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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa
Case No. D2008-1812
1. The Parties
Complainant is Starwood Hotels & Resorts Worldwide Inc., of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, United States.
Respondent is Franck Dossa, of Miami Beach, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <wsouthbeachresidence.com> is registered with OVH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on November 24, 2008. On November 25, 2008, the Center transmitted by email to OVH a request for registrar verification in connection with the disputed domain name. On November 26, 2008, OVH transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 27, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Response was filed with the Center on December 23, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 13, 2009. 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.
By e-mail dated January 6, 2009, Complainant filed a вЂњSupplemental Submission in Support of UDRP ComplaintвЂќ. The Panel reviewed that submission and determined that it merely constituted ComplainantвЂ™s effort to respond to RespondentвЂ™s legal arguments. Because ComplainantвЂ™s Supplemental Submission addresses no new or unforeseeable circumstances raised in the Response, the Panel rejects the Supplemental Submission.
4. Factual Background
Complainant has registered the service mark W on the principal register of the United States Patent and Trademark Office (USPTO), including, but not limited to, registration number 2289607, dated October 26, 1999, in International Class (IC) 42, covering вЂњhotel and restaurant servicesвЂќ; registration number 3021235, dated November 29, 2005, in ICs 35, 41 and 42, covering, inter alia, providing conference facilities and entertainment services, and; registration number 2863392, in ICs 36 and 37, covering, inter alia, leasing of real estate and construction services. Complainant has also registered certain W- formative marks, including W RESIDENCES, registration number 3083217, dated April 18, 2006, in ICs 36 and 37, covering вЂњ[l]easing of real estate, real estate appraisal, real estate brokerage, real estate land acquisition вЂ¦вЂќ and вЂњ[c]onstruction services, namely-planning laying out and custom construction of residential and commercial communities; real estate developmentвЂќ. In its USPTO application for registration, Complainant claimed a date of first use and first use in commerce for W RESIDENCES of September 2003.
Complainant owns and manages hotels in the United States and foreign countries under the W service mark. It has used the W mark in connection with certain of those properties since 1998. Complainant has used the W RESIDENCES mark in connection with various real estate development services since 2003 and has several properties in various countries, with several additional properties under construction, on which it uses that mark. Complainant operates a commercial Internet website at вЂњwww.wresidences.comвЂќ, at which it promotes various W brand hotel and residence properties. Complaint referred to its commercial website at вЂњwww.southbeachresidences.comвЂќ. There it refers to its specific property identified as вЂњW South Beach Hotel & ResidencesвЂќ and вЂњW South BeachвЂќ (Panel visit of January 26, 2009). According to Complainant, W South Beach Hotel & Residences вЂњhas long been in development and is scheduled to open in March 2009вЂќ.
According to the RegistrarвЂ™s verification report, Respondent is registrant of the disputed domain name. According to that same report, the record of registration of the disputed domain name was created on September 1, 2005.
As of November 21, 2008, the disputed domain name directed Internet users to a website that essentially copied the service mark and style elements of ComplainantвЂ™s commercial Internet website for the W South Beach Hotel & Residences, including maintaining the presence of various links to specific topics, such as вЂњFloor PlansвЂќ and вЂњDiningвЂќ, as well as a link for вЂњContact UsвЂќ. However, contact information on the home page was not that of Complainant. Instead, it was that of Respondent. A small font disclaimer toward the end of the home page information advised the Internet viewer that the identified webpage was not owned and/or operated by Complainant. That disclaimer stated, вЂњwww.wsouthbeachresidence.comвЂќ is not affiliated nor related to the developer, or вЂњwww.wsouthbeachresidences.comвЂќ, or Starwood Hotels & Resorts Worldwide, Inc, or 2201 Collins FEE, LLC or Related Cervera Realty ServicesвЂќ. That disclaimer is followed by a significantly more lengthy disclaimer of Complainant referring to state and federal law relating to condominiums, and further providing that Complainant licensed its W brand name and related trademarks to the developer 2201 Collins FEE, LLC for use in connection with this project.
Respondent has claimed that he initiated his website identified by the disputed domain name four months prior to the launch by Complainant and/or its affiliated representatives of the website specifically promoting W South Beach Hotel & Residences.
By telefax and certified mail dated November 7, 2008, Complainant through its counsel sent a cease and desist and transfer demand to Respondent. Respondent did not reply to that demand.
In a previous UDRP proceeding initiated by Complainant, Respondent was determined to have engaged in abusive domain name registration and use in connection with the domain name <wfortlauderdaleresidence.com> (Starwood Hotels and Resorts Worldwide, Inc. v. Frank Dossa and INNternet,
WIPO Case No. D2008-1288).
