ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton
International IP, LLC v. Lin Qing Feng (林清枫); YinSi BaoHu Yi KaiQi
(Hidden by Whois Privacy Protection Service)
Case No. D2015-0942
1. The Parties
The Complainants are Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International
IP, LLC (hereinafter as “the Complainant”) of Stamford, Connecticut, United States of America, represented
by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Lin Qing Feng (林清枫) of Guangzhou, Guangdong, China; YinSi BaoHu Yi KaiQi
(Hidden by Whois Privacy Protection Service) of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <regis-hotel.com> is registered with HiChina Zhicheng Technology Ltd. (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2015. On
June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 4, 2015, the Registrar 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 the Complainant on June 8, 2015 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 June 10, 2015.
On June 8, 2015, the Center sent an email communication to the parties in both Chinese and English
regarding the language of the proceeding. On June 10, 2015, the Complainant submitted a request that
English be the language of the proceeding. The Respondent did not comment on the language of the
proceeding by the specified due date.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal
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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(a) and 4(a), the Center formally notified the Respondent of the
Complaint in both Chinese and English, and the proceeding commenced on June 15, 2015. In accordance
with the Rules, paragraph 5(a), the due date for Response was July 5, 2015. The Respondent did not
submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2015.
The Center appointed Sok Ling MOI as the sole panelist in this matter on July 13, 2015. 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.
3.1 The Complainant’s Unsolicited Supplemental Submission
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party,
and although the Rules do not expressly provide for unsolicited submissions, under paragraph 10(a) of the
Rules, the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers
appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is
conducted expeditiously. This is the consensus view of previous UDRP panels.
A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is
appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in
the case, whether the panel considers the content of the submission essential to reaching a fair decision on
the facts, and whether the submission could have been made earlier and, if so, why it was not. (See NB
Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984).
On July 16, 2015, after the Panel is duly constituted, the Complainant sought to admit a copy of the
Singapore Court of Appeal judgment that supposedly highlights the Complainant’s rights in respect of the
REGIS portion of the ST. REGIS trade mark. The Panel notes that the said judgment is dated November 29,
2013 and is by no means a recently released judgement. The Complainant did not provide any reason for
the non-inclusion of this judgment in the supporting materials when filing the Complaint. In any event, the
Panel does not consider the content of the submission essential to reaching a fair decision on the facts.
Accordingly, the Panel is not prepared to accept the Complainant’s unsolicited supplementary submission.
4. Factual Background
The Complainant is a leading global hotel and leisure company with over 1,000 properties in about 100
countries. Currently, the Complainant owns, manages or franchises over 30 St. Regis hotels worldwide, and
has approximately 20 St. Regis projects under construction or opening soon. The Complainant’s St. Regis
hotels include the St. Regis Shenzhen in Shenzhen, China.
The Complainant owns several trade mark registrations for the ST. REGIS trade mark throughout the world
in connection with its hotel services and related goods and services, including the following trade mark
registrations (according to an independent search conducted by the Panel):
Mark
Register
Class
Registration No.
Registration Date
ST. REGIS
United States
41, 43, 44
3039374
January 10, 2006
ST. REGIS
International
43
1116440
March 5, 2012
ST. REGIS
CTM
43, 45
10929065
May 31, 2012
ST. REGIS
China
35
5488714
September 21, 2009
ST. REGIS &
China
43
6792166
October 28, 2011
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DEVICE
The Complainant has a prominent Internet presence. It operates websites at its registered domain names
<stregis.com> and other location-specific domain names such as <stregisbali.com> and
<stregisaspen.com>. These websites enable computer users to reserve rooms at the Complainant’s St.
Regis hotels.
The disputed domain name <regis-hotel.com> was registered on January 23, 2013, well after the
Complainant’s ST. REGIS trade mark was first registered in China and more than a century since the ST.
REGIS mark was first used in commerce. It currently resolves to a website which shows the ST. REGIS
trade mark and the offer for reservation of rooms at the St. Regis Shenzhen Hotel.
5. Parties’ Contentions
A. Complainant
The Complainant has used its ST. REGIS mark in connection with hotel services and related goods and
services for more than a century. The Complainant’s ST. REGIS mark is world famous, and its St. Regis
hotels and resorts have since 1904 been known worldwide as premiere luxury hotels. In addition to
extensive use of the ST. REGIS mark, the Complainant has obtained numerous registrations for this mark
throughout the world in connection with hotel services and related goods and services.
A.1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which
the Complainant has rights.
