Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC , Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. Marketing Total S.A., Keyword Marketing, Inc., Domain Drop S.A., Maison Tropicale S.A., Web Advertising, Corp.

Case No. D2008-0019

 

1. The Parties

The Complainants are Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P., United States of America (collectively the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.

The Respondents are Marketing Total S.A., Saint Kitts and Nevis; Keyword Marketing, Inc., Saint Kitts and Nevis; Domain Drop S.A., Saint Kitts and Nevis; Maison Tropicale S.A., Anguilla, United Kingdom of Great Britain and Northern Ireland and Web Advertising, Corp., Saint Kitts (collectively the “Respondent”).

 

2. The Domain Names and Registrars

The disputed domain names <westinhotelsandresorts.com>, <westinbellvue.com>, <whotelresidences.com> and <westinvillas.com> are registered with CapitolDomains, LLC.

The disputed domain names <fourpointsmonclova.com>, <westincasino.com>, <westinsydney.com>, <westincaminoreal.com>, <liveatthewestin.com>, <westinphilippineplazahotel.com>, <westinoaksgalleria.com> and <westinsandiego.com> are registered with BelgiumDomains, LLC.

The disputed domain names <thewestinstjohn.com>, <westinhotelchicago.com>, <westinlapalomaresortandspa.com>, <westininnisbrookresort.com> and <westincasurina.com> are registered with DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2008. On January 7, 2008, the Center transmitted by email to BelgiumDomains, LLC, DomainDoorman, LLC and Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue.

On January 9 and 16, 2008, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 9, 2008, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 9 and 17, 2008, CapitolDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 17, 2008. The Center verified that the Complaint together with the amendment to the 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2008.

The Center appointed Johan Sjцbeck as the sole panelist in this matter on February 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):

WESTIN in class 42 with registration number 1,320,080 dated February 12, 1985.

WESTIN in class 42 with registration number 1,720,799 dated September 29, 1992.

WESTIN in class 36 with registration number 2,257,629 dated June 29, 1999.

WESTIN in class 45 with registration number 3,182,786 dated September 26, 2006.

WESTIN HOTELS & RESORTS in class 42 with registration number 1,428,848 dated February 10, 1987.

FOUR POINTS in class 42 with registration number 2,003,614 dated September 24, 1996.

FOUR POINTS BY SHERATON in class 43 with registration number 3,018,022 dated November 22, 2005.

W in classes 41, 43 and 44 with registration number 3,000,219 dated September 27, 2005.

W in classes 36 and 37 with registration number 2,863,392 dated July 13, 2004.

W in classes 35, 41 and 42 with registration number 3,021,235 dated November 29, 2005.

W in class 42 with registration number 2,289,607 dated October 26, 1999.

W HOTELS in classes 20, 24 and 25 with registration number 2,694,849 dated December 17, 2002.

W HOTELS in class 42 with registration number 2,294,753 dated November 23, 1999.

W RESIDENCES (Stylized) in classes 36 and 37 with registration number 3,083,217 dated April 18, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant is Starwood Hotels & Resorts Worldwide, Inc., a hotel and leisure company incorporated under the laws of Maryland, and its following affiliated entities: The Sheraton LLC, a Delaware limited liability company, Worldwide Franchise Systems, Inc., a Delaware corporation, and Westin Hotel Management, L.P., a Delaware limited partnership.

The holders of the disputed domain names are Marketing Total S.A., Keyword Marketing, Inc., Domain Drop S.A., Maison Tropicale S.A. and Web Advertising, Corp. The aforementioned holders are aliases of a single entity and collectively named “Respondent”. Three of the named holders, Keyword Marketing, Inc., Marketing Total S.A. and Domain Drop S.A., all share a common postal address. Furthermore, previous panels have, in past decisions, accepted complaints that joined two or more of the entities above as a single respondent and thus the Complainant is in the circumstances of this case justified in naming multiple entities as the Respondent in a common Complaint.

