Marriott International, Inc. and Marriott Worldwide Corporation v. andrew briggs
Claim Number: FA1302001485401
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C, USA. Respondent is andrew briggs (“Respondent”), represented by Santiago Payo Mazoy of LEX-BUREAU ABOGADOS, Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marriottresaleseurope.com> and <resalesmarriott.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marriottresaleseurope.com> and <resalesmarriott.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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@marriottresaleseurope.com and postmaster@resalesmarriott.com. Also on February 25, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on March 18, 2013.
On April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a publicly-held corporation and a Fortune 200 company.
2. Complainant owns rights in the MARRIOTT mark through its vast use and recognition as well as through its registration in the United States as well as in various countries around the world;
a. United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,576,776 registered January 9, 1990); (Reg. No. 943,214 registered December 8, 1970); (Reg. No. 899,900 registered September 29, 1970); and (Reg. No. 2,504,099 registered November 6, 2001);
b. European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 144,360 registered October 15, 1998); (Reg. No. 144,279 registered September 29, 1998); (Reg. No. 148,338 registered November 30, 1998); (Reg. No. 5,145,727 registered June 21, 2007).
3. Respondent’s <marriottresaleseurope.com> and <resalesmarriott.com> domain names are confusingly similar to Complainant’s MARRIOTT mark.
a. Each of Respondent’s domain names contains Complainant’s mark in its entirety with the addition of a descriptive term or geographic term and the generic top-level domain (“gTLD”) “.com.”
b. The terms “resales” and “Europe” relate directly to Complainant’s business.
4. Respondent has no rights or legitimate interests in the disputed domain names.
a. Respondent is not making a bona fide offering of goods or services or a commercial fair use of the domain names.
b. Respondent is directly competing with Complainant.
c. Respondent is passing itself off as Complainant or its authorized agent.
d. Respondent is not commonly known by the disputed domain names and nothing in Respondent’s WHOIS information indicates otherwise.
5. Respondent registered and used the disputed domain names in bad faith.
a. Respondent registered the <marriottresaleseurope.com> and <resalesmarriott.com> domain names on October 27, 2012, years after Complainant began using its mark.
b. Respondent was employed by Complainant for a period of time as a sales employee, so there is no question as to whether Respondent had notice of Complainant’s MARRIOTT mark.
c. Respondent uses its disputed domain names to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s MARRIOTT mark as to the source, sponsorship, affiliation, and endorsement of Respondent and its resolving websites.
d. Respondent’s <marriottresaleseurope.com> domain name resolves to a commercial website featuring advertisements and promotions for Respondent’s competing business, thereby disrupting Complainant’s business by diverting consumers to Respondent’s site.
e. Respondent uses the <resalesmarriott.com> domain name to redirect Internet users to the website resolving from the <marriottresaleseurope.com> domain name.
f. Respondent is attempting to appear as though it is endorsed by Complainant when it is not.
B. Respondent
Respondent, Andrew briggs, consents to transfer the <marriottresaleseurope.com> and <resalesmarriott.com> domain names.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Marriott International, Inc. and Marriott Worldwide Corporation. The Complaint indicates that Marriott International is a Delaware corporation and a wholly-owned subsidiary of Marriott Worldwide. The Complaint further provides that Marriott International owns the MARRIOTT mark in the United States, and its subsidiary Marriott Worldwide owns the MARRIOTT mark in Europe and elsewhere.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.
The Complaint shows a sufficient nexus between the Complainants to treat them as a single entity in this proceeding. Therefore, Complainants will be collectively referred to as “Complainant.”
Complainant is a well-known global leader in hospitality, running its business in over 73 countries including the United States. Complainant has established rights in the MARRIOTT mark through its trademark registrations in accordance with Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Respondent’s <marriottresaleseurope.com> and <resalesmarriott.com> domain names are confusingly similar to Complainant’s MARRIOTT mark pursuant to ¶ 4(a)(i).
CONSENT TO TRANSFER
Respondent consents to the transfer of the <marriottresaleseurope.com> and <resalesmarriott.com> domain names to Complainant. Since Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <marriottresaleseurope.com> and <resalesmarriott.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <marriottresaleseurope.com> and <resalesmarriott.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 15, 2013
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