The Registration Agreement in effect between Respondent and OVH subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. PartiesвЂ™ Contentions
Complainant asserts ownership of rights in the service mark вЂњWвЂќ and certain W-formative service marks, including W HOTELS and W RESIDENCES based on use in commerce in the United States and foreign countries, and as evidenced by registration at the USPTO and other national trademark offices.
Complainant argues that the disputed domain name is confusingly similar to its W and W-formative marks.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainants argues that since its trademark rights predate RespondentвЂ™s first use of the disputed domain name, Respondent bears the burden of proof for demonstrating rights or legitimate interests. Complainant states that Respondent has not been authorized to use its service mark, that Respondent has not been known by the disputed domain name, and that Respondent is not legitimately using the disputed domain name.
Complainant argues that Respondent must have been aware of its well-known service mark when it registered the disputed domain name, and that the registration and use by a third party of a well-known mark evidences bad faith. Complainant further argues that RespondentвЂ™s failure to respond to its cease and desist and transfer demand evidences bad faith. Complainant alleges that Respondent is attempting to attract for commercial gain Internet users to RespondentвЂ™s website by creating confusion as to Complainant as a source, sponsor, affiliate or endorser of RespondentвЂ™s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent concedes ComplainantвЂ™s ownership of the W service mark, and states that вЂњW Hotels is a worldwide known brandвЂќ.
Respondent indicates that W South Beach Residences will be вЂњoperated by the Starwood Group under the W Residences brandвЂќ.
Respondent argues that W South Beach Residences is not the property of the Starwood Group, but is being developed by another entity, Collins FEE LLC, which is not owned by the Starwood Group. Respondent states that the developer is using certain real estate developers to sell condominiums in the property, and that вЂњ[t]hey cooperate with any licensed real estate agent or broker in the state of FloridaвЂќ.
Respondent argues that he is a licensed real estate broker in the state of Florida, and that вЂњI am then entitled to sell the units at W South Beach Residences, and I am paid by the Developer a commission for each unit sold. This is a perfectly legal and licensed activityвЂќ.
Respondent argues that he developed his website using the disputed domain name with respect for Complainant and its brand name, image and reputation. He argues that there are other third-party domain names that use ComplainantвЂ™s W mark in connection with the sale of condominium units. Respondent argues that Complainant misunderstands the nature of the real estate market for condominiums because it is traditionally in the hotel business. Respondent contends that because he is assisting individual purchasers of condominium units he is entitled to use ComplainantвЂ™s mark on his website. He indicates that he is willing to include a link on his website that will direct individuals interested in using the hotel services of Complainant to ComplainantвЂ™s website. He also indicates that he is willing to cease using the stylized service mark of Complainant.
Respondent requests the Panel to reject ComplainantвЂ™s request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondentвЂ™s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondentвЂ™s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in the service mark W, W HOTELS and W RESIDENCES based on use in commerce and as evidenced by registration on the Principal Register of the USPTO (see Factual Background, supra).1
The disputed domain name <wsouthbeachresidence.com> incorporates ComplainantвЂ™s W RESIDENCES service mark, eliminating the letter вЂњsвЂќ and adding the term вЂњsouthbeachвЂќ between the two parts of the combination service mark, adding also the generic top-level domain (gTLD) вЂњ.comвЂќ. вЂњSouth BeachвЂќ is a geographic identifier that an Internet user would expect to be used by Complainant in connection with a branded property developed in that location. Respondent adopted the disputed domain name to identify the specific property under development by Complainant and its licensee because prospective real estate purchasers would connect the disputed domain name with ComplainantвЂ™s mark.2 The Panel determines that Complainant has rights in the W RESIDENCES service mark and that disputed domain name is confusingly similar to ComplainantвЂ™s W RESIDENCES service mark for purposes of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c))
Respondent argues that he has rights or legitimate interests in the disputed domain name because he is a licensed real estate broker and therefore entitled to use the name of ComplainantвЂ™s real estate development in his marketing efforts on the Internet. Although he did not state his argument in these terms, Respondent appears also to argue that because he activated his website prior to ComplainantвЂ™s initiation of its own website devoted to the specific property on South Beach, he made a bona fide offering of services prior to notice of a dispute. The same set of facts resolve both of these arguments in favor of Complainant.
The rights or legitimate interests of commissioned real estate brokers in connection with the use of service marks in domain names are determined by the specific factual setting or context. Compare, e.g., Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis,
WIPO Case No. D2000-1435, Leisure Village Association, Inc. v. McKay Barlow,
WIPO Case No. D2006-1119, and Starwood Hotels and Resorts Worldwide, Inc. v. Frank Dossa and INNternet,
WIPO Case No. D2008-1288.