The disputed domain name consists of a combination of the Complainant’s ST. REGIS trade mark without
the “ST.” portion, the descriptive word “hotel” plus the “.com” generic Top-Level Domain (“gTLD”) indicator.
The “regis” portion of the disputed domain name is confusingly similar to the Complainant’s ST. REGIS trade
mark. The addition of the term “hotel” adds to rather than diminishes the likelihood of confusion. The gTLD
indicator “.com” cannot be taken into consideration when judging confusing similarity.
Consumers who search the Internet for legitimate reservations at the Complainant’s hotels may be directed
to the website to which the disputed domain name resolves, and hence be misled into believing that the said
website is owned, controlled, or approved by the Complainant.
A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant’s adoption and use of the ST. REGIS trade mark pre-dates the Respondent’s registration
of the disputed domain name by several decades.
The Respondent has no connection or affiliation with the Complainant and has not received any license or
consent (express or implied) from the Complainant to use the ST. REGIS trade mark in a domain name or in
any other manner. Furthermore, the Respondent has never been authorized by the Complainant to supply
or provide hotel reservation services online. The Respondent’s use of disputed domain name to purportedly
offer reservations services at the Complainant’s St. Regis Shenzhen hotel does not constitute a right or
legitimate interest.
There is no evidence that the Respondent is ever commonly known by the names “Regis” or “Regis Hotel”,
or that the Respondent has any plans to use the disputed domain name in connection with a bona fide use.
A.3. The disputed domain name was registered and is being used in bad faith.
The Complainant’s ST. REGIS trade mark enjoys international recognition. It is inconceivable that the
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Respondent was unaware of the ST. REGIS trade mark when it registered the disputed domain name. The
Respondent's use on its website of the Complainant's trade mark ST. REGIS is clear proof that the
Respondent is aware of the fame of the ST. REGIS trade mark.
The Respondent is using the disputed domain name in connection with a website that is intended to look like
the Complainant’s official website for the St. Regis Shenzhen hotel. The Respondent appears to have
registered the disputed domain name with the intention of leading the Complainant’s customers to the
Respondent’s website purporting to offer reservation services at the St. Regis Shenzhen hotel.
The Respondent has unfairly capitalised on the goodwill and fame of the Complainant’s ST. REGIS trade
mark to lure consumers to its website and has improperly benefited financially in violation of paragraph
4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in
the Registration Agreement, the language of the administrative proceeding shall be the language of the
Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the
circumstances of the administrative proceeding. Paragraph 10(b) and (c) of the Rules requires the Panel to
ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a
fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence
on record, no agreement appears to have been entered into between the Complainant and the Respondent
regarding the language issue. The Complainant filed its Complaint in English, and has requested that
English be the language of the proceeding for the following reasons:
(a)
The disputed domain name is in the English language and refers to the English name for the property
in question, The St. Regis Shenzhen.
(b)
Prior UDRP proceedings (e.g., Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise
Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, WIPO
Case No. D2013-0840 and Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton
International IP, LLC v. Lin Qing Feng, WIPO Case D2014-0261) involving the same parties have been
conducted in the English language with no objection from the Respondent. In Starwood Hotels & Resorts
Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v.
Zeng Zheng, Lin Qing Feng, supra, the panel decided that English shall be the language of the proceeding
for the reason that “[t]he Respondent has communicated with counsel for the Complainant in English, clearly
having read the demand letter that was sent to the Respondent in the English language.”
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native
English speaker. There is no actual evidence before the Panel to indicate that there has been prior
communication between the parties in English, nor is there evidence to conclusively establish that the
individual respondent in Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc.,
The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, supra is the same
person as the Respondent in the present case. On the other hand, requesting the Complaint to be re-filed in
Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and
would cause delay to the proceeding.
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Having considered all the circumstances of this case, the Panel finds the choice of English as the language
of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her
ability to articulate the arguments for this case. In arriving at this decision, the Panel took the following
factors into consideration:
(a)
the disputed domain name <regis-hotel.com> is registered in Latin characters, rather than Chinese
script;
(b)
the content of the Respondent’s website reproduces various copyrighted images and logos of the
Complainant, and reads almost like a Chinese translation of the Complainant’s official website of its St.
Regis Shenzhen Hotel. This suggests that the Respondent has sufficient knowledge of English;
(c)
the Center has notified the Respondent of the proceeding in both Chinese and English;
(d)
The Respondent has been given the opportunity to present its case in this proceeding and to respond
to the issue of the language of the proceeding but has chosen not to do so; and
(e)
the Center informed the Respondent that it would accept a Response in either English or Chinese.
