Marriott International, Inc. v. The Travel Club Network S.A.
Claim Number: FA1012001362482
Complainant is Marriott International, Inc. (“Complainant”), represented by Jason J. Mazur of Arent Fox LLP, Washington D.C., USA. Respondent is The Travel Club Network S.A. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fairfieldtravelclub.com>, registered with MyDomain, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2010; the National Arbitration Forum received payment on December 8, 2010.
On December 9, 2010, MyDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <fairfieldtravelclub.com> domain name is registered with MyDomain, Inc. and that Respondent is the current registrant of the name. MyDomain, Inc. has verified that Respondent is bound by the MyDomain, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fairfieldtravelclub.com. Also on December 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fairfieldtravelclub.com> domain name is confusingly similar to Complainant’s FAIRFIELD INN mark.
2. Respondent does not have any rights or legitimate interests in the <fairfieldtravelclub.com> domain name.
3. Respondent registered and used the <fairfieldtravelclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marriott International, Inc., as a corporation, runs an international hotel, restaurant, hospitality, and timesharing company. Complainant owns the FAIRFIELD INN mark and has used the mark since 1959 in connection with one of its hotel brands. Complainant holds numerous trademark registrations for its FAIRFIELD INN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 742,101 issued December 11, 1962).
Respondent, The Travel Club Network S.A., registered the <fairfieldtravelclub.com> domain name on July 17, 2008. The disputed domain name resolves to a website which purportedly offers travel and accommodation services of Complainant and Complainant’s competitors.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant argues that it has established rights in the FAIRFIELD INN mark. Previous panels have found that federal trademark registration is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Here, Complainant holds a number of trademark registrations for its FAIRFIELD INN mark (e.g., Reg. No. 742,101 issued December 11, 1962). Therefore, the Panel concludes that Complainant has established rights in its FAIRFIELD INN mark through its trademark registration under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <fairfieldtravelclub.com> domain name is confusingly similar to its FAIRFIELD INN mark. The disputed domain name incorporates Complainant’s mark and differs only by deleting the word “inn”, adding the descriptive words “travel” and “club,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a word of a mark does not sufficiently change the disputed domain name from Complainant’s mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel also finds that the addition of the descriptive words “travel club”, which are related to Complainant’s hotel and hospitality business, and the addition of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s FAIRFIELD INN mark.
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Panels have previously determined that once a complainant makes a prima facie case in support of its allegations, the burden shifts to respondent to prove it has rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Complainant has established a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the <fairfieldtravelclub.com> domain name. Due to Respondent’s failure to respond to the Complaint, the Panel is allowed to assume that Respondent has no rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will look at the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <fairfieldtravelclub.com> domain name. The WHOIS information identifies Respondent as “The Travel Club Network S.A.” Although Respondent may appear to be commonly known by the disputed domain by the similar “travel club” words, the Panel finds that Respondent is not commonly known by the disputed domain name as Respondent failed to present affirmative evidence to the contrary under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent’s <fairfieldtravelclub.com> domain name resolves to a commercial website which purportedly offers travel opportunities with Complainant and Complainant’s competitors in the industry. The Panel finds that Respondent’s use of the disputed domain name to operate a website which redirects Internet users to Complainant’s competitors in the travel industry is not a bona fide offering of good or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”)
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent uses the <fairfieldtravelclub.com> domain name to redirect Internet users to a website which advertises travel accommodations of Complainant and Complainant’s competitors. Complaint argues that Respondent’s use of the disputed domain name disrupts its business. Internet users planning to purchase Complainant’s hotel and hospitality services may be redirected to Respondent’s website due to Respondent’s use of the disputed domain name and users may instead purchase similar services from Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent is using the <fairfieldtravelclub.com> domain name for commercial gain. Internet users searching for Complainant’s website may instead find Respondent’s website due to Respondent’s use of the confusingly similar disputed domain name. This may lead to confusion as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and travel services offered. Respondent attempts to capitalize off this confusion by promoting his website. The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fairfieldtravelclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 13, 2011
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