Marriott International, Inc. v. MCM
Tours, Inc.
Claim Number: FA0503000444510
PARTIES
Complainant
is Marriott International, Inc. (the
Complainant”), represented by Stephen Jeffries, of Holland and Knight
LLP, 2099 Pennsylvania Ave. NW, Suite 100, Washington, DC 20006-6801.
Respondent is MCM Tours, Inc. (the
Respondent”), represented by Santo J. Bonanno, of Struble Ragno Petrie
Bonanno & MacMahon, P.C., 4
Route 23 North, PO Box 230, Riverdale, NJ 07457.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <arubamarriott.com>,
registered with Network Solutions, Inc.
PANEL
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.
Jonas
Gulliksson as Panelist.
Complainant submitted
a Complaint to the National Arbitration Forum electronically on March 21, 2005;
the National Arbitration Forum received a hard copy of the Complaint on March
28, 2005.
On
March 23, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <arubamarriott.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 18,
2005 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@arubamarriott.com by e-mail.
A
timely Response was received and determined to be complete on April 18, 2005.
On
April 22, 2005 Additional Submissions was received from the Complainant. As the
submissions were received in a timely manner according to the Forum’s
Supplemental Rule 7, the Panelist has considered the Additional Submissions.
On April 25, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jonas Gulliksson as Panelist.
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
has stated the following in its Complaint.
Trademark/Service Mark
Information
Complainant
is the owner of the well known and famous trademark and service MARRIOTT, and
numerous MARRIOTT formative composite marks, for, inter alia, hotel, resort,
restaurant, catering, bar, and lounge services, the provision of facilities for
meetings, conferences and exhibitions, and reservation services for hotel
accommodations. The following facts are relevant to Complainant’s rights in
the mark:
[i] Complainant has made exclusive and
continuous use of the mark and name MARRIOTT in connection with hotel and hotel
related services since at least as early as 1960. Complainant presently
operates or franchises 491 MARRIOTT branded hotels and resorts located
throughout the United States and in 64 other countries (see printouts from
Complainant’s consumer web site attached as Annex 2). As the result of Complainant’s
long use, significant advertising and promotional efforts, extensive sales, and
the high and consistent quality of Complainant’s hotel and hotel related
services offered under the mark and name MARRIOTT, Complainant’s MARRIOTT mark
and name has become internationally famous as an indicator of the source of
Complainant’s hotel and hotel related services and a symbol of the goodwill and
reputation of Complainant.
[ii] Complainant owns numerous
registrations for the trademark and service mark MARRIOTT, and other
MARRIOTT-formative composite marks, in the United States and throughout the
world, including, but not limited to, the following United States Patent and
Trademark Office registrations (see printouts of United States Patent and
Trademark Office electronic registration records attached as Annex 3):
MARRIOTT,
for hotel and restaurant services (Registration No. 899,900, registered on the
Principal Register of the United States Patent and Trademark Office on
September 29, 1970); and
MARRIOTT
(and design), for hotel, restaurant, catering, bar, and lounge services;
provision of facilities for meetings, conferences and exhibitions; and
reservation services for hotel accommodations (Registration No. 2,504,099,
registered on the Principal Register of the United States Patent and Trademark
Office on November 6, 2001).
[iii] Complainant operates 3 popular
MARRIOTT branded resorts located on the island of Aruba, designated by the
following MARRIOTT formative marks and names: ARUBA MARRIOTT RESORT, MARRIOTT’S
ARUBA OCEAN CLUB and MARRIOTT’S ARUBA SURF CLUB (see printouts from
Complainant’s consumer web site attached as Annex 4).
[vi] Complainant offers Aruba vacation
packages relating to its 3 popular MARRIOTT branded Aruba resorts through
Complainant’s web site located at the URL identified by the domain name
“marriott.com” (see printouts from Complainant’s consumer web site attached as
Annex 4). Complainant also owns and uses a number of domain names formed by
combining its famous MARRIOTT brand name with geographic place names to
identify specific Complainant hotels and resorts, including
“stkittsmarriott.com,” “nycmarriottmarquis.com,” “marriottsawgrass.com,”
“marriottfrenchmansreef.com,” “jwmarriottlima.com” and others. Some of
Complainant’s place name formative MARRIOTT domain names function to connect
the user directly to the pages on Complainant’s web site at “marriott.com”
which concern the identified hotel or resort (e.g., the ST. KITTS MARRIOTT
RESORT).