The dispute concerns the following 17 domain names:

<westinhotelsandresorts.com>

<fourpointsmonclova.com>

<thewestinstjohn.com>

<westincasino.com>

<westinsydney.com>

<westinhotelchicago.com>

<westinbellvue.com>

<westinlapalomaresortandspa.com>

<westininnisbrookresort.com>

<westincaminoreal.com>

<whotelresidences.com

<westinvillas.com>

<westincasurina.com>

<liveatthewestin.com>

<westinphilippineplazahotel.com>

<westinoaksgalleria.com>

<westinsandiego.com>

The Complainant is one of the leading hotel and leisure companies in the world and owns, manages and franchises several hundred properties in approximately one hundred countries. The Complainant is a fully integrated owner, operator and franchisor of hotels and resorts with the following internationally renowned brands: “Westin”, “Four Points:, “W”, “Sheraton”, “Le Mйridien”, “St. Regis”, “The Luxury Collection”, and the recently announced “Aloft” and “Element” Hotels.

The Complainant submits that it owns the registered trademarks WESTIN, FOUR POINTS, W, W HOTELS and W RESIDENCES, among many others, which the Complainant uses in connection with its goods and services in the hotel and leisure industry. The Complainant’s Westin hotels, introduced in 1981, cater to both business and leisure travelers looking for spa retreats, while its mid-priced Four Points hotels, introduced in 1995, cater to budget-minded business and leisure travelers around the world. The Complainant’s W hotels have become well-known for their world class design, world class restaurants, fashionable bars and lounges since they first entered the market in 1998. As of January 2008 there are more than 150 Westin hotels worldwide, more than 130 Four Points hotels worldwide and more than 20 W hotels worldwide.

The Complainant has used the trademarks extensively in connection with hotel services and related goods and services. The Complainant has promoted the trademarks on television, in print advertisements, on the internet and in other media and it is the opinion of the Complainant that the trademarks have become uniquely associated with the Complainant and its services, not only in the United States but also throughout the world.

The Complainant has developed a prominent internet presence for the trademarks in connection with its websites located at “www.westin.com”, “www.westinhotels.com”, “www.fourpoints.com”, and “www.whotels.com”, all of which are also accessible through other Complainant-owned domain names.

The Complainant claims that the Respondent is using the disputed domain names to lead internet users to websites of entities not affiliated with the Complainant. On the websites to which the disputed domain names resolve, the Respondent offers hotel and travel services in direct competition with the Complainant. Internet users who click on any one of the many links on these websites are diverted to additional websites that display hotels and hotel booking links, many of which lead to the websites of the Complainant’s competitors.

The Respondent is a serial cybersquatter who has had at least 114 domain name disputes decided against it. A reverse WHOIS search reveals a total of 10,000 domain names that currently are or once were registered by the Respondent, many of which are obvious infringements of well-known trademarks.

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademarks. In most instances, the disputed domain names consist simply of one of the Complainant’s trademarks and either a geographic location (sometimes misspelled) in which the Complainant’s hotels are located, e.g., <fourpointsmonclova.com>, <thewestinstjohn.com>, <westinsydney.com>, <westinhotelchicago.com>, <westinbellvue.com> (misspelling of Bellevue, Washington), and <westinsandiego.com> - or a nondistinctive word commonly associated with the hotel or leisure industry, e.g., <westincasino.com>, <westinhotelsandresorts.com>, <westinvillas.com>, and <whotelresidences.com>. This “adds to rather than diminishes the likelihood of confusion.”

Some of the disputed domain names refer to a specific hotel (sometimes misspelled), e.g., <westinlapalomaresortandspa.com>, corresponding to The Westin La Paloma Resort & Spa in Tucson, Arizona; <westincaminoreal.com>, corresponding to The Westin Camino Real in Guatemala City, Guatemala; <westincasurina.com>, corresponding to The Westin Casuarina Las Vegas Hotel, Casino and Spa); and <westinoaksgalleria.com>, corresponding to The Westin Oaks Houston which is connected to the famous Galleria Shopping Center.

The Complainant submits that two of the disputed domain names correspond to former hotel locations: <westinphilippineplazahotel.com> corresponds to the Westin Philippine Plaza Hotel, which is now operated under the Sofitel brand; and <westininnisbrookresort.com> corresponds to The Westin Innisbrook Resort outside of Tampa, Florida, which is now operated by Salamander Hospitality, LLC as the Innisbrook Resort and Golf Club. Despite the fact that the physical hotels have changed hands, these domain names still incorporates the Complainant’s trademark and thus are confusingly similar to a service mark used by the Complainant.

