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Generic Top Level Domain Name (gTLD) Decisions |
Starwood Hotels & Resorts Worldwide,
Inc. v. Out in Style, Inc.
Claim Number: FA0410000339598
PARTIES
Complainant
is Starwood Hotels & Resorts
Worldwide, Inc. (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger
PLLC, 55 S. Commercial
Street, Manchester, NH 03101.
Respondent is Out in Style, Inc. (“Respondent”), represented by Stephen H. Sturgeon of Law Offices of Steven H. Sturgeon & Assoc. of Washington, D.C., 1116 Hurdle Hill Drive, Potomac, MD
20854.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <shereton.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
7, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 12, 2004.
On
October 8, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the National Arbitration Forum that the
domain name <shereton.com> is registered with
Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is
the current registrant of the name. Intercosmos
Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by
the Intercosmos Media Group, Inc. d/b/a
Directnic.com 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
October 13, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 2, 2004 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@shereton.com by e-mail.
A
timely Response was received and determined to be complete on November 2, 2004.
On November 17, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant holds United States registered service marks for SHERATON, a mark
which it contends is famous and which it has used
continuously in association
with hotel, motel and restaurant services, among others, since 1928. These include Nos. 1,784,580 (registered July 27, 1993) in respect of hotel, motel,
motor inn, restaurant and lounge services; 679,027 (registered
May 19, 1959) in
respect of motel or roadside hotel and restaurant services; 1,884,365 (registered
March 14, 1995) in respect of
casino and gaming services; 954,454 (registered
March 6, 1973) in respect of a periodic publication. Complainant also relies on
its
U.S. registered service mark 2,297,362 VACATIONS BY SHERATON (registered
December 7, 1999) in respect of motel and hotel services.
The disputed domain name <shereton.com>
is a misspelling of and is essentially identical to Complainant’s mark. The
disputed domain name links to a website having links
to a variety of hotel and
travel-related websites. Complainant
offers the same services under its marks and at its web site <sheraton.com>.
It is likely consumers would mistakenly type <shereton.com>
intending to reach Complainant’s website and thus be misled into a hotel
reservations site that is not Complainant’s site.
Respondent is using the disputed domain name to
attract internet users to its site for commercial gain. This is not a bona fide
offering
of goods or services within the Policy ¶4(c)(i). Respondent owns no
rights in and has no licence from Complainant to use SHERATON
or SHERETON and
has never been known by either term.
Its use of the domain name is commercial and not fair use.
The
disputed domain name was registered and is being used in bad faith.
B.
Respondent
The
Policy was established to permit the expedited disposition of clear abuses. A
clear abuse is certainly not present in the instant
case, nor is the instant
case a clear case of cybersquatting and cyber piracy.
Complainant
must prove each element. Complainant does not have solid trademark rights in
the mark “RAPID SETTLEMENT” [sic]. Respondent
has a legitimate interest in the
disputed domain name, which was not registered and has not been used in bad
faith.
Respondent
has made a bona fide offering of goods and services on its website for
individuals who are seeking the many different types
of goods and services that
are offered on the website at the domain in question. It is inconceivable that
anyone arriving on the
page would believe that it is the website of Complainant
and Complainant’s Sheraton Hotels. If a website
visitor were seeking the website of Complainant and Complainant’s Sheraton
hotels, it would be abundantly clear that
the intended website had not been
found. A simple back-click or
correction of the visitor’s typing could return the visitor to the intended
website.
Complainant must prove the domain name
was registered and is being
used in bad faith. These requirements are conjunctive: Registration in bad
faith is insufficient if one does not use the
domain name in bad faith, and use
in bad faith is insufficient unless the domain name was originally registered
in bad faith. Viz Communications, Inc. v. Redsun, D2000-0905 (WIPO Dec.
22, 2000); Shirmax Retail Ltd. v, CES Marketing Group, AF-0104
(eResolution Mar. 20, 2000). In the case at hand, Complainant has neither
proven bad faith registration nor bad faith use. There is absolutely no evidence that Respondent registered or
used the domain name in bad faith.
Furthermore, Respondent purchased the
domain name in September of 1998 – long before cybersquatting laws became
effective. .
Additionally, Complainant has not
introduced any evidence indicating that Respondent has offered to sell the
domain name to Complainant. Respondent
has, in fact, never offered to sell the domain name to Complainant.
Accordingly, for all the above reasons,
since Complainant has failed to meet its burden of proving bad faith
registration and use
of the domain name, the Complaint must, therefore, be
dismissed.
FINDINGS
The disputed domain name was registered
on 24 September 1998. It is essentially identical and confusingly similar to
the mark SHERATON,
in which Complainant has rights. Respondent has no rights or
legitimate interests in the disputed domain name, which it registered
and is
using in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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, Starwood Hotels &
Resorts Worldwide, Inc., of White Plains, New York, must prove it has rights in
the marks on which
it relies. As in the case of Starwood Hotels & Resorts Worldwide, Inc. v. 613 181 BC Ltd,
FA 117051 (Nat. Arb. Forum September 26, 2002), Complainant sought to
demonstrate its trademark rights by submitting TARR search results,
none of
which refer to Complainant as registrant or otherwise.
Those TARR search results show that the
mark SHERATON, Reg. No. 679,027 is registered in the name of Sheraton
Corporation of America
of Boston, Massachusetts. All the other marks on which Complainant relies are shown as
registered in the name of ITT Sheraton Corporation of Boston, Massachusetts.
This failure to prove Complainant’s
asserted rights would normally justify dismissal of the Complaint. Respondent has not challenged Complainant’s
asserted ownership but this alone would not justify a finding that Complainant
has rights
in the marks.
