National Arbitration Forum

 

DECISION

 

Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd

Claim Number: FA0501000406512

 

PARTIES

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 Samjo CellTech.Ltd (“Respondent”), #205 Samwon Bldg 1024-6, Pangbae 3ng Socho-gu, Seoul, Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <starwoods.com> (the “Domain Name”), registered with Netpia.com, Inc. (“Netpia.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.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 19, 2005; the Forum received a hard copy of the Complaint on January 20, 2005.  On January 24, 2005, the Forum notified Complainant that its Complaint was deficient; on January 25, 2005, Complainant submitted an amended Complaint.  The Forum verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the Supplemental Rules for the Policy, and that payment in the required amount had been made.

 

On January 20, 2005, Netpia.com confirmed by email to the Forum that the Domain Name is registered with Netpia.com and that Respondent is the current registrant.  Netpia.com has verified that Respondent is bound by the Netpia.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On January 25, 2005, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to Respondent via email, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@starwoods.com by email.  The Notification set a deadline of February 14, 2005 by which Respondent could file a Response to the Complaint.

 

A timely Response was received and determined to be complete on February 14, 2005.

 

On February 23, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant asserts that the Domain Name is essentially identical or confusingly similar to a number of United States trademark or service mark registrations owned by Complainant and its related companies that contain the STARWOOD mark, including registration number 2,525,771 (STARWOOD PREFERRED PLANNER) and 2,735,078 (STARWOOD APPROVED VENDOR).  Complainant alleges that the Domain Name comprises Complainant’s STARWOOD mark in its entirety, adding only the letter “s,” and therefore the Domain Name is likely to be confused with Complainant’s trademark.  Complainant contends that it is often referred to by third parties as “Starwoods.”  Complainant alleges that the Domain Name does not currently resolve to an active website and therefore consumers may believe that Complainant does not operate an active website or will be discouraged from seeking Complainant’s website.[1]

 

Complainant alleges that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent chose to use Complainant’s mark in an attempt to trade on the goodwill associated with the STARWOOD name.  Complainant further asserts that Respondent’s use of the Domain Name is not a fair one.

 

Because the insufficiency of Complainant’s allegations of bad faith are central to the ultimate determination of this matter, the Panel quotes in their entirety Complainant’s allegations of bad faith:

 

The disputed domain name should be considered as having been registered and being used in bad faith because

 

(i) Respondent’s registration and use of the disputed domain name is indicative of bad faith use[.]  See Automatic Data Processing, inc. v. Access Electronics Registrars.com [sic], FA-96483 (finding passive holding of domain name indicative of bad faith use); and

 

(ii) Respondent’s registration and use of the disputed domain names [sic] is made with the knowledge of the fame of Complainant’s STARWOOD trademark which is evidenced by the presence of several STARWOOD owned or operated hotels in Respondent’s city of residence (See Exhibit D annexed [to the Complaint]); and

 

(iii) Respondent’s registration of the domain names [sic] is primarily for the purpose of disrupting the business of Complainant; and

 

            (iv) Respondent registered a variation of Complainant’s famous STARWOOD mark for commercial gain; and

 

            (v)  Respondent registered the disputed domain name in order to prevent Complainant from registering and using said domain name for the purpose of disrupting the business of Complainant.

 

            ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).

 

B. Respondent

 

Respondent alleges that one of its subsidiaries, MaruOn Inc., is in the business of “total entertainment including film making, record producing and releasing, producing TV drama etc.”  Respondent claims that it registered the Domain Name “under our necessity as it is the proper domain name to appeal our entertainment business.”  In addition, Respondent asserts that “[v]arious online promotions and online events in conjunction with ‘Stars’ is very common and popular form of entertainment business in Korea, which we aim to focus on through www.starwoods.com.”  (All quotes are sic.)

 

Respondent denies that it registered the Domain Name in order to disrupt Complainant’s business.  Respondent admits that it does not currently operate a website using the Domain Name, but claims that it is “building the contents for starwoods.com this year and are confident that we can back up the right and substantial contents for it.”

 

FINDINGS

The Panel finds that Complainant has demonstrated rights in the STARWOOD mark, the Domain Name is confusingly similar to the STARWOOD mark, and Complainant has shown that Respondent lacks a legitimate interest in the Domain Name.  However, the Panel finds that Complainant has failed to demonstrate that Respondent registered and used the Domain Name in bad faith.  Thus, Complainant has not demonstrated all three elements required under the Policy and, as a result, the Panel must deny the Complaint.