The final domain name registered by the Respondent, <liveatthewestin.com>, also incorporates the Complainant’s trademark. The addition of the generic words “live at the” to the Complainant’s trademark in the domain name does nothing to diminish the likelihood of confusion. To the contrary, because the Complainant offers residences in addition to hotel services, the addition of these words actually adds to the likelihood of confusion.

The Respondent has no legitimate interest or right in the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use any of the Complainant’s trademarks in a domain name or in any other manner.

The Complainant’s adoption and extensive use of the trademarks WESTIN, FOUR POINTS and W marks predates the Respondent’s registration of the disputed domain names and the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain names.

The Complainant contends that there is no evidence that the Respondent has ever been known by any of the disputed domain names, which is further evidence that the Respondent has no legitimate interest or rights in them.

To the best of the Complainant’s knowledge, the Respondent’s only use of the disputed domain names is to misdirect internet traffic to the Respondent’s own websites, which advertise links to, inter alia, competing hotel and leisure companies and services. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.

The Complainant submits that the Complainant’s trademarks enjoy international recognition and it is inconceivable that the Respondent was unaware of the Complainant’s trademarks when registering the disputed domain names.

The mere fact that the Respondent registered the confusingly similar disputed domain names without authorization is, in and of itself, evidence of bad faith. Furthermore, the Respondent’s past pattern of registering domain names that include and infringe other companies’ well-known trademarks also demonstrates bad faith.

The format of the Respondent’s websites to which the disputed domain names resolve, with links leading visitors to other commercial sites, strongly suggests that the Respondent is obtaining “click-through” revenue from the disputed domain names. This exploitation of the Complainant’s goodwill for financial gain by creating confusion further demonstrates the Respondent’s bad faith.

Finally, the Complainant submits that the Respondent’s bad faith use is clearly evident in the Respondent’s choice to combine geographical descriptors with the Complainant’s trademarks in the disputed domain names, e.g., <westinsydney.com> and <fourpointsmonclova.com>. It is a well-known and common practice in the hotel industry to use geographic descriptors with hotel brand names to assist customers searching for a particular hotel in a particular city.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademarks WESTIN, FOUR POINTS, FOUR POINTS BY SHERATON, W, W HOTELS, and W RESIDENCES.

The disputed domain name <westinhotelsandresorts.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “hotels and resorts”.

The disputed domain name <westinvillas.com> incorporates the registered trademark WESTIN in its entirety with the addition of the word “villas”.

The disputed domain name <westincasino.com> incorporates the registered trademark WESTIN in its entirety with the addition of the word “casino”.

The disputed domain name <liveatthewestin.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “live”, “at” and “the”.

The disputed domain name <westinoaksgalleria.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “oaks” and “galleria”.

The disputed domain name <westinhotelchicago.com> incorporates the registered trademark WESTIN in its entirety with the addition of the word “hotel” and the geographic location “Chicago”.

The disputed domain name <westinsandiego.com> incorporates the registered trademark WESTIN in its entirety with the addition of the geographic location “San Diego”.

The disputed domain name <westinsydney.com> incorporates the registered trademark WESTIN in its entirety with the addition of the geographic location “Sydney”.

The disputed domain name <westinbellvue.com> incorporates the registered trademark WESTIN in its entirety with the addition of the misspelled geographic location “Bellvue”.

The disputed domain name <westincasurina.com> incorporates the registered trademark WESTIN in its entirety with the addition of the word “casurina”.

The disputed domain name <westinphilippineplazahotel.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “Philippine”, “plaza” and “hotel”.

The disputed domain name <westininnisbrookresort.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “Innisbrook” and “resort”.

The disputed domain name <westincaminoreal.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “Camino” and “real”.

The disputed domain name <westinlapalomaresortandspa.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “Paloma”, “resort”, “and” and “spa”.

The disputed domain name <thewestinstjohn.com> incorporates the registered trademark WESTIN in its entirety with the addition of the words “the”, the letter “st” and the word “john”.