Respondent is effectively attempting to establish вЂњnominative fair useвЂќ of ComplainantвЂ™s service mark. He argues that as a real estate broker licensed in the state of Florida he is lawfully entitled to market properties to prospective clients, and that to do so he must use the names of the properties he is marketing, in this case вЂњW South Beach ResidencesвЂќ.
While under certain circumstances one may refer to the service mark name of the property one is marketing, the right of nominative fair use is not an unlimited one. The U.S. Court of Appeals for the Ninth Circuit has developed a useful three-pronged analytic tool for assessing claims of nominative fair use. This tool has been used by panels under the Policy. See, e.g., Six Contents Hotels, Inc. v. eGO,
WIPO Case No. D2003-0341 and Pfizer Inc v. Van Robichaux,
WIPO Case No. D2003-0399.
The U.S. Court of Appeals for the Ninth Circuit, for example in Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002) and Horphag Research v. Mario Pellegrini, 328 F. 3d 1108 (9th Cir. 2003), summarizes its three-prong approach for determining whether third party use of a mark is вЂњnominative fair useвЂќ:
This court looks to three factors in determining whether a defendant is entitled to the nominative fair use defense: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids, 971 F.2d at 308.3
As to the first element of the analysis, the Panel is satisfied that Respondent could only reasonably identify the W South Beach Residences property by use of ComplainantвЂ™s service mark. It would not be enough for prospective clients to merely have the street address of the property in order to fully appreciate the nature and location of the property.
However, as to the second and third elements, Respondent undertook to copy the stylistic elements of ComplainantвЂ™s proprietary website to give Internet users the unmistakable impression that his website was owned or operated by Complainant. The distinctive service mark form of Complainant was used, and link headings (and presumably links) to various facilities of the property were copied. To put it plainly, RespondentвЂ™s website looked essentially identical to websites operated by Complainant. Respondent used far more of ComplainantвЂ™s distinctive mark than was reasonably necessary to identify the subject condominium property he proposed to market (see, e.g., Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002) (assessing stylistic service mark elements of website)).
Moreover, while RespondentвЂ™s website included a disclaimer of association with Complainant, coming toward the end of the homepage in small font, it would require considerable close attention from an Internet user to draw the conclusion that the marketing undertaken on RespondentвЂ™s website originated from a party other than Complainant. Aside from the small font disclaimer, the website was manifestly designed to appear to be that of Complainant. This impression is reinforced by RespondentвЂ™s insertion of ComplainantвЂ™s substantially more lengthy legal disclaimer following his own. Respondent affirmatively took steps to give Internet users the impression that he was associated with Complainant.
In his Response, Respondent offers at some length to revise his marketing approach, including to modify his website so that it no longer appears to be operated by Complainant, and to add links to ComplainantвЂ™s hotel services. The Policy, however, is directed to prior registration and use of domain names, and not to whether the registrant of a disputed domain name might act differently in the future. It is worth noting that Complainant notified Respondent of its concerns about his website in early November 2008, and at that time Respondent did not reply with a proposal to alter the website. He only did so in response to initiation of this proceeding.
The foregoing facts also argue against a finding of bona fide use of ComplainantвЂ™s service mark prior to notice of a dispute. Respondent was certainly aware of ComplainantвЂ™s service mark rights when he registered the disputed domain name. Respondent must have known that Complainant would object to his copying of ComplainantвЂ™s website style and content. This is not a bona fide offering of services prior to notice of a dispute.
Respondent fails to establish rights or legitimate interests because he made use of ComplainantвЂ™s service mark substantially exceeding the boundaries of fair use.
The Panel refrains from suggesting any general rules with regard to the use by licensed real estate brokers of third-party service marks. Each case must be assessed at on its own merits
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, вЂњin particular but without limitationвЂќ, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that вЂњby using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of [respondentвЂ™s] website or location or of a product or service on [respondentвЂ™s] website or locationвЂќ (id., paragraph 4(b)(iv)).
As discussed in the previous section, Respondent acted deliberately to create a website that gives the impression it is owned, operated or sponsored by Complainant. Respondent has intentionally attempted to attract for commercial gain Internet users to his website by registering and using the disputed domain name that is confusingly similar to ComplainantвЂ™s service mark, so as to create Internet user confusion as to whether Complainant is the source, sponsor, affiliate or endorser of RespondentвЂ™s website. Respondent registered and use the disputed domain name in bad faith within the meaning of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wsouthbeachresidence.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: January 27, 2009
1 The Panel did not recite the specific service mark registrations for W HOTELS because the W and W RESIDENCES marks are more similar to the disputed domain name. Complainant has, however, provided evidence of registration of W HOTELS.
2 Addition of the gTLD вЂњ.comвЂќ is not material for purposes of identity or confusing similarity analysis in this context.
3 As quoted in Horphag Research. v. Mario Pellegrini, 328 F. 3d 1108, at 1112 (9th Cir. 2003).