Starwood Hotels & Resorts Worldwide,
Inc. v. Billy Boy's
Claim
Number: FA0403000243496
Complainant is Starwood Hotels & Resorts Worldwide,
Inc. (“Complainant”), represented by Teresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC 55 South Commercial Street, Manchester, NH 03101. Respondent is Billy Boy's (“Respondent”), 4499 W. Hwy. 192, Kissimmee, FL 34746.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sheraton123.com>, registered with Tucows
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 March 2, 2004; the Forum received a hard copy of the
Complaint on March 4, 2004.
On
March 5, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <sheraton123.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
March 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 2004 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@sheraton123.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
April 5, 2004, 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 <sheraton123.com>
domain name is confusingly similar to Complainant’s SHERATON mark.
2. Respondent does not have any rights or
legitimate interests in the <sheraton123.com> domain name.
3. Respondent registered and used the <sheraton123.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
numerous registrations for the SHERATON mark with the United States Patent and
Trademark Office (“USPTO”) including registration numbers 1,784,580 (registered
on July 27, 1993 and used in connection with hotel, motel, motor inn,
restaurant and lounge services), 679,027 (registered on May 19, 1959 and used
in connection with motel or roadside hotel and restaurant services), and
1,884,365 (registered on Mar. 14, 1995 and used in connection with casino and
gaming services). Complainant has used
the SHERATON mark in commerce since as early as 1958.
Respondent
registered the disputed domain name on January 15, 2003. Respondent is using the disputed domain name
to advertise hotel accommodations.
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 mark through its multiple registrations of
the mark with the USPTO and continuous use of the mark in commerce since 1958.
See Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (finding that the
complainant established common law rights in a mark on account of long and
substantial use of the mark.).
Domain names
that contain numbers, which are added to third-party marks, have consistently
been found to be confusingly similar to the marks. In this case, the disputed
domain name contains Complainant’s SHERATON mark in its entirety. Respondent has merely appended the
consecutive numerals “123” to the SHERATON mark in the domain name. Thus, the
disputed domain name is confusingly similar to Complainant’s mark. See
Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding
that confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers
& Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the
suffixes "502" and "520" to the ICQ trademark does little
to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO
Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name
is confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent,
D2000-0412 (WIPO July 2, 2000) (finding that the domain name
<hitachi2000.net> is confusingly similar to Complainant’s mark); see
also Am. Online Inc. v. Chinese ICQ
Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the
numeral 4 in the domain name <4icq.com> does nothing to deflect the
impact on the viewer of the mark ICQ and is therefore confusingly similar).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
not responded to the Complaint. The
Panel infers from such a failure that Respondent lacks rights and 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); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
The use of a
domain name, which is confusingly similar to a third-party’s mark, to advertise
goods or services that compete with the third-party’s mark, is not a bona
fide offering of those goods or services. Here, the disputed domain name,
which is confusingly similar to Complainant’s SHERATON mark, is being used to
advertise services that directly compete with the services offered by
Complainant under its mark. Thus, Respondent is not using the disputed domain
name in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Computerized Sec. Sys., Inc. LOK v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring pop-up
advertisements was not a bona fide offering of goods or services).
Moreover,
there is nothing in the record that indicates to the Panel that Respondent is
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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); see also 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").
Complainant has
established Policy ¶ 4(a)(ii).
It has been
inferred in previous cases that when a respondent uses a domain name, which is
confusingly similar to a third-party’s mark, to advertise services that compete
with a complainant’s business, the respondent has registered and used the disputed
domain name primarily to disrupt the business of a competitor under Policy ¶
4(b)(iii). Here, Respondent registered
a domain name, which is confusingly similar to Complainant’s SHERATON mark, to
advertise hotel services that compete with Complainant’s hotel services offered
under the SHERATON mark. Thus, the
Panel may infer that Respondent registered and used the disputed domain name in
bad faith under Policy ¶ 4(b)(iii). See Gorstew Ltd., Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum
Oct. 4, 2000) (transferring <sandalsagency.com> and
<sandalsagent.com> from Respondent travel agency to Complainants, who
operate Sandals hotels and resorts); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15,
2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that Respondent has diverted business from Complainant to a
competitor’s website in violation of Policy 4(b)(iii)).
Advertising
exists to attract and expose potential customers to a line of goods or
services, which are offered for the purpose of earning a profit. In this case, Respondent has used the
disputed domain name to advertise hotel services. Given these facts, Respondent has satisfied the first requirement
of Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial
gain, Internet users to its website. The remaining question is whether
Respondent accomplished this end by creating a likelihood of confusion with the
Complainant’s mark, pursuant to the second requirement under Policy ¶ 4(b)(iv).
The facts speak for themselves. Respondent
registered a domain name that incorporates Complainant’s SHERATON mark in its
entirety. Respondent proceeded to use
Complainant’s mark in the domain name to offer services that compete with
Complainant’s services offered under the SHERATON mark. These two facts, taken in conjunction,
establish that Respondent created a likelihood of confusion with Complainant’s
mark. Thus, Respondent registered the
disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. 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 Complainant’s mark and offering the same services as Complainant
via his website); see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sheraton123.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 14, 2004
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