DECISION

Starwood Hotels & Resorts Worldwide, Inc. v. Domain Active Pty. Ltd.

Claim Number: FA0311000214466

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 Domain Active Pty. Ltd., GPO Box 262, Clayfield QLD 4011, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <thewhotel.com> and <thewhotels.com> registered with Fabulous.com Pty. Ltd.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 26, 2003; the Forum received a hard copy of the Complaint on December 1, 2003.

On December 2, 2003, Fabulous.com Pty. Ltd. confirmed by e-mail to the Forum that the domain names <thewhotel.com> and <thewhotels.com> are registered with Fabulous.com Pty. Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty. Ltd. has verified that Respondent is bound by the Fabulous.com Pty. Ltd. 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 December 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 23, 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@thewhotel.com and postmaster@thewhotels.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 December 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <thewhotel.com> and <thewhotels.com> domain names are confusingly similar to Complainant’s W HOTELS mark.

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

3. Respondent registered and used the <thewhotel.com> and <thewhotels.com> domain names in bad faith.

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

FINDINGS

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the W HOTELS mark (Reg. No. 2,294,753 registered on November 23, 1999) related to hotel and restaurant services. Complainant provides hotel services and hotel reservation services under the mark. Complainant operates its principal website at the <whotels.com> domain name, where Internet users find hotel advertising and hotel reservation services.

Respondent registered the <thewhotel.com> domain name on July 17, 2002 and the <thewhotels.com> domain name on August 13, 2002. Respondent is using the disputed domain names to divert Internet traffic to a website that offers links to various websites, which offer hotel reservation services.

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 demonstrated that it has rights in the W HOTELS mark through its registration with the USPTO. 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”).

Complainant argues that Respondent’s <thewhotel.com> and <thewhotels.com> domain names are confusingly similar to Complainant’s W HOTELS mark because the disputed domain names appropriate Complainant’s mark and add the generic term “the” and the generic top-level domain (“gTLD”) “.com” to the mark. The <thewhotel.com> domain name also omits the letter “s” from the end of the mark. These additions and omissions fail to sufficiently differentiate the domain names from the mark for purposes of Policy ¶ 4(a)(i) because the mark remains the dominant element of the domain name. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

The Panel finds that Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Respondent has not come forward to contest the allegations in the Complaint. Accordingly, the Panel accepts all of Complainant’s reasonable allegations and inferences as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the disputed domain names. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or interests under Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the <thewhotel.com> and <thewhotels.com> domain names to divert Internet traffic to a website that offers links to various websites, which offer hotel reservation services. Respondent’s use of domain names confusingly similar to Complainant’s W HOTELS mark to offer hotel reservation services in competition with Complainant’s business manifests neither 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Moreover, Respondent has offered no evidence and there is no indication in the record that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has not demonstrated any rights to or legitimate interests in the domain names with regard to 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s registration and use of the <thewhotel.com> and <thewhotels.com> domain names to divert Internet traffic to a website offering links to hotel reservation services in competition with Complainant’s services demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services).

Furthermore, based on Respondent’s registration of domain names confusingly similar to Complainant’s mark and use of the domain names to divert Internet users to competing websites, the Panel presumes that Respondent had actual or constructive knowledge of Complainant’s rights in its W HOTEL mark. The registration and use of a domain name that incorporates another’s trademark, despite actual or constructive knowledge of the trademark holder’s rights, is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <thewhotel.com> and <thewhotels.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 12, 2004

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