Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Nikola Kulas
Case No. D2016-0527
1. The Parties
The Complainant is Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC, Stamford, Connecticut, United States of America (together referred to as "the Complainant"), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Nikola Kulas, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <sheraton.melbourne> ("the Domain Name") is registered with Crazy Domains FZ-LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2016 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2016.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 20, 2016. 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
The Complainant is one of the leading hotel and leisure companies in the world. It owns the SHERATON trade mark for, inter alia, hotel services around the world including in Australia where the Respondent is based. First use in commerce is recorded in the registrations in the United States of America as 1928.
The Domain Name was registered in 2015 and points to a holding page. The Respondent did not respond to this Complaint.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
The Complainant is one of the leading hotel and leisure companies in the world and owns the SHERATON mark which it has used in connection with its goods and services in the hotel and leisure industry for over eighty years. Today, there are over four hundred Sheraton hotels worldwide, including one hotel in Melbourne, Australia. The Complainant has registered trade marks for SHERATON throughout the world including in Australia. It first registered the Sheraton trade mark in 1959 in the United States of America. It has a website at "www.sheraton.com".
The Complainant registered its SHERATON mark with the Trade Mark Clearing House so the Respondent would have received a warning notice of the Complainant's rights when it attempted to register the Domain Name.
The generic Top-Level Domain ("gTLD") indicators are not typically taken into consideration when judging confusing similarity. Even if the ".melbourne" gTLD were considered in assessing confusion its inclusion would favour Complainant since ".melbourne" indicates a location where the Complainant operates a well-known Sheraton hotel. Upon seeing the Domain Name consumers will reasonably believe that it is owned by the Complainant or is somehow related to or approved by the Complainant when that is not the case.
The Complainant's registrations predate the registration of the Domain Name in 2015 and the Respondent cannot establish any rights or legitimate interests. The Respondent has no connection with the Complainant and has received no consent to use the Complainant's mark. There is no evidence the Respondent is commonly known by the "Sheraton" name or that the Respondent has any plans to use the Domain Name in connection with a bona fide use.
The Complainant's SHERATON mark is famous and well-known. The website connected to the Domain Name is a holding page. Inactive use of a domain name comprising a famous mark is bad faith following the Telstra Communications v Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusing Similar
The Complainant has trade mark registrations consisting of the SHERATON word mark around the world including the United States of America with first use in commerce in the United States of America recorded as 1928. It also has registrations for its mark in Australia where the Respondent is based. The Domain Name is confusingly similar to the Complainant's trade mark consisting of the Complainant's SHERATON registered trademark and the new gTLD ".melbourne", Melbourne being a place where the Complainant has a Sheraton hotel. The distinctive part of the Domain Name is the SHERATON name. The addition of the new gTLD ".melbourne" does nothing to prevent the confusing similarity of the Domain Name with the Complainant's SHERATON trade mark as ".melbourne" is a geographically descriptive name and a city where the Complainant does business. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services or indeed for any purpose including any noncommercial or fair use. The Respondent does not appear to be commonly known by the Domain Name. In the circumstances of this case, and in view of the Panel's discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Use in Bad Faith
Paragraph 4 (b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. This case does not fall squarely within these criteria, but they are non-exclusive.
A website connected to the Domain Name could drive traffic to third party goods and services in a confusing manner and could be used for commercial gain and be disruptive to the Complainant's business. Although no evidence is put forward of such use having yet taken place, the Panel can understand why the Complainant views the Domain Name as a threat which could be used to cause a lot of damage to its business. The Respondent has not provided any evidence of any reason why it should be allowed to hold the Domain Name given the Complainant's rights. The Panel agrees with the Complainant that passive use of a well-known mark in a domain name can amount to bad faith where there is no evidence of actual or intended good faith use and that it does in this case. Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith following Telstra Communications v Nuclear Marshmallows, Supra
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sheraton.melbourne> be transferred to the Complainant.
Dawn Osborne Sole Panelist Date: April 25, 2016
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