DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Hotel Partners

Claim Number:  FA0305000157308

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, Inc., White Plains, NY (“Complainant”) represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Phleger PLLC. Respondent is Hotel Partners, Richmond, VA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sheratonfourpointshotels.com>, registered with Bulkregister.Com, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 13, 2003; the Forum received a hard copy of the Complaint on May 16, 2003.

On May 16, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <sheratonfourpointshotels.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, 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 May 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2003 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@sheratonfourpointshotels.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 Forum transmitted to the parties a Notification of Respondent Default.

On June 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sheratonfourpointshotels.com> domain name is confusingly similar to Complainant’s SHERATON and FOUR POINTS marks.

2. Respondent does not have any rights or legitimate interests in the <sheratonfourpointshotels.com> domain name.

3. Respondent registered and used the <sheratonfourpointshotels.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Starwood Hotels & Resorts Worldwide, Inc., holds many service mark registrations for the SHERATON mark on the Principal Register of the U.S. Patent and Trademark Office (e.g., U. S. Reg. No. 1,784,580, registered on July 27, 1993). Complainant also holds a service mark registration for the FOUR POINTS mark (U.S. Reg. No. 2,003,614, registered on September 24, 1996) and the FOUR POINTS HOTEL design mark (U.S. Reg. No. 2,014,840, registered on August 20, 1996). Complainant has operated under the SHERATON mark since 1928 in association with its hotel, motel, and restaurant services. Complainant operates commercial websites promoting its services at the <sheraton.com>, <fourpoints.com>, <fourpointshotels.com> and <sheratonfourpoints.com> domain names.

Respondent, Hotel Partners, registered the <sheratonfourpointshotels.com> domain name on March 15, 2002, and is not licensed or authorized to use Complainant’s registered marks for any purpose. The services advertised on Respondent’s website consist of hotel reservation and related services, services that are nearly identical to those offered by Complainant at its <sheraton.com>, <fourpoints.com>, <fourpointshotels.com> and <sheratonfourpoints.com> domain names. 

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."

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.

Identical and/or Confusingly Similar

Complainant has established rights in the SHERATON and FOUR POINTS marks through registration of those marks on the Principal Register of the U.S. Patent and Tradmark Office, as well as through widespread and continuous use of the marks in commerce.

Respondent’s <sheratonfourpointshotels.com> domain name is confusingly similar to Complainant’s SHERATON and FOUR POINTS marks. The disputed domain name incorporates two of Complainant’s registered marks and adds the word “hotels” to them. As “hotels” is a word that perfectly describes Complainant’s operations under its marks, Respondent’s addition of this word to Complainant’s marks in its domain name does not dispell any confusing similarity between the two. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Accordingly, the Panel finds that the <sheratonfourpointshotels.com> domain name is confusingly similar to Complainant’s SHERATON and FOUR POINTS marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant can meet its burden under Policy ¶ 4(a)(ii) by showing that Respondent is unable to avail itself of the provisions of Policy ¶¶ 4(c)(i)-(iii). With such a showing, Complainant’s burden shifts to Respondent, who is in default in these proceedings and thus unable to meet that burden. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

The Panel chooses to view Respondent’s decision to leave the Complaint uncontested as evidence that it lacks rights or legitimate interests in the disputed domain name. 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); Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

Respondent uses the <sheratonfourpointshotels.com> domain name to promote services consisting of hotel reservation and related services. As these services are provided under Complainant’s mark, without authorization by Complainant, and as these services are nearly identical to those offered by Complainant, they do not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

There is no evidence before the Panel indicating that Respondent has ever been “commonly known by” a combination of Complainant’s registered marks. On the contrary, the evidence available indicates that Respondent is known only as “Hotel Partners.” The Panel finds that Complainant has successfully met its burden in demonstrating that Respondent can not avail itself of the provisions of Policy ¶ 4(c)(ii). See 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"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sheratonfourpointshotels.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <sheratonfourpointshotels.com> domain name in bad faith. Considering Respondent’s use of the disputed domain name to provide services similar to those of Complainant, it is clear that the disputed domain name was registered to take advantage of the goodwill surrounding Complainant’s mark for commercial gain. Creating a likelihood of confusion as to whether Complainant sponsors or endorses Respondent’s website, for profit, is evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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); see also Kmart v. Kahn, 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)).

The Panel thus finds that Respondent registered and used the <sheratonfourpointshotels.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sheratonfourpointshotels.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 24, 2003

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