This
Complaint is based on the following factual and legal grounds:
[a.] The domain name is confusingly
similar to Complainant’s MARRIOTT mark and name. ICANN Rule 3(b)(ix)(1); ICANN
Policy 4(a)(i).
The
domain name <arubamarriott.com>
has been formed by [i] co-opting Complainant’s well known and famous MARRIOTT
mark in its entirety and [ii] adding a word (“Aruba”) which obviously relates
to Complainant’s business thereto. The added word Aruba [i] immediately
identifies a geographic location wherein several of Complainant’s popular
MARRIOTT branded resorts are located and [ii] as combined with MARRIOTT, both
immediately identifies one of those resorts by a common abbreviation (ARUBA
MARRIOTT) of its full name (ARUBA MARRIOTT RESORT) and creates a close
resemblance between Respondent’s domain name and other place name formative
MARRIOTT domain names which have been registered and used by Complainant (e.g.,
“stkittsmarriott.com”). The domain name is confusingly similar to Complainant’s
MARRIOTT mark and name as the result. See
e.g., Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v.
Airportparkinglots.com FA129123
(Mat. Arb. Forum Feb. 2, 2003) (domain name incorporating Complainant’s mark
confusingly similar because additional words have connotations that relate to
Complainant’s business services); see also Foot Locker, Inc. v. Blezin
Widmaer FA113283 (Nat. Arb. Forum June 17, 2002) (domain name incorporating
Complainant’s mark “especially confusing” because additional words “bear an
obvious relationship to Complainant’s business”); see also L.F.P., Inc v
Hotpics International FA109576
(Nat. Arb. Forum May 24, 2002) (addition of word which directly relates to
Complainant’s business to Complainant’s mark in forming domain name increases
the likelihood of confusion); see also
Marriott
International, Inc. v Cafe au lait FA93670
(Nat. Arb. Forum March 13, 2000) (domain name marriott-hotel.com confusingly
similar to Complainant’s MARRIOTT mark and name).
[b.] Respondent has no rights or legitimate
interests in respect of the domain name that is the subject of the complaint.
ICANN Rule 3(b)(ix)(2); ICANN Policy 4(a)(ii).
Respondent
should be considered as having no rights or legitimate interests in respect of
the domain name that is the subject of the complaint for the following reasons:
[i] Respondent is not and has never been
known by the domain name.
Respondent’s
name is MCM Tours, Inc. (see printout of registrar Network Solutions’ Whois
record for domain name <arubamarriott.com> attached as Annex 5).
MCM Tours, Inc. is a corporation organized and domiciled in the State of New
Jersey (see business name search result printout from on-line records of New
Jersey Department of State attached as Annex 6). MCM Tours, Inc. is doing
business under the trade name “MCM Tours – ARUBA4U Vacations.” (see printout of
content of web site located at the URL identified by the domain name <arubamarriott.com>
attached as Annex 7).
the
Complainant has conducted business name, trademark and telephone directory
searches which disclose:
* That none of the designations “aruba
marriott,” “arubamarriott” or “arubamarriott.com” has ever been registered as a
corporate name, a trade name or a trademark in the State of New Jersey (see
business name, alternate name and trademark search results from on-line records
of New Jersey Department of State attached as Annex 8).
* That none of the designations “aruba
marriott,” “arubamarriott” or “arubamarriott.com” has ever been registered as a
trademark or a service mark in the United States Patent and Trademark Office
(see trademark and service mark search results from on-line records of United
States Patent and Trademark Office attached as Annex 9).
* That there is no telephone directory
listing for any business identified as “aruba marriott,” “arubamarriott” or
“arubamarriott.com” in the United States (see Superpages.com nationwide on-line
business telephone directory search results attached as Annex 10).
The
foregoing search results establish that Respondent is not and has never been
known by the domain name. See e.g., Educational
Testing Service v. Netkorea Co. D2000-0087 (WIPO Apr. 7, 2000) (trademark
search, which was conducted in official records of country wherein Respondent
was located, disclosed no pending applications or registrations for domain name
and was sufficient to establish that Respondent has no rights or legitimate
interest in the domain name).
[ii] Respondent has made no use of the
domain name in connection with a bona fide offering of goods or services.
