Marriott International, Inc. v. Forum LLC
Claim Number: FA0609000792050
Complainant is Marriott International, Inc. (“Complainant”), represented by Jason J. Mazur, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Forum LLC (“Respondent”), P.O. Box 2331, Roseau 00152 DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <marriotttimeshare.com>, registered with Moniker Online Services, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 12, 2006.
On September 19, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <marriotttimeshare.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 September 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2006 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@marriotttimeshare.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 <marriotttimeshare.com> domain name is confusingly similar to Complainant’s MARRIOTT mark.
2. Respondent does not have any rights or legitimate interests in the <marriotttimeshare.com> domain name.
3. Respondent registered and used the <marriotttimeshare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marriott International, Inc., is one of the world’s largest hotel companies. Complainant operates approximately 2,800 lodging facilities in over sixty-seven countries and territories, including the United States. Fortune magazine has ranked Complainant one of the best places to work and Complainant is ranked as the lodging industry’s most admired company. Since 1984, Complainant has used the MARRIOTT mark in connection with timesharing services.
Complainant has registered the MARRIOTT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 899,900 issued September 29, 1970). Complainant’s main website is located at the <marriott.com> domain name.
Respondent registered the <marriotttimeshare.com> domain name on October 2, 2004. Respondent is using the disputed domain name to maintain a commercial web directory featuring links to Complainant’s competitors in the hotel and travel services industry.
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 has registered the MARRIOTT mark with the USPTO. Accordingly, the Panel finds that this trademark registration demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Because Respondent’s <marriotttimeshare.com>
domain name wholly incorporates Complainant’s registered mark and simply adds
the term “timeshare,” an aspect of Complainant’s lodging business, Respondent
has failed to sufficiently distinguish the disputed domain name from
Complainant’s mark. Consequently, the
Panel finds that the <marriotttimeshare.com> domain name is
confusingly similar to the mark according to Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is
identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes”
is not a distinguishing feature, and in this case seems to increase the
likelihood of confusion because it is an apt term for Complainant’s
business.”); see also Experian Info. Solutions, Inc. v. Credit Research,
Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names
incorporating the complainant’s entire EXPERIAN mark and merely adding the term
“credit” were confusingly similar to the complainant’s mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor shifts
to the Respondent to rebut the showing by providing concrete evidence that it
has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <marriotttimeshare.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “Forum LLC,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain name, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record).
Respondent’s <marriotttimeshare.com> domain
name, which is confusingly similar to Complainant’s MARRIOTT mark, resolves to
a commercial web directory displaying links to Complainant’s competitors in the
hotel and travel services industry. The
Panel presumes that Respondent profits from click-through fees it earns by
redirecting Internet users to third-party competing commercial websites. The Panel does not find such use to
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See 24 Hour Fitness USA,
Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb.
Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use); 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <marrotttimeshare.com>
domain name to redirect Internet users to competing travel websites. As a result, the Panel finds that Respondent
has registered and is using the disputed domain name in order to disrupt
Complainant’s business under the MARRIOTT mark, which constitutes bad faith
pursuant to Policy ¶ 4(b)(iii). See
Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6,
2005) (“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).”); see also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel also finds that Respondent’s diversionary use of the <marriotttimeshare.com> domain name for commercial gain violates Policy ¶ 4(b)(iv), for by linking the contested domain name to a website displaying links to Complainant’s competitors, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s MARRIOTT mark in order to profit from the goodwill associated with the mark. See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also 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 website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shouldd be GRANTED.
Accordingly, it is Ordered that the <marriotttimeshare.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 3, 2006
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