Marriott International, Inc. v. Stealth Commerce d/b/a Telmex Management Services
Claim Number: FA0204000109746
Complainant is Marriott International, Inc., Bethesda, MD (“Complainant”) represented by Jason J. Mazur, of Arent, Fox, Kintner, Plotkin & Kahn, PLLC. Respondent is Stealth Commerce d/b/a Telmex Management Services, Tortola, VIRGIN ISLANDS (“Respondent”).
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are: <themarriotthotel.com> and <theramadahotel.com> registered with Tucows, Inc. and <ritzplazahotel.com> registered with Intercosmos Media Group.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.
On April 18, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <ritzplazahotel.com> is registered with Intercosmos Media Group, and on April 19, 2002 Tucows, Inc. confirmed by e-mail to the Forum that the domain names <themarriotthotel.com> and <theramadahotel.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. and Intercosmos Media Group have verified that Respondent is bound by the Tucows, Inc. and Intercosmos Media Group registration agreements 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 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 2002 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 firstname.lastname@example.org, email@example.com and firstname.lastname@example.org 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 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Respondent’s disputed domain names, <themarriotthotel.com>, <theramadahotel.com> and <ritzplazahotel.com>, are confusingly similar to Complainant’s registered MARRIOTT, MARRIOTT HOTEL, RAMADA, RAMADA HOTEL, RITZ and RITZ-CARLTON marks.
2. Respondent has no rights or legitimate interests with respect to the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant operates one of the world’s most well-known and extensive hotel, restaurant and hospitality companies servicing millions of customers worldwide each year; millions more are exposed to Complainant’s registered marks through advertising and promotions. Complainant and its related entities are the owners of numerous trademark registrations worldwide for marks that include MARRIOTT, RAMADA, RITZ, and RITZ-CARLTON, including U.S. trademark Reg. Nos. 899,900 (MARRIOTT); 1,277,443 (MARRIOTT HOTEL); 849,951 (RAMADA); 1,276,587 (RAMADA HOTEL); 2,385,656 (RAMADA PLAZA HOTEL); 1,535,834 (RITZ); and 1,094,823 (RITZ-CARLTON). Complainant also registered and uses the domain names <marriott.com>, <marriotthotels.com>, <ramada.com>, <ramadahotels.com> and <ritzcarlton.com> in connection to websites that promote its hotel services. Complainant adopted and began using the marks in interstate and international commerce in connection with its goods and services as early as 1960 for the MARRIOTT mark, as early as 1958 for the RAMADA mark and as early as 1927 for the RITZ-CARLTON mark. Complainant has invested substantial sums of money in developing and marketing its products and services.
Respondent registered the contested domain names on the following dates: <themarriotthotel.com> on October 25, 2002, <theramadahotel.com> on October 24, 2002 and <ritzplazahotel.com> on January 19, 2002. Respondent has used the domain names to route Internet users to an active commercial website at the domain <girlhire.com>, also owned by the Respondent, that offers adult escort and sexual services. Respondent previously conducted similar trademark infringement tactics under the alias “Telmex Management Services” listed at the same British Virgin Islands address stated in the Complaint.
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 the 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Complainant has established its rights in the MARRIOTT, RAMADA and RITZ-CARLTON marks through registration with the U.S. Patent and Trademark Office and continuous subsequent use. The disputed domain names are confusingly similar to Complainant’s marks on two grounds: (1) the disputed domain names incorporate Complainant’s entire marks, and (2) the addition of the generic word “the” is inconsequential to the confusingly similar analysis conducted under Policy ¶ 4(a)(i).
Respondent’s disputed domain names reflect Complainant’s registered marks in their entirety, assuring confusion will result. Respondent’s registrations of Complainant’s identical marks create the illusion of affiliation, and therefore, are confusingly similar. See Surface Prot. Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); 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). Also, the addition of “hotel,” because it is a generic word that describes the Complainant’s business, fails to take the disputed domain names out of the realm of confusing similarity. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Furthermore, the addition of the generic word “the” to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks. The addition of these generic terms to Complainant’s famous marks represents an attempt by Respondent to ensnare Internet users searching for Complainant’s site. Internet users searching for Complainant’s website will likely include the generic term “the” in a search for Complainant’s services. 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 the Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant).
The Panel finds that ¶ 4(a)(i) has been satisfied.
Complainant has established its rights and interests in its marks. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain name. See 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the infringing domain names to route unwary Internet users searching for Complainant’s services to an active commercial website specializing in adult services. Respondent’s use of Complainant’s marks represents an activity that tarnishes Complainant’s reputation, and fails to establish Respondent’s rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(i); redirection to adult websites under another’s guise is not a bona fide offering of goods or services. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
Additionally, no evidence here suggests that Respondent is commonly known as “themarriotthotel,” “theramadahotel” or “ritzplazahotel.com” pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
By infringing on Complainant’s registered marks in order to divert Internet users to a connected domain name providing adult services, Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Given the fame of Complainant’s marks, any planned use by Respondent of the disputed domain names represents a deliberate attempt to divert users to an adult website with the intent of commercial gain. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain names, which are confusingly similar to Complainant’s mark, in order to frustrate the Complainant into offering a purchase bid. Respondent replied to one of Complainant’s transmissions on February 12, 2002 stating that if Complainant made “a realistic offer” to buy the domains, Respondent would seek approval from its “clients” with regard to a sale. General offers to sell, even if unaccompanied by a sale price, evidence bad faith registration and use under Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
Respondent’s present behavior illustrates a continuation of a pattern of conduct. Respondent has engaged in a pattern of bad faith registration and use of domain names containing famous brands while linking similar domain names to adult service websites. Complainant contends Respondent recently changed its identification from Telmex, an identity synonymous with bad faith registration and use, to the present Stealth Commerce. Both entities include (1) the identical address for Stealth Commerce and Telmex Management Services and (2) the identical adult websites used in connection with the domains. This pattern of bad faith conduct calculated to prevent Complainant from reflecting its mark accurately represents bad faith pursuant to Policy ¶ 4(b)(ii). See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Furthermore, Respondent’s intentional use of domain names that infringe upon Complainant’s rights in order to attract Internet users to its own website for commercial gain demonstrates bad faith under to Policy ¶ 4(b)(iv). Respondent’s registration and use of the disputed domain names, including the registration of <ritzplazahotel.com> over a month after Complainant objected to Respondent’s unauthorized use of its marks, represents a deliberate attempt to solicit visitors based on Complainant’s marks and the goodwill associated with them. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the relief should be hereby GRANTED.
Accordingly, it is Ordered that the <themarriotthotel.com>, <theramadahotel.com> and <ritzplazahotel.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 28, 2002
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