Marriott International, Inc. v. Hong Kong Names LLC
Claim Number: FA0609000803966
Complainant is Marriott International, Inc. (“Complainant”), represented by Jason J. Mazur, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Hong Kong Names LLC (“Respondent”), Room 2890, 14/G Shanghai Investment Building, Hong Kong 0000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <marriottvacations.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2006.
On September 19, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <marriottvacations.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@marriottvacations.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 24, 2006, 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." 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 <marriottvacations.com> domain name is identical to Complainant’s MARRIOTT VACATIONS mark.
2. Respondent does not have any rights or legitimate interests in the <marriottvacations.com> domain name.
3. Respondent registered and used the <marriottvacations.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marriott International, Inc., operates over 2,800 hotels and other accommodations around the world under the MARRIOTT mark. Complainant has continuously used the MARRIOTT mark in association with its hotels since at least 1960. Complainant has registered the MARRIOTT VACATIONS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,849,597 issued June 1, 2004).
Respondent’s <marriottvacations.com> domain name, which it registered on October 2, 2004, resolves to a pay-per-click links page featuring links to Complainant’s competitors in the hotel and travel industries.
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 demonstrates its rights in the MARRIOTT VACATIONS mark through registration of the mark with the USPTO. 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).
Respondent’s <marriottvacations.com> domain
name incorporates Complainant’s entire MARRIOTT VACATIONS mark and simply
eliminates the space between words and adds the generic top-level domain
(“gTLD”) “.com.” Neither alteration is
a distinguishing difference. Therefore,
the Panel finds the <marriottvacations.com> domain name to be
identical to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria's Secret v. Hardin, FA
96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to the complainant’s BODY
BY VICTORIA mark); see also Croatia Airlines v. Kwen Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant has the initial burden of proof in establishing that
Respondent lacks 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 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); see also AOL LLC v.
Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must
first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the disputed
domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also 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 now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the <marriottvacations.com>
domain name as “Hong Kong Names LLC,”
and there is no other evidence in the record suggesting that Respondent is
commonly known by the disputed domain name.
Accordingly, the Panel finds that Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Moreover, Respondent is using the <marriottvacations.com> domain name to redirect Internet users seeking Complainant’s hotel and travel services to the websites of Complainant’s competitors. The Panel presumes that Respondent receives click-through fees for each consumer it diverts to other websites. Consequently, Respondent’s diversionary use of the disputed domain name for commercial gain is not 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 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 concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
As Respondent is using the <marriottvacations.com>
domain name to redirect Internet users to competing travel services websites,
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 according 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 <marriottvacations.com>
domain name for commercial gain violates Policy ¶ 4(b)(iv), for by linking the
domain name to its own commercial website, where Respondent likely earns
click-through fees, 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 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); see also Allianz of America
Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting from click-through fees).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marriottvacations.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 7, 2006
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