Starwood Hotels & Resorts Worldwide,
Inc. v. Access Bali Online
Claim
Number: FA0410000346303
Complainant is Starwood Hotels & Resorts Worldwide,
Inc. (“Complainant”), represented by Theresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC, 55 South Commercial
Street, Manchester, NH 03101.
Respondent is Access Bali Online (“Respondent”, Puri Taman Umadui B21, J1
Gunung Seputan, Denpasar, Bali 80117, INDONESIA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sheratonbali.com> and <westinbali.com>,
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
18, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 22, 2004.
On
October 18, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that the domain names <sheratonbali.com>
and <westinbali.com> are registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant
of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.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
October 25, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 15, 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@sheratonbali.com and
postmaster@westinbali.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 24, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sheratonbali.com> and
<westinbali.com> domain names are confusingly similar to
Complainant’s SHERATON and WESTIN marks.
2. Respondent does not have any rights or
legitimate interests in the <sheratonbali.com> and <westinbali.com>
domain names.
3. Respondent registered and used the <sheratonbali.com>
and <westinbali.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
has rights in the SHERATON and WESTIN marks and uses the marks internationally
for its hotel advertising and hotel reservation services. 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). Also, Complainant, through its related
companies, holds several registrations for the WESTIN mark with the USPTO,
including Reg. Nos. 2,257,629 and 1,720,799 (registered on June 29, 1999 and
September 29, 1992, respectively).
Respondent
registered the <sheratonbali.com> domain name on September 21,
2001. Respondent registered the <westinbali.com>
domain name on December 4, 2003.
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 its SHERATON and WESTIN marks through registration of the
marks with the USPTO. See 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
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).
Respondent’s <sheratonbali.com>
and <westinbali.com> domain names are confusingly similar to
Complainant’s SHERATON and WESTIN marks.
Respondent’s domain names combine Complainant’s marks with the
geographic term “bali.” Combining a
geographic term with Complainant’s registered marks does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect of
Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly similar to
Complainant’s mark . . . "the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s
VERISIGN mark and the <verisignindia.com> and <verisignindia.net>
domain names where Respondent added the word “India” to Complainant’s mark).
The confusing
similarity between the domain names and Complainant’s marks is accentuated by
the fact that Respondent’s domain names resolve to websites that offer hotel
advertising and hotel reservation services similar to those offered by
Complainant. See Slep-Tone Entm't Corp. v. Sound Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of
confusion is further increased by the fact that the Respondent and
[Complainant] operate within the same industry”); see also Vivid Video, Inc.
v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any
distinctiveness resulting from Respondent’s addition of a generic word to
Complainant’s mark in a domain name is less significant because Respondent and
Complainant operate in the same industry).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain names. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”)
Complainant
asserts that Respondent is using the disputed domain names to redirect Internet
users to commercial websites offering hotel advertising and hotel reservation
services in direct competition with Complainant. Respondent, as a competitor of Complainant, has no rights or
legitimate interests in domain names that utilize Complainant’s marks for its
competing websites, and such use is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See
Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003)
(finding that Respondent had no rights or legitimate interests in the disputed
domain name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant); see also
Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002)
(finding that Respondent’s use of a confusingly similar domain name to operate
a pay-per-click search engine, in competition with Complainant, 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 domain names <sheratonbali.com> or <westinbali.com>
pursuant to paragraph 4(c)(ii) of the Policy. 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").
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using the disputed domain names to divert Internet traffic to websites that
offer services that compete with Complainant for commercial gain. Respondent’s
use demonstrates that it is attempting to attract Internet users to
Respondent’s websites at the disputed domain names for commercial gain by
taking advantage of the goodwill associated with Complainant’s marks, which
evidences bad faith registration and use under Policy ¶ 4(b)(iv). See 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 chat
services via his website as Complainant); see also 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).
Additionally,
it appears that Respondent disrupted Complainant’s business by diverting
Internet users to websites unaffiliated with Complainant, but offering
identical hotel services. Such
disruption is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb.
Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant
registered and used a domain name confusingly similar to Complainant’s
PENTHOUSE mark to host a pornographic web site).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sheratonbali.com> and <westinbali.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 7, 2004
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