Respondent
is a travel agency using the domain name <arubamarriott.com> in
connection with the marketing of Aruba vacation packages at Complainant’s
popular MARRIOTT branded resorts and at resorts operated by Complainant’s
competitors, including, among others, the Hyatt Regency, the Holiday Inn
Sunspree and the Radisson Aruba (see printout of content of Respondent’s web
site located that URL identified by domain name <arubamarriott.com>
attached as Annex 7). Complainant has not licensed or otherwise authorized
Respondent to use the Complainant’s well known and famous MARRIOTT mark and
name as a part of the Respondent’s domain name in connection with Respondent’s
travel agency services, and Complainant has in fact objected thereto (see
copies of Complainant’s cease and desist letter to Respondent and Respondent’s
reply thereto attached as Annex 11). Because Respondent has merely engaged in
the unauthorized use of the domain name incorporating Complainant’s well known
and famous MARRIOTT mark and name to market Aruba vacations packages offered by
Complainant’s competitors, Respondent has made no use of the domain name in
connection with the bona fide offering of goods and services. See Pitney
Bowes Inc. v. Mike Ostanik D2000-1611
(WIPO
Feb. 6, 2001) (domain name holder’s unauthorized use of confusingly similar
domain name in connection with offering of goods and services competitive with
those of trademark owner Pitney Bowes “cannot be legitimate”); see also
Koppers Chocolate Specialty Co., Inc. v. Seymour Leonard D2001-0822 (WIPO
Sep. 10, 2001) (no bona fide offering of goods or services where domain
name established link to web site where not only Complainant’s products but
also those of Complainant’s competitors were marketed); see also Oki Data
Americas, Inc. v. ASD, Inc. D2001-0903 (WIPO Nov. 6, 2001) (to establish bona
fide use, domain name holder/reseller must actually offer the trademarked
goods and use the site only for the sale of the trademarked goods).
[iii] Respondent has made no legitimate
non-commercial or fair use of the domain name.
Respondent
is using the domain name <arubamarriott.com> in connection with
Respondent’s travel agency business to divert Internet users seeking to
purchase vacation packages at Complainant’s popular MARRIOTT branded Aruba
resorts (such as the ARUBA MARRIOTT) from Complainant’s web site located at
<marriott.com> to Respondent’s web site for the purpose of marketing the
Aruba resort services of Complainant’s competitors to Internet users for
Respondent’s financial gain. Because Complainant markets its Aruba vacation
packages through its web site located at <marriott.com>, each Respondent
sale of a competing vacation package by means of this diversion results in a
corresponding financial loss to Complainant. Respondent’s use of the domain
name is neither a non-commercial use nor in any respect a fair one. See Black
Grouper, Inc. v Paradise Promotions FA94870 (Nat. Arb. Forum July 20, 2000)
(domain holder has no rights or legitimate interests if domain name holder
offers goods or services on web site that compete with those of the trademark
owner).
[c.] Respondent has registered and used the
domain name in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
The
domain name should be considered as having been registered and being used in
bad faith for the following reasons:
[i] Complainant’s MARRIOTT mark and name
was well known and famous long prior to the date upon which Respondent
registered and used the confusingly similar domain name incorporating the mark.
In
significant use for over forty-five years, Complainant’s MARRIOTT mark and name
has become well known and famous in the United States and abroad as a symbol of
the source and quality of Complainant’s hospitality services long prior to date
upon which Respondent travel agency registered and used the confusingly similar
domain name incorporating the mark. The Whois records of domain name registrar
Network Solutions demonstrate that the domain <arubamarriott.com> was not
created until January 29, 2002, forty-two years after Complainant launched its
famous MARRIOTT brand to consumers (see printout of Whois record for domain
name attached as Annex 5). Respondent’s belated registration and use of the
domain name incorporating Complainant’s well known and famous mark in
connection with the marketing of competing services readily establishes
Respondent’s bad faith. See e.g., The Caravan Club
v Mrgsale FA95314
(Nat. Arb. Forum Aug. 30, 2000) (the respondent’s registration of domain name
incorporating Complainant’s well known mark “reveals bad faith”); America Online
Inc. v. Chinese ICQ Network D2000-0808 (WIPO Sept. 7, 2000) (the
respondent’s use of domain name incorporating the complainant’s famous mark
“suggests opportunistic bad faith”); Cho Yong Pil v. Sinwoo Yoon D2000-0310 (WIPO
June 22, 2000) (bad faith found because Complainant’s name was famous at the
time of domain name registration).
