DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Reed Anderson Tennis School

Claim Number:  FA0404000253017

PARTIES

Complainant is Starwood Hotels & Resorts Worldwide, Inc. (“Complainant”), represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC, 55 South Commercial Street, Manchester, NH 03101.  Respondent is Reed Anderson Tennis School (“Respondent”), 35014 Mission Hills Drive, Rancho Mirage, CA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <starwoodspa.com> and <westinspa.com>, registered with Network Solutions, Inc.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 14, 2004; the Forum received a hard copy of the Complaint on April 16, 2004.

On April 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <starwoodspa.com> and <westinspa.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 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@starwoodspa.com and postmaster@westinspa.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 May 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <starwoodspa.com> and <westinspa.com> domain names are confusingly similar to Complainant’s STARWOOD and WESTIN marks.

2. Respondent does not have any rights or legitimate interests in the <starwoodspa.com> and <westinspa.com> domain names.

3. Respondent registered and used the <starwoodspa.com> and <westinspa.com> domain names in bad faith.

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

FINDINGS

Complainant has rights in the STARWOOD and WESTIN marks and uses the marks for its hotel advertising and hotel reservation services.  Complainant, through its registrations with the USPTO holds rights in the STARWOOD mark (Reg. Nos. 2,525,771 and 2,735,078, registered on January 1, 2002 and July 8, 2003, respectively).  Also, Complainant, through its related companies, holds several registrations for the WESTIN mark with the USPTO, including Reg. Nos. 2,257,629 and 1,720,799 (registered on June 29, 1999 and September 29, 1992, respectively). 

Respondent registered the <starwoodspa.com> and <westinspa.com> domain names on January 13, 2003.  The domain names currently resolve to an “under construction” website.  Respondent is a tennis school doing business with the guests of Complainant’s Westin Mission Hills hotel in Rancho Mirage, California but is not affiliated with Complainant and has not been authorized to use Complainant’s trademarks.

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

Due to Respondent’s failure to provide a Response, the Panel accepts all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant asserts that through its related companies it holds several registrations for the WESTIN mark with the USPTO.  Although Complainant has not provided evidence showing a relationship between Complainant and the holder of the WESTIN mark, due to Respondent’s failure to contest the Complaint, the Panel accepts Complainant’s assertion as true.  Thus, the Panel concludes that Complainant has rights in the WESTIN mark.  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).

Moreover, Complainant registered the STARWOOD PREFERRED PLANNER and STARWOOD APPROVED VENDOR marks with the USPTO, which include the primary identifier STARWOOD.  The STARWOOD APPROVED VENDOR and STARWOOD PREFERRED PLANNER marks were registered with the USPTO on January 1, 2002 and July 8, 2003, respectively (Reg. Nos. 2,525,771 and 2,735,078).  The Panel concludes that Complainant has rights in the STARWOOD mark.

Respondent’s <starwoodspa.com> and <westinspa.com> domain names are confusingly similar to Complainant’s STARWOOD and WESTIN marks because the domain names fully incorporate the marks and merely add the generic word “spa.”  The addition of the generic word “spa” does not distinguish the domain names from Complainant’s marks.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

Furthermore, the addition of the generic top-level domain “.com” is irrelevant in determining whether the <starwoodspa.com> and <westinspa.com> domain names are confusingly similar to Complainant’s marks.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds the Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to contest the allegations of the Complaint; therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <starwoodspa.com> and <westinspa.com> domain names.  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 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).

Furthermore, nothing in the record establishes that Respondent is commonly known by the <starwoodspa.com> and <westinspa.com> domain names.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Also, Respondent’s <starwoodspa.com> and <westinspa.com> domain names were registered over a year ago and resolve to an “under construction” website.  Thus, Respondent has passively held the domain names, which does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

The Panel finds the Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s <starwoodspa.com> and <westinspa.com> domain names are confusingly similar to Complainant’s marks and have been passively held for over a year.  Respondent’s passive holding of the domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Furthermore, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s marks because Respondent is a tennis school that does business with guests of one of Complainant’s hotels and because the marks were registered with the USPTO.  Registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); 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 the Policy ¶ 4(a)(iii) has been satisfied.

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 <starwoodspa.com> and <westinspa.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 4, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/818.html