 

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.”

 

Paragraph 4(a) of the Policy requires that Complainant 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;

(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.

 

Identical and/or Confusingly Similar

 

Respondent does not dispute that Complainant owns federal trademark registrations containing, as their dominant element, the word STARWOOD.  These registrations are entitled to a presumption of validity.  EAuto L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).  The Panel finds that Complainant has proven that it owns trademark rights in the STARWOOD mark.

 

The Domain Name incorporates in its entirety the STARWOOD mark.  The addition of the letter “s” and/or a gTLD such as “.com” does not prevent a finding of confusing similarity.  Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (the addition of an ‘s’ to the end of the complainant’s CREAM PIE mark did not “prevent the likelihood of confusion caused by the use of the remaining identical mark”; <creampies.com> was “similar in sound, appearance, and connotation”); 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 to a mark).  The Panel thus finds that the Domain Name is confusingly similar to Complainant’s STARWOOD mark and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

 

Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one.  These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.  Commerce LLC v. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002).

 

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the burden of production shifts to the respondent to come forward with evidence of its rights to or legitimate interests in the domain name.  As explained in Document Technologies, Inc. v. International Elec. Communications Inc., D2000-0270 (WIPO June 6, 2000):

 

This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name.  The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.”  Policy, ¶ 4(a).

 

According to Paragraph 4(c) of the Policy, Respondent may demonstrate its rights to or legitimate interests in the Domain Name by showing any of the following circumstances:

 

(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

 

(ii) it (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

 

(iii) it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent has not come forward with sufficient evidence to demonstrate that it has a legitimate interest in the Domain Name.  Respondent claims, without providing any corroborating documents or other evidence, that it registered the Domain Name “under our necessity as it is the proper domain name to appeal our entertainment business” and that “[v]arious online promotions and online events in conjunction with ‘Stars’ is very common and popular form of entertainment business in Korea, which we aim to focus on through www.starwoods.com.”  Respondent appears to be saying that it needs the Domain Name in order to promote its stars in connection with a planned entertainment business-related website.  Even if these unsupported statements were sufficient to provide Respondent with a legitimate interest with respect to the “star” portion of the Domain Name, Respondent in any event has provided no explanation whatsoever as to what legitimate interests it has in the “woods” part of the Domain Name.  Thus, Respondent has failed to demonstrate any rights or legitimate interests in the Domain Name as a whole.

 

Respondent also has not shown any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.  Respondent admits that it does not currently operate a website using the Domain Name, but claims that it is “building the contents for starwoods.com this year and are confident that we can back up the right and substantial contents for it.”  These assertions of a future intention are insufficient to establish “demonstrable preparations,” as required by the Policy.  World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Mere assertions of preparations to make a legitimate use are not enough”); Document Techs., Inc., supra (“mere assertion of such an intention [to use a website] is insufficient”). 

 

Accordingly, on this admittedly skimpy record, Complainant has succeeded in showing that Respondent lacks a legitimate interest in the Domain Name and thus has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

 

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, the respondent 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

 

The necessity of proving bad faith registration and use is a key component of the Policy.  That is because the Policy is not intended as a method of resolving all domain name disputes; rather, it was designed to prevent only a particular type of abusive cybersquatting characterized by bad faith conduct on the part of the registrant.  Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001); see also Thread.com LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (“the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”).

 

Because proving bad faith is so important to a finding of abusive cybersquatting under the Policy, it is incumbent upon complainants to adduce factual evidence affirmatively demonstrating a respondent’s bad faith.  Proving bad faith is thus very different from proving that a respondent lacks a legitimate interest.  As discussed above, because proving a negative can be so difficult, a complainant may be able to satisfy its burden under the second factor, and cause a shift in the burden of production, by making bald factual allegations that track the Policy (e.g., that respondent is not using the domain name, is not commonly known by the domain name, is not licensed to use the domain name, and is not making a legitimate noncommercial or fair use of the domain name).  In contrast, when it comes to the third factor, the burden is squarely on the complainant to come forward with evidence – that is, facts – proving that the respondent is guilty of bad faith. 

 

Those facts are missing from the instant Complaint.  Indeed, as a review of Complainant’s allegations (reproduced above) shows, rather than present factual evidence proving Respondent’s bad faith, Complainant does little more than parrot the standards in the Policy and pronounce (without explanation) that “Respondent’s registration and use of the disputed domain name is ‘indicative’ of bad faith.”  Such conclusory allegations cannot sustain a Complainant’s burden of proving bad faith registration and use.