[ii] By using the domain name, Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site.
For
Internet users seeking to purchase vacation packages at Complainant’s popular
MARRIOTT branded Aruba resorts (such as the ARUBA MARRIOTT), the mere
composition of the <arubamarriott.com> domain name is likely to
create initial confusion with respect to the source, sponsorship and
affiliation of Respondent’s web site. This initial confusion is sufficient to
permit Respondent travel agency to:
* Divert Internet users seeking to
purchase vacation packages at Complainant’s popular MARRIOTT branded Aruba
resorts from Complainant’s consumer web site to Respondent’s web site;
* Market Aruba resort vacation
packages offered by Complainant’s competitors (including Hyatt Regency, the
Holiday Inn Sunspree and the Radisson Aruba) to those Internet users through
Respondent’s web site (see printout of content of Respondent’s web site located
that URL identified by domain name <arubamarriott.com> attached as
Annex 7); and
* Divert sales of Aruba resort
vacation packages from Complainant to Respondent for the purpose of earning
agency fees and commissions on those sales.
It
is irrelevant that Internet users may discover upon arriving at Respondent’s
web site that they have not reached Complainant’s web site. See SGS
Société Générale de Surveillance S.A. v. Inspectorate D2000-0025 (WIPO Mar. 20, 2000)
(it suffices that confusion could reasonably occur when somebody looking for
Complainant’s mark is connected with the Respondent’s website). Once the
Internet user has been diverted to Respondent’s web site, the user may elect to
abandon his or her search for Complainant’s web site and purchase an Aruba
resort vacation package offered by one of Complainant’s competitors from
Respondent. See Tall Oaks Publishing, Inc. v National Trade
Publications, Inc. FA94346
(Nat. Arb. Forum May 5, 2000) (where the domain name is likely to cause initial
confusion to the effect that Internet users might abandon their efforts to find
Complainant’s services, it is irrelevant that the users may realize that the
site they reached is not the site they were seeking). Moreover, because
Respondent both prominently features the names of Complainant’s popular
MARRIOTT branded Aruba resorts on Respondent’s web site and markets
Complainant’s own Aruba resort vacation services in addition to those of
Complainant’s competitors, it is probable that some consumers may believe that
Respondent is sponsored by or affiliated with Complainant even while understanding
that Respondent and Complainant are not the same entity. See LIN Television Corporation v. Home In USA
and Home In USA, Inc. D2000-0257 (WIPO June 8, 2000)
(Respondent’s use of Complainant’s marks in both the domain names and on the
website itself may cause confusion).
Respondent’s
bad faith in registering and using the domain name is manifest from its intent
to profit by creating confusion with Complainant’s well known and famous
MARRIOTT mark and name as to the source, sponsorship or affiliation of
Respondent’s web site, to divert business from Complainant by means of creating
that confusion, and to damage Complainant’s business conducted under
Complainant’s mark as the result.
The
Complainant requests that the Panel issue a decision that the domain name
registration be transferred to Complainant.
The
Respondent has stated the following in its Response.
MCM
Tours has been on the internet since 1996. The company specializes in arranging
travel exclusively to Aruba and is one of the top ten producers of travel to
Aruba. The company is approved by the Aruba Tours and Authority as an official
wholesaler and a allied member of the Aruba Hotel and Tourism Association. The
company’s website, <www.aruba4u.com> has been utilized since the
company’s inception.
The
company has never pretended to be Marriott and no client has ever called the
company thinking that they were the Marriott. The company has never intended or
pretended to mislead anyone regarding the use of the <arubamarriott.com> name. The domain name was acquired simply
because it was available and it was believed that it would help drive business
to the main site where it links to the search engine name qualities.
The
<arubamarriott.com> does not
resemble Marriott’s brand websites in any way. In fact all of the links and
images on the main page lead the user to our main site,
<www.aruba4u.com>.
The
complainant cannot point to even one person that has gotten confused and taken
business away from the Marriot Hotel Group. This is merely an allegation that
has been made in an attempt to get the domain name without any payment. In the
past regarding the Marriott’s cease and desist order communication the company
replied asking the Marriott if they wanted to make an offer to purchase the
domain name and they have never responded.
