Starwood Hotels & Resorts Worldwide,
Inc. v. 15292313 Ontario Inc.
Claim
Number: FA0412000392994
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 15292313 Ontario, Inc. (“Respondent”), 50 John Street, Toronto, ON
M5V3T5, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <torontosheraton.com>, registered with Domainpeople
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
28, 2004; the National Arbitration Forum received a hard copy of the Complaint
on January 7, 2005.
On
December 28, 2004, Domainpeople Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <torontosheraton.com> is
registered with Domainpeople Inc. and that Respondent is the current registrant
of the name. Domainpeople Inc. has verified that Respondent is bound by the Domainpeople
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
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 31, 2005 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@torontosheraton.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
February 4, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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 name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <torontosheraton.com>
domain name is confusingly similar to Complainant’s SHERATON mark.
2. Respondent does not have any rights or
legitimate interests in the <torontosheraton.com> domain name.
3. Respondent registered and used the <torontosheraton.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant and
its predecessors in interest have provided hotel and leisure services under the
SHERATON mark since at least as early as 1928. Complainant has hotels in most
major markets around the world, including a hotel in Toronto, Ontario.
Complainant holds several trademark registrations for the SHERATON mark,
including U.S. Reg. Nos. 679,027 and 1,784,580 (issued May 19, 1959 and July
27, 1993, respectively), which are on file at the United States Patent and
Trademark Office. Complainant operates a website at the <sheraton.com>
domain name.
Respondent
registered the <torontosheraton.com> domain name on December 28,
2003. The domain name redirects Internet users to a website at the
<torontoharbour.com> domain name. The website provides links to other
websites that promote numerous third-party travel and tourism services,
including services that directly compete with Complainant.
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 that it has rights in the SHERATON mark through registration with
the United States Patent and Trademark Office and through the use of the mark
in commerce since 1928. 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 <torontosheraton.com> domain name
is confusingly similar to Complainant’s SHERATON mark. Respondent merely added
the geographic term “Toronto,” a city in Ontario, Canada where some of
Complainant’s hotels are located, and the “.com” generic top-level domain to
the mark. The addition of a geographic term and a generic top-level domain does
not sufficiently distinguish the disputed domain name from Complainant’s
SHERATON mark under 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 and stating that “the combination of a geographic term with the
mark does not prevent a domain name from being found confusingly similar”);
see also Wal-Mart Stores, Inc. v.
Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to Complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Because Respondent has
failed to submit a response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <torontosheraton.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO
Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii) because Respondent’s domain name redirects unsuspecting Internet
users to a website that links to Complainant’s competitors. The Panel infers
that Respondent commercially benefits from this diversion by receiving
pay-per-click fees from Internet users that follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark in order to trade on
the goodwill and fame associated with the SHERATON moniker. Thus, Respondent
fails to establish rights or legitimate interests in the <torontosheraton.com>
domain name. See Computerized Sec. Sys., Inc. 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
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also
Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that Respondent had no rights or legitimate interests in a domain name
that used Complainant’s mark to redirect Internet users to a competitor’s
website).
No
evidence before the Panel suggests that Respondent is commonly known by the
<torontosheraton.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s WHOIS information indicates that the registrant of the disputed
domain name is known as “15292313
Ontario Inc.” and is not known by the confusing second-level domain that
infringes on Complainant’s SHERATON mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); 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”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s SHERATON mark within the
<torontosheraton.com> domain name to ensnare unsuspecting Internet
users. Respondent then redirects the users to a commercial website. The Panel
infers that Respondent commercially benefits from this diversion. Such
infringement is what the Policy was intended to remedy. Thus, the Panel finds
that Respondent registered and used the domain name in bad faith under Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, 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)).
Respondent
registered and used a domain name that is confusingly similar or identical to
Complainant’s mark for the purpose of directing Internet users to businesses
that offer services that compete with Complainant’s services. Respondent’s use
of the <torontosheraton.com> domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor pursuant to 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 EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant’s marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant’s business); see also Puckett 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)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the <torontosheraton.com>
domain name, additional factors can also be used to support findings of bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to .be illustrative, rather than
exclusive.”).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds the geographic term “Toronto,” the
location of a hotel bearing Complainant’s mark, suggests that Respondent knew
of Complainant’s rights in the SHERATON mark. Complainant’s trademark
registration, on file at the United States Patent and Trademark Office, gave
Respondent constructive notice of Complainant’s mark. Moreover, Respondent’s
knowledge of Complainant’s rights in the mark is evidenced by the fact that its
website provides links to Complainant’s competitors. Thus, the Panel finds that
Respondent chose the <torontosheraton.com> domain name based on
the distinctive and well-known qualities of Complainant’s mark, which evidences
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also 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 Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <torontosheraton.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 18, 2005
National Arbitration Forum