The disputed domain name <fourpointsmonclova.com> incorporates the registered trademark FOUR POINTS in its entirety with the addition of the geographic location “Monclova”.

The disputed domain name <whotelresidences.com> incorporates the registered trademark W in its entirety and partly incorporates the trademarks W HOTELS and W RESIDENCES.

The ability for such generic words and geographic locations to distinguish the disputed domain names from the trademarks of the Complainant is limited. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA. Also see Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 in which it was held that an addition of a place name to a trademark such as “Atlanta” to “Crowne Plaza” is a common method for indicating the location of a business enterprise identified by the trademark or service mark and that it is even more so in the case of hotels. Also see ACCOR v. VVNW Inc., WIPO Case No. D2005-0026 in which the panel held that the addition of the term “hotel” was not sufficient to avoid confusion between the domain name and the trademark. The Panel emphasized that the confusion was actually heightened by adding the word “hotel” because such a term is descriptive of the goods or services marketed by the complainant in relation to the trademark.

Having the above in mind, it is the opinion of the Panel that the disputed domain names are confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant has argued that the Respondent has no connection or affiliation with the Complainant. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks in connection with the disputed domain names which are confusingly similar to the Complainant’s trademarks.

From the submitted evidence in this case, it is clear that the Respondent’s websites, to which the disputed domain names resolve, contain sponsored commercial links leading to hotel and leisure companies and services, some of which are in direct competition with the Complainant. The Respondent’s use of the disputed domain names serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf, WIPO Case No. D2004-0990.

Furthermore, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain names or that the Respondent is or has been commonly known by any of the disputed domain names.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

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

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

From the submitted evidence by the Complainant it is clear that the Complainant’s registered trademarks predate the registration dates of the disputed domain names. Furthermore, it has been argued by the Complainant that the Complainant’s registered trademarks enjoy international recognition and that the Respondent must have been aware of the Complainant’s trademarks when registering the disputed domain names. The fact that the disputed domain names contain generic words, places and geographic descriptors that are not only commonly associated with the hotel industry but also corresponds to several of the Complainant’s hotels indicate that the Respondent must have had the Complainant in mind and thus must have been aware of the Complainant’s trademarks when registering the disputed domain names. The Complainant has submitted evidence that show that the Respondent has a history of registering domain names that include other companies’ trademarks. See for example Edmunds.com, Inc. v. Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A. WIPO Case No. D2007-1427; and Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd., WIPO Case No. D2007-0500.

In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time the Respondent registered the disputed domain names.

It has been argued by the Complainant that the exploitation of the Complainant’s goodwill for financial gain by creating a likelihood of confusion demonstrates the Respondent’s bad faith use. The submitted evidence indicates that the Respondent is obtaining “click-through” revenue from the disputed domain names and that many of the links found on the websites to which the disputed domain names resolve lead to competitors of the Complainant. In previous cases, it has been held that intentional use of confusingly similar domain names to attract internet users to websites with links to competitors of a trademark owner established bad faith. See for example ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649.

The Respondent’s choice to combine geographic descriptors with the Complainant’s trademarks in the disputed domain names indicates that the Respondent is trying to attract internet users searching for the Complainant’s hotels in specific geographic areas in order to obtain click-through commissions from the diversion of internet users. Such use is an indication of use in bad faith according to previous decisions. See for example LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

The circumstances in the case before the Panel indicate that the Respondent has been aware of the Complainant’s trademarks and that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names have been registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <westinhotelsandresorts.com>, <fourpointsmonclova.com>, <thewestinstjohn.com>, <westincasino.com>, <westinsydney.com>, <westinhotelchicago.com>, <westinbellvue.com>, <westinlapalomaresortandspa.com>, <westininnisbrookresort.com>, <westincaminoreal.com>, <whotelresidences.com>, <westinvillas.com>, <westincasurina.com>, <liveatthewestin.com>, <westinphilippineplazahotel.com>, <westinoaksgalleria.com> and <westinsandiego.com> be transferred to the Complainant.

---

Johan Sjцbeck
Sole Panelist

Dated: March 7, 2008