The
company has never spent any money advertising this domain and if you check with
Google, the internet’s premier search engine tool, you can verify that the
domain <arubamarriott.com>
does not even have one link to it from any other site on the entire internet.
This fact alone shows that the company did not register the name with any
intentions to market this site under false pretenses. It is therefore, the company’s position that its domain name in
no way shape or form, interferes with any individuals looking for the Marriot,
and never interfered with any business for the Marriott and therefore, it
should be able to maintain its domain name.
Complainant
has submitted the following Additional Submissions.
In
responding to the Complaint in Accordance with the Uniform Domain Name Dispute
Resolution Policy (hereinafter, “Complaint”), Respondent has:
[1.] Failed to contest Complainant’s
allegation that the domain name <arubamarriott.com> is confusingly
similar to Complainant’s well known and famous MARRIOTT mark and name;
[2.] Failed to contest Complainant’s
allegation that Respondent has no rights or legitimate interests in respect of
the domain name <arubamarriott.com>; and
[3.] Contested Complainant’s allegation
that Respondent has registered and used the domain name <arubamarriott.com>
in bad faith.
Please consider the following with
respect to Respondent’s arguments concerning Complainant’s allegation that
Respondent has registered and used the domain name <arubamarriott.com>
in bad faith.
Complainant
has alleged that the domain name should be considered as having been registered
and being used in bad faith for the following reasons:
[1.] Complainant’s MARRIOTT mark and name
was well known and famous long prior to the date upon which Respondent
registered and used the confusingly similar domain name incorporating that
mark.
[2.] By using the domain name, Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site.
Initially,
Complainant notes that Respondent has failed to contest Complainant’s
allegation that Complainant’s MARRIOTT mark and name was well known and famous
long prior to the date upon which Respondent registered and used the
confusingly similar domain name incorporating the mark. The domain name should
be considered as having been registered and used in bad faith upon the basis of
this fact alone. See e.g., The
Caravan Club v Mrgsale FA95314
(Nat. Arb. Forum Aug. 30, 2000) (Respondent’s registration of domain name
incorporating Complainant’s well known mark “reveals bad faith”);
WIPO/D2000-0808 the Respondent’s use of domain name incorporating Complainant’s
famous mark “suggests opportunistic bad faith”); see also America
Online Inc. v. Chinese ICQ Network D2000-0310 (WIPO Sept. 7, 2000) (bad
faith found because Complainant’s name was famous at the time of domain name
registration).
With
respect to Complainant’s allegation that, by using the domain name, Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site, Respondent has:
[1.] Admitted that Respondent
intentionally registered and currently uses the domain name <arubamarriott.com>
to attract, for commercial gain, Internet users to Respondent’s web site. See
Respondent’s Response to Complaint in Accordance with the Uniform Domain Name
Dispute Resolution Policy (hereinafter, “Response”), at p. 2 the Respondent
acquired the domain name “because it was available and would believe to help
drive business to the main site of where it links to the search engine name
qualities.”)
[2.] Denied that Respondent has
intentionally created a likelihood of confusion with the Complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of Respondent’s web
site in order to attract Internet users thereto.
Respondent
has denied that Respondent has intentionally created a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site in order to attract Internet users to that
site upon the basis of the following assertions:
[1.] Respondent has asserted that
Respondent has “never pretended to be Marriott” and “never intended or
pretended to mislead anyone regarding the use of the arubamarriott.com name.”
[2.] Respondent has asserted that “no
client has ever called the company thinking they were Marriott.”
[3.] Respondent has asserted that
Respondent has never “taken business away” from Complainant as the result of
confusion.
The
foregoing Respondent’s assertions are false, disingenuous or both, as follows:
[1.] Respondent has both “pretended to be
Marriott” and intentionally created confusion with Complainant’s mark in order
to mislead Internet users as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site.