 

To support its assertion that Respondent’s conduct is “indicative” of bad faith, Respondent cites only Automatic Data Processing, Inc. v. Access Electronics, FA 96483 (Nat. Arb. Forum Feb. 20, 2001), alleging that it stands for the proposition that passive holding of a domain name is indicative of bad faith use.  In that case, though, the panel specifically found that the respondent had offered the domain name for sale, an important fact missing here.  Moreover, the panel noted that complainant’s mark was so famous that respondent had to have been aware of it prior to registration of the domain name.  Such a showing is a necessary prerequisite to a bad faith claim premised on passive holding.  Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding bad faith where the complainant’s trademark was so well-known in Australia, where the respondent was located, that it was “not possible to conceive of a plausible situation in which the [r]espondent would have been unaware of [the mark] at the time of registration”).

 

In this case, Complainant has not proven that the STARWOOD mark was so famous in Korea at the time of Respondent’s registration of the Domain Name in January 2000 that Respondent must have known of the mark and must have intended to register the Domain Name with a bad faith intent to profit from Complainant’s trademark.[2]  The one piece of evidence Complainant does cite – the existence of four Starwood-owned or -operated hotels in Korea – is insufficient because no evidence has been submitted that these hotels were in business in 2000 or that they used the STARWOOD brand as part of their names.  To the contrary, even today, though the STARWOOD name may be used in connection with these hotels, the printouts Complainant submitted shows they are more commonly known under the WESTIN, SHERATON and W brand names.  In the absence of any competent evidence on the extent of use of the STARWOOD mark in Korea in 1999 and earlier, the Panel cannot find that Respondent must have been aware of Complainant’s mark when it registered the Domain Name in January 2000.

 

Even weaker are Complainant’s assertions, taken virtually verbatim from the Policy (paragraphs 4(b)(iii)-(iv)), that “Respondent’s registration of the domain name[] is primarily for the purpose of disrupting the business of Complainant” and that “Respondent registered a variation of Complainant’s famous STARWOOD mark for commercial gain.”  Merely repeating the standards in the Policy does not make them true; rather, to prove bad faith, Complainant must present facts showing how Respondent is competing or obtaining an unfair commercial advantage.  Cf. Easy Heat, Inc. v. Shelter Products, D2001-0344 (WIPO June 14, 2001) (finding bad faith where complainant presented evidence that respondent used domain name to sell “Warm Tiles” floor heating systems without acknowledging complainant’s WARM TILES trademark or providing any reference to complainant); Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (finding bad faith where complainant demonstrated likelihood of confusion as a result of respondent’s use of SANDS trademark, used for complainant’s casino services in Las Vegas, for respondent’s Internet casino).  Moreover, under paragraph 4(b)(iv) of the Policy, Complainant must show not only that Respondent is using the Domain Name to attract Internet users to its website for commercial gain, but also that it has done so by creating a likelihood of confusion.  Complainant has not alleged any such confusion.[3]

 

Finally, Complainant alleges that “Respondent registered the disputed domain name in order to prevent Complainant from registering and using said domain name for the purpose of disrupting the business of Complainant.”  Here, too, Complainant’s allegations are merely conclusory and fail to track the example of bad faith given in the Policy.  Not only has Complainant obviously registered the starwood.com and starwoodhotel.com domain names, but also, Complainant can show bad faith only if it can demonstrate that Respondent has prevented Complainant from registering its own mark as a domain name and has engaged in a pattern of such cybersquatting.  Complainant has not alleged any pattern; despite its periodic reference to “domain names,” there is only one domain name at issue in this proceeding and Complainant has not cited any other domain names registered by Respondent.

 

Because of the limitations inherent in the UDRP process, and especially in a case with as skimpy a factual record as this one, it is important to note that the Panel is not finding that Respondent necessarily registered this Domain Name in good faith.  One certainly could speculate that Respondent was well aware of Complainant’s STARWOOD mark in January 2000, and that such knowledge led it to register the starwoods.com domain name.  Speculation, though, is not evidence.  Here, Complainant has failed to allege facts to support its speculation.  Accordingly, the Panel has no choice but to find that Complainant has failed to sustain its burden under paragraph 4(a)(iii) of the Policy.

 

DECISION

Because Complainant has not demonstrated all three elements required under the Policy, the Panel DENIES the Complaint.

 

 

 

 

David H. Bernstein, Panelist
Dated: March 9, 2005

 

 

 

 

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