|Kläger||Sheraton International, Inc., Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Worldwide Franchise Systems, Inc.|
|Beklagter||Kerryweb, KerryWeb Enterprise, Inc, North West Enterprise, Inc., Steve Kerry|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc. , The Sheraton, LLC , Worldwide Franchise Systems, Inc. , Sheraton International, Inc. v. KerryWeb Enterprise, Inc , North West Enterprise, Inc. Kerryweb, Steve Kerry
Case No. D2007-1150
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc, a Maryland corporation, and its affiliated entities, Worldwide Franchise Systems, Inc., a Delaware corporation; The Sheraton, LLC, a Delaware limited liability company; and Sheraton International, Inc., a Delaware corporation (collectively, “Complainant”), of United States of America. Complainant is represented by Fross Zelnick Lehrman & Zissu, P.C., New York, United States of America.
The Respondents are KerryWeb Enterprise, Inc, California, United States of America.; North West Enterprise, Inc, California, United States of America.; Kerryweb, Seoku, Kwangju, KR, and Steve Kerry, California, United States of America (collectively, “Respondent”).
2. The Domain Names and Registrars
The twenty-four disputed domain names (collectively, the “Domain Names”) are
<fourpointssheraton.net>, <fourpointssheraton.org>, <hotelsheraton.com>, <hotel-sheraton.net>, <hotelsheraton.net>, <hotel-sheraton.org>, <hotelsheraton.org>, <hotels-sheraton.net>, <hotels-sheraton.org>, <luxurycollbysheratonhotel.com>, <luxurycollbysheratonhotels.com>, <sheratonhotelchain.com>, <sheraton-hotel.org>, <sheratonhotels.org>, <wwwfourpointssheraton.com>, <wwwfourpointssheraton.net>, <wwwhotelsheraton.org>, <wwwsheratonhotel.org>, <wwwsheratonhotels.net>, <wwwsheratonhotels.org>, <wwwsheraton.org>, <wwwsheratons.org>, <20hotelsheraton.net>, <20hotelsheraton.org>.
The registrar for the Domain Name <fourpointssheraton.net> is Fabulous.com Pty Ltd., Brisbane, Queensland, Australia (“Fabulous.com”). The registrar for two of the Domain Names - <hotelsheraton.org> and <sheratonhotels.org> - is Dotregistrar, LLC, Vancouver, Washington, United States of America (“Dotregistrar”). The registrar for the other twenty-one Domain Names is OnlineNic, Inc. d/b/a China-Channel.com, San Francisco, California and Xiamen, Fujian, People’s Republic of China (“Online.Nic”). The three registrars are referred to collectively as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 7, 2007, the Center transmitted requests for registrar verification in connection with the Domain Names to each of the Registrars by email. On August 7, 2007, Dotregistrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names <hotelsheraton.org> and <sheratonhotels.org> and providing the contact details. On August 8, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name <fourpointssheraton.net> and providing the contact details. On August 10, 2007, OnlineNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the other twenty-one Domain Names and providing the contact details.
In response to a notification by the Center on August 10, 2007, that the Complaint was administratively deficient,, , the Complainant filed an amendment to the Complaint on August 15, 2007. The Center verified that the Complaint, together with the amendment to the Complaint (hereafter referred to together as 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 August 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2007.
The Center appointed Dana Haviland as the sole panelist in this matter on September 24, 2007. 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
Complainant owns trademarks in the United States and in other countries for SHERATON, FOUR POINTS, FOUR POINTS BY SHERATON AND THE LUXURY COLLECTION (collectively, “Complainant’s Marks”), which it uses in connection with its goods and services in the hotel and leisure industry.
Complainant owns five federal trademark registrations for the SHERATON Mark issued by the United States Patent and Trademark Office:
No. 679,027, dated May 19, 1959;
No. 954,454, dated March 6, 1973;
No. 1,784,580, dated July 27, 1993;
No. 1,884,365, dated March 14, 1995;
No. 3,020,845, dated November 29, 2005.
Complainant owns U.S. trademark registrations for its other Marks as follows:
THE LUXURY CONNECTION, No. 2,033,783, dated January 28, 1997;
FOUR POINTS, No. 2,003,614, dated September 24, 1996;
FOUR POINTS BY SHERATON, No. 3,018,022, dated November 22, 2005.
Complainant has websites located at “www.sheraton.com”, “www.sheratonhotels.com”, “www.fourpoints.com”, and “www.luxuryconnection.com”.
Each of the Domain Names incorporates one or more of the Complainant’s Marks in its entirety.
The websites of the Domain Names link to websites of third parties offering goods and services of Complainant’s competitors.
5. Parties’ Contentions
Complainant states that it is one of the leading hotel and leisure companies in the world and owns, manages or franchises several hundred properties in approximately one hundred countries. Its hotels and resorts include several internationally renowned brands: SHERATON, WESTIN, FOUR POINTS BY SHERATON, W., LE MERIDIEN, ST. REGIS, and THE LUXURY COLLECTION.
Complainant states that through its widespread, extensive use of its Marks in connection with hotel and leisure services and related goods and services, and its expenditure of large sums in promoting its marks on television, in print advertisements, on the Internet and in other media, Complainant’s Marks have become uniquely associated with Complainant and its services, have attained considerable fame in the United States and throughout the world, and represent enormous goodwill.
Complainant states that it has also developed a prominent Internet presence for Complainant’s Marks, with websites located at “www.sheraton.com” “www.sheratonhotels.com”, “www.fourpoints.com”, and “www.luxuryconnection.com”, all of which are also accessible through other Complainant-owned domain names.