The
Internet archive record of the content of Respondent’s <arubamarriott.com>
web site stored at <http://web.archive.org/collections/web.html>
demonstrates that from June 7, 2003 through at least September 20, 2004, the
content of that web site consisted exclusively or primarily of purloined
Marriott logos, graphics and advertising copy pertaining to Complainant’s
ARUBA MARRIOTT RESORT, without accompanying use of Respondent’s trade name MCM
Tours or any disclaimer of affiliation with Complainant Marriott. See Reply, at
Annex 13 (summary of entries to Internet archive record relevant to
Respondent’s <arubamarriott.com> web site stored at
<http://web.archive.org/collections/web.html>); Annex 14 (printout of
June 7, 2003 content of Respondent’s <arubamarriott.com> web site
obtained from Internet archive); Annex 15 (printout of September 20, 2003
content of Respondent’s <arubamarriott.com> web site obtained from
Internet archive). Upon the basis of
this archival site content, it is plain that Respondent has both “pretended to
be Marriott” and intentionally created confusion with Complainant’s mark in
order to mislead Internet users as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site. Respondent’s assertion to the contrary is
demonstrably false, and Respondent’s bad faith is manifest therefrom.
Respondent’s continued ownership of the arubamarriott.com domain name will
allow Respondent to revert to its prior practice of holding itself out as
Complainant and otherwise unfairly competing with and infringing the rights of
Complainant.
[2.] Respondent’s registration and use of
the domain name <arubamarriott.com> creates initial interest
confusion as to the source, sponsorship, affiliation, or endorsement of
Respondent’s web site.
Respondent
has asserted that Respondent’s registration and use of the domain name <arubamarriott.com>
creates no likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s web site
because “no client has ever called the company thinking they were Marriott.”
This assertion is disingenuous. Confusion occurs at the point when Internet
users seeking information concerning Complainant’s ARUBA MARRIOTT RESORT locate
and elect to enter Respondent’s <arubamarriott.com> because that
domain name suggests that Respondent’s site is sourced or affiliated with
Complainant Marriott. It is irrelevant that Internet users may discover upon
arriving at Respondent’s web site that they have not reached Complainant’s web
site. See Tall Oaks Publishing,
Inc. v National Trade Publications, Inc. FA94346 (Nat. Arb. Forum May 5, 2000)
(where the domain name is likely to cause initial confusion to the effect that
Internet users might abandon their efforts to find Complainant’s services, it
is irrelevant that the users may realize that the site they reached is not the
site they were seeking). It is even less relevant that Internet users who elect
to purchase Aruba vacation packages offered by Complainant’s competitors
through Respondent’s web site have not “called the company thinking they were
Marriott.” At the time of Respondent’s sale, initial confusion created by the
composition of the domain name has already accomplished the diversion of a sale
from Complainant.
[3.]the
Respondent has “taken business away” from Complainant as the result of
confusion.
Each
time an Internet user seeking information concerning Complainant’s ARUBA
MARRIOTT RESORT (1) locates and elects to enter Respondent’s <arubamarriott.com>
web site because that domain name suggests that Respondent’s site is sourced or
affiliated with Complainant Marriott and (2) elects to purchase an Aruba
vacation package offered by one of Complainant’s competitors from Respondent,
Respondent has “taken business away” from Complainant. Respondent’s assertion
to the contrary is plainly false, and Respondent’s bad faith is again manifest
therefrom.
In
view of the forgoing, Complainant submits it has proven each of the three
elements contained in Section 4(a) of the Policy, including Respondent’s bad
faith in registering and using the domain name. Complainant requests that the
Panel issue a decision that the domain name registration be transferred to
Complainant accordingly.
the
Complainant asserts that a copy of this Reply has been sent or transmitted to
the Respondent, in accordance with ICANN Rule 2(b) and NAF Supplemental Rule
7(b)(iii).
the
Complainant certifies that the information contained in this Reply is to the
best of Complaint’s knowledge complete and accurate, that this Reply is not
being presented for any improper purpose, such as to harass, and that the
assertions in this Reply are warranted under these Rules and under applicable
law, as it now exists or as it may be extended by a good-faith and reasonable
argument.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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 shown that it is the proprietor of numerous
trademark registrations on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) for the MARRIOTT mark. According to the Panelist
these registrations as well as the Complainant’s continuous use of the mark in
commerce demonstrate the Complainant’s rights in the MARRIOTT mark for purposes
of Policy 4(a)(i).