However, the Panel takes notice of other,
recent cases under the Policy in which
Complainant’s ownership of the very same marks has been established: Starwood Hotels & Resorts Worldwide, Inc. v.
Hotel Partners, FA 157308 (Nat. Arb. Forum June 24, 2003); Starwood
Hotels & Resorts Worldwide, Inc. v. Andrey
Michailov,
FA 216801 (Nat. Arb. Forum January 19, 2004); Starwood Hotels
& Resorts Worldwide, Inc. v. Shasliva Pty
Ltd.
, FA 216872 (Nat. Arb. Forum January 26, 2004); Starwood Hotels &
Resorts Worldwide, Inc. v. Billy Boy's, FA 243496 (Nat. Arb. Forum April 14, 2004) and Starwood Hotels & Resorts Worldwide,
Inc. v. Hotel Partners, FA 248943 (Nat. Arb. Forum May 13, 2004). Under
these circumstances it would unnecessarily prolong this administrative
proceeding
if the Panel were to ask Complainant to provide formal proof of its
rights.
The Panel finds that Complainant has
rights in the SHERATON mark. It is unnecessary to decide this case by reference
to the mark VACATIONS
BY SHERATON.
The disputed domain name is identical,
but for the letter ‘e’ in place of the letter ‘a’ (which makes no difference to
the phonetic
similarity) to the mark SHERATON. For the reasons given in Starwood Hotels & Resorts Worldwide,
Inc. v. Andrey
Michailov,
FA 216801 (Nat. Arb. Forum January 19, 2004) (<sheratin.com>), the Panel
finds the disputed domain name <shereton.com>
to be essentially identical
and confusingly similar to Complainant’s SHERATON mark.
Complainant has
established this element of its case.
Complainant’s
mark has been used since 1928 and is famous: Rolls-Royce plc v. Internet Billions Domains Inc.,
D2003-0270 (WIPO June 25, 2003).
In the
absence of any licence from Complainant, Respondent is using the disputed
domain name, which is confusingly similar to Complainant’s
famous SHERATON
mark, to advertise ‘Sheraton’ hotels (thereby proving that Respondent knows of
the SHERATON mark) and services that
directly compete with those offered by
Complainant under that mark. Thus, Respondent is not using the disputed domain
name in connection
with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant
to Policy
¶ 4(c)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. 613 181 BC Ltd,
FA117051 (Nat. Arb. Forum September 26, 2002) and the cases there cited; see
also Six Continents Hotels, Inc. v. Patrick Ory, D2003-0098 (WIPO March 26, 2003).
Respondent
has no rights or legitimate interests in the disputed domain name. Complainant has established this element of
its case.
Amongst the places advertised on
Respondent’s website are several ‘Sheraton’ hotels, as well as other hotels
that do not appear to
be Sheraton hotels. Respondent, knowing of Complainant’s
mark, is therefore using the disputed domain name, for commercial gain,
to
attract Internet users to its website by creating a likelihood of confusion
with Complainant’s mark as to the source of Respondent’s
website and as to the
affiliation of the services on Respondent’s web site.
Far from immediately alerting Internet
users who misspell the word Sheraton to the fact that they have not arrived at
their intended
destination, the presence of the names of several ‘Sheraton’
hotels on the website home page serves to confirm in their minds the
false
impression that they have indeed reached Complainant’s site as expected. Such
use of the domain name constitutes evidence of
both bad faith registration and
bad faith use: Policy ¶4(b)(iv).
Respondent
correctly states that use in bad faith is insufficient unless the domain name
was originally registered in bad faith, citing
Viz Communications v. Redsun, D2000-0905 (WIPO December 22, 2000)
and Shirmax Retail Ltd. v. CES Marketing
Group, AF-0104 (eResolution March 20, 2000). However, this overlooks that
bad faith use under ¶4(b)(iv) is evidence of both bad faith registration
and
bad faith use. It also overlooks the
passage cited in Viz Communications
from Passion Group Inc. v. Usearch Inc.,
AF-0250 (e-resolution) as follows:
The
panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii)
and 4(b)(iv) by the contrast between the introductory
words of paragraph 4(c): “any of the following circumstances …shall
demonstrate your rights or legitimate interests” and the introductory words
of paragraph 4(b): “the following
circumstances…shall be evidence of the registration and use of a domain name in
bad faith”.
This
contrasting language indicates that use of the kind described in 4(b)(iv) is to
be taken as evidence of bad faith registration
as well as evidence of bad faith
use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial
weight to evidence of constructive bad faith registration furnished by
paragraph 4(b)(iv), and the panel may have regard to other evidence in
determining whether the requirements of 4(a)(iii) have been
proved.
This
approach accords with the Policy by enabling a finding of bad faith
registration to be made where bad faith use within 4(b)(iv)
is the only
evidence tending to show the purpose for which the domain name was registered.
Where, however, there is other relevant
evidence, such as evidence that the
domain name was registered for a permissible purpose, it must be weighed
against any evidence
of bad faith registration constituted by evidence of bad
faith use within 4(b)(iv). It is
difficult to imagine circumstances in which, under this approach, subsequent
bad faith use within 4(b)(iv) would suffice to
prove that a domain name was
originally registered in bad faith.
Passion Group Inc. v. Usearch Inc.,
AF-0250 (e-resolution)
(emphasis added).
Here bad faith use within 4(b)(iv) is the
only evidence tending to show the purpose for which the domain name was
registered. Accordingly
the Panel finds the disputed domain name was registered
and is being used in bad faith.
Complainant has established this element of its case.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shereton.com>
domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 1, 2004
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