The Complaint alleges that Respondent has registered the twenty–four Domain Names, each of which incorporates at least one of Complainant’s Marks in its entirety, in order to lead Internet users to websites of entities not affiliated with Complainant that offer hotel and travel services in direct competition with Complainant.
According to Complainant, when Internet users looking for services offered by Complainant type any of the Domain Names into the address bar of their Internet browser, they are led to a landing page displaying numerous travel-related links. Complainant further contends that many of the links to third party websites found on the Domain Names’ landing pages are designed to give the misleading impression that they lead to Complainant’s websites, but instead they direct users either to a search engine, or to webpages that display links to hotels and hotel booking agents offering services that compete with Complainant’s hotel and leisure services.
Complainant contends that Respondent is a serial cybersquatter that has been named in many domain name dispute proceedings, all of which were decided against Respondent. According to the Complaint, the Respondent regularly uses various entity names to shield its identity, including KerryWeb Enterprise, Inc.; North West Enterprise, Inc.; and Kerryweb, all of which have the same email address, email@example.com.
Identical or confusingly similar.
Complainant contends that each of the Domain Names is confusingly similar to Complainant’s Marks, incorporating one or more of the Marks in its entirety. Some of the Domain Names add nothing more than the generic top level domain, e.g., “.net”. Others add non-distinctive words commonly associated with the hotel or leisure industry. Others employ classic typosquatting by misspelling Complainant’s Marks or by adding the prefix “www” immediately before Complainant’s Marks so that an Internet user who mistakenly omits the “dot” when typing one of Complainant’s website addresses will be diverted to Respondent’s sites instead.
Rights or legitimate interests.
Complainant alleges that Respondent has no legitimate interest in the Domain Names, as Respondent has no connection or affiliation with Complainant and has not received any license or consent to use Complainant’s Marks in a domain name or any other manner, and there is no evidence that Respondent has ever been known by any of the Domain Names. Complainant contends that Respondent’s use of the Domain Names to misdirect Internet traffic to Respondent’s Link Sites, which advertise links to competing hotel and leisure companies and services, is neither a bona fide offering of goods or services nor a legitimate use. Complainant asserts that its Marks are famous, and that the Domain Names were chosen to create an impression of association with Complainant.
Registered and used in bad faith.
According to Complainant, in view of the international recognition of Complainant’s Marks, it is inconceivable that Respondent was unaware of Complainant’s trademarks when it registered the Domain Names, and at a minimum, Respondent was on constructive notice of Complainant’s rights by virtue of the available searches of Whois databases or the USPTO’s publicly available websites. Complainant further contends that Respondent’s use of typosquatting through misspellings and the “www” prefix is itself evidence of bad faith.
Complainant contends that Respondent’s use of the Domain Names to link Internet users to Complainant’s competitors establishes bad faith. Complainant further alleges that the format of Respondent’s websites suggests that Respondent is obtaining “click-through” revenue from the Domain Names, and that this exploitation of Complainant’s goodwill for financial gain by creating confusion demonstrates bad faith. Finally, Complainant asserts, the fact that many of the featured links compete directly with Complainant’s services is further evidence of Respondent’s bad faith.
Complainant requests transfer of the twenty-four Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Complainant has established rights in each of the Complainant’s Marks.
Each of the Domain Names contains one or more of the Complainant’s Marks, thus creating confusing similarity. The addition of the generic top domain is disregarded for purposes of determining confusing similarity. The inclusion of the “www” prefix before one or more of Complainant’s Marks in some of the Domain Names heightens the confusing similarity to Complainant’s own websites utilizing its Marks. This usage as well as the misspelling of Complainant’s Marks by Respondent in other Domain Names constitutes typosquatting designed to create confusion.
The Panel finds that each of the twenty-four Domain Names is confusingly similar to one or more of the Complainant’s Marks, and that Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant states that it has not granted to Respondent, and is not aware of, any rights or legitimate interests by Respondent in any of the Domain Names, and asserts that Respondent has none.
As noted in CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201, it is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent”. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416. Respondent has not asserted any right or interest in the Domain Names in this case and has presented no evidence in opposition to Complainant’s assertions in this regard.
The Panel finds that the Respondent has no rights or legitimate interests in respect of any of the twenty-four Domain Names, pursuant to Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has shown bad faith registration and use under paragraph 4(b)(iv) of the Policy. It appears that Respondent has used the Domain Names in order to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites and the products or services offered there. As stated in Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0640, “the Respondent’s domain name points to a website which is a mere collection of links to other websites…[T]his website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4(b)(iv) is therefore satisfied”.
In Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, the panel found that such activity constitutes bad faith: “As regards Respondent’s use of the domain names, it appears that under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.’ Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the Panel noted that “it appears that the Respondent, by using the Domain Name…tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant…The websites to which the links in the directory resolve are commercial sites”. Such use of the Domain Names in this case evidences bad faith under paragraph 4(b)(iv) of the Policy.
Moreover, in finding bad faith herein, the Panel takes note of the Respondent’s long history of “typosquatting”, as shown in the extensive list of UDRP cases in which Respondent’s domain names have been transferred to aggrieved trademark owners on the grounds of Respondent’s bad faith registration and use on similar facts.
Complainant has shown bad faith registration and use of the Domain Names as required by Paragraph 4(a) (iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the following twenty-four Domain Names be transferred to the Complainant:
Date: October 8, 2007