant’s combined marks.  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant has established its rights to and interests in its marks.  Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Respondent has used and is using the disputed domain name in order to provide hotel reservation services in competition with Complainant.  Such use cannot be deemed a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a mark to sell complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use).

 

There is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as “Hotel Partners.”  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Further, in providing hotel reservation services, Respondent cannot claim it is using the disputed domain name for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the disputed domain name where Respondent had an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

The Panel thus finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Complainant’s marks are well known among the general public.  Because Respondent is involved in the hotel industry, it may be said to be “on notice” as to the existence and proprietary nature of Complainant’s marks.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants’ famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name).

 

By intentionally registering a domain name which wholly incorporates Complainant’s marks and using it to provide services in competition with Complainant, Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the disputed domain name to resolve to a website where similar services are offered is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <sheratonfourpoints.com> domain name be transferred from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

 

Dated:  February 18, 2002

 

 

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