Marriott International, Inc. v. Seocho
Claim
Number: FA0303000149187
Complainant is
Marriott International, Inc., Bethesda, MD, USA (“Complainant”) represented
by James R. Davis, of Arent Fox Plotkin & Kahn, PLLC. Respondent
is Seocho, Seoul, KOREA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <marrriott.com>, registered with
Bulkregister.Com, Inc.
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 (the "Forum")
electronically on March 12, 2003; the Forum received a hard copy of the
Complaint on March 14, 2003.
On
March 13, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain name <marrriott.com> is registered with
Bulkregister.Com, Inc. and that Respondent is the current registrant of the
name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com,
Inc. registration agreement 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
March 17, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 7, 2003 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 postmaster@marrriott.com 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
April 15, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <marrriott.com>
domain name is confusingly similar to Complainant’s MARRIOTT mark.
2. Respondent does not have any rights or
legitimate interests in the <marrriott.com> domain name.
3. Respondent registered and used the <marrriott.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Marriott International, Inc., owns numerous trademark registrations worldwide
for the MARRIOTT mark, and marks that incorporate said mark. More specifically,
Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 899,900
for the MARRIOTT mark registered on September 29, 1970 for use in connection
with hotel and restaurant services; and USPTO Reg. No. 947,709, also for the
MARRIOTT mark, registered on November 21, 1972 for use in connection with
airline catering services.
Complainant has
offered goods and services under the MARRIOTT mark since at least 1957, and has
subsequently continually used the mark in interstate and international commerce
to designate its offerings. Complainant has invested substantial resources in
developing and marketing its products under the MARRIOTT mark. As a result of
its advertising and marketing efforts, Complainant operates one of the world’s
most well-known hotel, restaurant and hospitality companies. Annually, millions
of Complainant’s customers worldwide obtain products and services under the
MARRIOTT mark. Sales of services under the MARRIOTT mark have amounted to many
billions of dollars.
As a result of
Complainant’s extensive efforts aimed at developing and marketing its products
and services under the MARRIOTT mark, it has become well-known and famous among
members of the consuming public.
Respondent,
Seocho, registered <marrriott.com> on May 29, 2001 and uses it in
connection with various commercial websites. Complainant’s investigation of
Respondent’s use of the domain name reveals that <marrriott.com> resolves
to a website that offers information and services related to travel, casinos
and hotels. Additionally, Respondent’s website makes no mention or reference to
Complainant or the MARRIOTT mark.
Complainant’s
submission indicates that Respondent has engaged in a pattern of registering
domain names that incorporate famous trademarks. Respondent has lost other UDRP
disputes involving trademarks owned by Expedia.com, the NASDAQ Stock Market,
Inc., Pfizer, Inc., and Compaq Info. Tech. Group.
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.
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 has
established rights in the MARRIOTT mark through registration and continuous use
of the mark in interstate and international commerce since at least 1957. See
Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to
register all possible domain names that surround its substantive mark does not
hinder Complainant’s rights in the mark. “Trademark owners are not required to
create ‘libraries’ of domain names in order to protect themselves”).
Respondent’s <marrriott.com>
domain name is confusingly similar to Complainant’s MARRIOTT mark.
Respondent’s domain name incorporates Complainant’s famous mark in its
entirety, and only deviates with the addition of a third “r.” Respondent’s
intentional introduction of a typographical error into Complainant’s famous
mark fails to create a distinguishable domain name under Policy ¶ 4(a)(i).
Respondent’s efforts constitute “typosquatting,” whereby a registrant
deliberately introduces slight deviations into famous marks in order to
commercially benefit. Respondent’s typosquatting, by its definition, renders
the domain name confusingly similar to Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change
Respondent’s infringement on a core trademark held by Complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertions; therefore, all reasonable
inferences made by Complainant may be regarded as true, unless clearly
contradicted by the evidence. Once Complainant asserts that Respondent does not
have any rights or legitimate interests in the disputed domain name, the burden
shifts to Respondent to provide credible evidence that supports its claim of
validity in the domain name. Because Respondent did not submit evidence
substantiating its claim in the <marrriott.com>
domain name, Respondent has failed to advance any set of circumstances that
would support its rights in the domain name. 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); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance that could demonstrate rights
or legitimate interests in the domain name).
Uncontested
evidence indicates that Respondent’s domain name resolves to a website that
offers information and services related to travel, casinos and hotels.
Additionally, Complainant’s submission reveals that Respondent habitually
infringes on others’ marks, therefore allowing the inference that Respondent is
intentionally attempting to divert Internet users to its website for commercial
gain. Upon keying Respondent’s domain name into the browser, unsuspecting
Internet users are confronted with a website that appears to be affiliated with
Complainant because of its similar offerings, but in reality, no connection
exists. Respondent’s unauthorized capitalization of Complainant’s MARRIOTT mark
fails to create rights in the domain name under Policy ¶¶ 4(c)(i) or (iii). See
Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates
that it is known as “Seocho.” Additionally, Complainant’s submission reveals
that Respondent has previously engaged in typosquatting activities, and that
the <marrriott.com> domain name resolves to a website that fails
to reference Complainant or the MARRIOTT mark in any manner. The above circumstances
support a conclusion that Respondent lacks rights and legitimate interests in
the domain name. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Unrefuted
evidence indicates that Respondent uses the <marrriott.com> domain
name to ensnare unsuspecting Internet users and divert them to a commercial
website. Respondent is attempting to benefit from a perceived affiliation with
Complainant and its well-known MARRIOTT mark. Respondent’s bad faith
registration and use is enunciated under Policy ¶ 4(b)(iv), which explicitly
proscribes unauthorized commercial use of another’s mark. See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Additionally,
Respondent’s behavior constitutes typosquatting, which in itself constitutes
bad faith under the Policy. The circumstances surrounding the dispute involve
the necessary elements to conclude that Respondent is engaged in the bad faith
practice of typosquatting. More specifically, Respondent’s domain name
incorporates a slight typographical error into a famous mark, Respondent
attempts to derive commercial benefits from this typographical error, and
evidence indicates that Respondent has engaged in this activity before. See
Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA
96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad
faith by establishing a pattern of registering misspellings of famous
trademarks and names).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <marrriott.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 28, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page