Starwood Hotels & Resorts Worldwide,
Inc. v. Hotel Partners
Claim
Number: FA0305000157308
Complainant is
Starwood Hotels & Resorts Worldwide, Inc., White Plains, NY (“Complainant”)
represented by Teresa C. Tucker, of Grossman, Tucker, Perreault
& Phleger PLLC. Respondent is Hotel Partners, Richmond, VA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sheratonfourpointshotels.com>, registered
with Bulkregister.Com, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 13, 2003; the Forum received a hard copy of the Complaint
on May 16, 2003.
On
May 16, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the
domain name <sheratonfourpointshotels.com> is registered with Bulkregister.Com,
Inc. and that Respondent is the current registrant of the name. Bulkregister.Com,
Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. 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
May 16, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 5, 2003 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@sheratonfourpointshotels.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
June 12, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sheratonfourpointshotels.com>
domain name is confusingly similar to Complainant’s SHERATON and FOUR POINTS
marks.
2. Respondent does not have any rights or
legitimate interests in the <sheratonfourpointshotels.com> domain
name.
3. Respondent registered and used the <sheratonfourpointshotels.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Starwood
Hotels & Resorts Worldwide, Inc., holds many service mark registrations for
the SHERATON mark on the Principal Register of the U.S. Patent and Trademark
Office (e.g., U. S. Reg. No. 1,784,580, registered on July 27, 1993).
Complainant also holds a service mark registration for the FOUR POINTS mark
(U.S. Reg. No. 2,003,614, registered on September 24, 1996) and the FOUR POINTS
HOTEL design mark (U.S. Reg. No. 2,014,840, registered on August 20, 1996).
Complainant has operated under the SHERATON mark since 1928 in association with
its hotel, motel, and restaurant services. Complainant operates commercial
websites promoting its services at the <sheraton.com>,
<fourpoints.com>, <fourpointshotels.com> and
<sheratonfourpoints.com> domain names.
Respondent,
Hotel Partners, registered the <sheratonfourpointshotels.com>
domain name on March 15, 2002, and is not licensed or authorized to use
Complainant’s registered marks for any purpose. The services advertised on
Respondent’s website consist of hotel reservation and related services,
services that are nearly identical to those offered by Complainant at its
<sheraton.com>, <fourpoints.com>, <fourpointshotels.com> and
<sheratonfourpoints.com> domain names.
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 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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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.
Complainant has
established rights in the SHERATON and FOUR POINTS marks through registration
of those marks on the Principal Register of the U.S. Patent and Tradmark
Office, as well as through widespread and continuous use of the marks in
commerce.
Respondent’s <sheratonfourpointshotels.com>
domain name is confusingly similar to Complainant’s SHERATON and FOUR
POINTS marks. The disputed domain name incorporates two of Complainant’s
registered marks and adds the word “hotels” to them. As “hotels” is a word that
perfectly describes Complainant’s operations under its marks, Respondent’s
addition of this word to Complainant’s marks in its domain name does not
dispell any confusing similarity between the two. See Nintendo of Am. Inc v.
Pokemon, D2000-1230
(WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined
Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com>
domain name); see also Marriott
Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that Respondent’s domain name <marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT mark).
Accordingly, the
Panel finds that the <sheratonfourpointshotels.com> domain name is confusingly similar to
Complainant’s SHERATON and FOUR POINTS marks under Policy ¶ 4(a)(i).
Complainant can
meet its burden under Policy ¶ 4(a)(ii) by showing that Respondent is unable to
avail itself of the provisions of Policy ¶¶ 4(c)(i)-(iii). With such a showing,
Complainant’s burden shifts to Respondent, who is in default in these
proceedings and thus unable to meet that burden. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
The Panel chooses to view Respondent’s decision to leave the Complaint
uncontested as evidence that it lacks rights or legitimate 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); Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to
offer any evidence permits the inference that the use of the Complainant’s mark
in connection with the Respondent’s website is misleading and Respondent is
intentionally diverting business from Complainant).
Respondent uses the <sheratonfourpointshotels.com> domain name to promote services consisting of hotel
reservation and related services. As these services are provided under
Complainant’s mark, without authorization by Complainant, and as these services
are nearly identical to those offered by Complainant, they do not amount to a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or
legitimate interests when Respondent is using a domain name identical to
Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”).
There is no
evidence before the Panel indicating that Respondent has ever been “commonly
known by” a combination of Complainant’s registered marks. On the contrary, the
evidence available indicates that Respondent is known only as “Hotel Partners.”
The Panel finds that Complainant has successfully met its burden in
demonstrating that Respondent can not avail itself of the provisions of Policy
¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<sheratonfourpointshotels.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <sheratonfourpointshotels.com> domain name in
bad faith. Considering Respondent’s use of the disputed domain name to provide
services similar to those of Complainant, it is clear that the disputed domain
name was registered to take advantage of the goodwill surrounding Complainant’s
mark for commercial gain. Creating a likelihood of confusion as to whether
Complainant sponsors or endorses Respondent’s website, for profit, is evidence
that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users 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 Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
The Panel thus
finds that Respondent registered and used the <sheratonfourpointshotels.com>
domain name in bad faith, and that
Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sheratonfourpointshotels.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 24, 2003
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