Accordingly, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint
as filed in English; (ii) that English shall be the language of the proceeding and the decision will be rendered
in English.
6.2 Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to
obtain an order for the disputed domain name to be cancelled or transferred:
(i)
the disputed domain name registered by the Respondent is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights;
(ii)
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii)
the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the ST. REGIS trade mark by virtue of use and
registration.
The disputed domain name is confusingly similar to the ST. REGIS trade mark because it incorporates a
significant and dominant part of the Complainant’s trade mark (i.e., “regis”) in its entirety. The Panel agrees
with the Complainant’s argument that the use of the word “hotel” compounds the confusion, as it suggests
connection to the Complainant’s hotel business. The addition of the gTLD “.com” and hyphen “-” does not
detract from the confusing similarity. The Panel therefore has no difficulty in finding that the disputed domain
name is confusingly similar to the ST. REGIS trade mark in which the Complainant has rights.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the
Policy.
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B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent
lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a
prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent
to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the
following, without limitation, under paragraph 4(c) of the Policy:
(i)
before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use,
the disputed domain name or a name corresponding to the disputed domain name in connection with a bona
fide offering of goods or services; or
(ii)
the Respondent has been commonly known by the disputed domain name, even if it has acquired no
trade mark or service mark rights; or
(iii)
the Respondent is making a legitimate noncommercial or fair use of the disputed domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service
mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case
No. D2013-0974)
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks
rights or legitimate interests in the disputed domain name. Indeed, by claiming to accept reservations for
rooms in the Complainant’s St. Regis Shenzhen hotel despite the lack of affiliation or association with or
authorization from the Complainant, it appears that the Respondent has intent to, for commercial gain,
mislead Internet users into believing that its website “www.regis-hotel.com” is somehow connected with the
Complainant.
The Respondent has failed to respond. Since no response was filed, the prima facie case has not been
rebutted.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of
the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i)
circumstances indicating that the Respondent has registered or acquired the disputed domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the
Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for
valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the
disputed domain name; or
(ii)
the Respondent has registered the disputed domain name in order to prevent the owner of the trade
mark or service mark from reflecting the mark in a corresponding domain name, provided that the
Respondent has engaged in a pattern of such conduct; or
(iii)
the Respondent has registered the disputed domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a
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likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s websites or location or of a product.
The Panel finds that the Respondent has registered the disputed domain name in bad faith. The
Respondent was clearly aware of the Complainant and of its ST. REGIS trade mark and hotels when it
registered the disputed domain name. The fact that the Respondent purports to offer valid reservation
services at the Complainant’s St. Regis Shenzhen hotel, and that its website reproduces copyrighted images
from the Complainant’s official websites, augments this conclusion.
Moreover, the Respondent registered the disputed domain name with a privacy shield service to conceal its
identity. Also, the contact information of the Respondent in the WhoIs database appears to be invalid as
evidenced by the communication records provided by the Center. The Panel finds that the deliberate
concealment of identity and provision of false contact information is yet further evidence of the Respondent’s
bad faith.
The Panel agrees with the Complainant’s assertion that the Respondent is using the disputed domain name
to take advantage of the similarity with the Complainant’s ST. REGIS trade mark, to unfairly attract
customers to its website. Further, by purporting to offer valid reservation services at the Complainant’s St.
Regis Shenzhen hotel despite the lack of affiliation or association with the Complainant, it is clear that the
Respondent has intent to mislead consumers and Internet users into believing that its website “www.regishotel.com” is owned by or somehow connected with the Complainant. In the Panel’s opinion, there is
therefore a high possibility that consumers and Internet users would be confused as to the sponsorship,
affiliation and endorsement of the Respondent’s website, and to the source of the products/services offered
on the Respondent’s website.
Whilst the Panel notes the inclusion of a disclaimer “非官方网站" (translated as “non-official website”) in fine
print in the footer of the Respondent’s website, the Panel finds that this is insufficient to disassociate the
Respondent from the Complainant and/or to dispel any potential confusion and/or deception in light of the
other implicating factors (for example, the Respondent refers to the St. Regis Shenzhen hotel as “our hotel”).
Accordingly, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide
purpose and illegitimate financial gain.
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the
present case and taking into account all other relevant circumstances, it is adequate to conclude that the
Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the
Policy.
7. Decision
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 <regis-hotel.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: July 27, 2015