The Panelist further finds that the <arubamarriott.com> domain name
is confusingly similar to the Complainant’s MARRIOTT mark, since the domain
name fully incorporates the Complainant’s mark and merely adds the geographic
term “Aruba” and the “.com” generic top-level domain. In the Panelist’s opinion
the addition of a geographically descriptive term and a generic top-level
domain does not distinguish the domain name from the Complainant’s mark. Thus,
the Panel finds that the domain name is confusingly similar to the mark under
Policy 4(a)(i). See e.g. Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Net2phone Inc. v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
Respondent’s <net2phone-europe.com> domain name was confusingly similar
to the Complainant’s mark because “the combination of a geographic term with
the mark does not prevent a domain name from being found confusingly similar”).
The Complainant states that the
Respondent is not commonly known by the <arubamarriott.com>
domain name. According to the domain name’s WHOIS information the Respondent is
known as “MCM Tours, Inc.” See e.g. Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the Respondent was not commonly known by the mark and never applied for a
license or permission from the Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy 4(c)(ii) “to require a showing that one has been commonly
known by the domain name prior to registration of the domain name to prevail”).
Furthermore, Complainant asserts that the
Respondent is not licensed or otherwise authorized to use the Complainant’s
MARRIOTT mark as part of the Respondent’s domain name. The Panelist finds that
Respondent is not using the domain name in connection with a bona fide offering
of services under Policy 4(c)(i) or in connection with a legitimate
non-commercial or fair use under Policy 4(c)(iii). See e.g. MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in a domain name confusingly similar to the famous MSNBC mark where
the Respondent attempted to profit from using the Complainant’s mark by
redirecting Internet traffic to its own website); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering
of goods or services where the Respondent used the Complainant’s mark without
authorization to attract Internet users to its website, which offered both the
Complainant’s products and those of the Complainant’s competitors); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.
Mass. 2002) (finding that, because the Respondent’s sole purpose in selecting
the domain names was to cause confusion with the Complainant’s website and
marks, its use of the names was not in connection with a bona fide
offering of goods or services or any other fair use).
In the Panelist’s opinion, the Respondent
is using the domain name <arubamarriott.com>
to divert Internet users seeking to purchase vacation packages at the Complainant’s
web site to the Respondent’s web site for financial gain. The Panelist finds
that the Respondent is not making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers, in accordance with the Policy 4(c)(iii).
Thus, the Panelist concludes that the
Respondent has failed to demonstrate rights or legitimate interests in the
domain name under Policy 4(a)(ii).
The Respondent is a travel agency and
thus operates in the same business as the Complainant. The parties can
therefore be considered as competitors. The Panel thus finds that the
Respondent registered the domain name primarily for the purpose of disrupting
the business of a competitor, which constitutes evidence of registration and
use in bad faith under Policy 4(b)(iii).
Furthermore, it is the Panelist’s opinion that, with regard
to the widespread and long-term use of the MARRIOTT trademark, the Respondent
cannot have been unaware of the Complainant’s well-known trademark, especially
not considering the fact that the parties are competitors, at the time of
registration of the domain name. It is therefore the Panelist’s opinion that
the Respondent must have been aware of the existence of the Complainant’s
trademark, at least from the date the Respondent received the Complainant’s
cease and desist letter.
It
is also the Panelist’s opinion that the Respondent, by using the domain name,
has intentionally attempted to attract, for commercial gain, Internet users to
its web site or other on-line location, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of its web site or location or of a product or service on its web
site or location, in accordance with Policy 4(b)(iv). See e.g. G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the Respondent registered and used the domain name in bad faith
pursuant to Policy 4(b)(iv) because the Respondent was using the confusingly
similar domain name to attract Internet users to its commercial web site); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where the Respondent registered and used an
infringing domain name to attract users to a web site sponsored by the
Respondent).
As pointed out by the Complainant in its
Additional Submissions, the Respondent has also admitted that the Respondent
intentionally registered and currently uses the domain name <arubamarriott.com> to attract,
for commercial gain, Internet users to Respondent’s web site. See
Respondent’s Response at p. 2: Respondent acquired the domain name “because it
was available and would believe to help drive business to the main site of
where it links to the search engine name qualities.”
In view of the above, the Panelist finds
that the disputed domain name has been registered and is being used in bad
faith in accordance with Paragraph 4(a)(iii) of the Policy.
Consequently, all the prerequisites for
cancellation or transfer of the domain name according to Paragraph 4(i) of the
Policy are fulfilled.
The Complainant has requested transfer of
the domain name.
DECISION AND FINDINGS
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <arubamarriott.com> domain name
be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: May 6, 2005
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