Marriott International, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1907001852985
Complainant is Marriott International, Inc. (“Complainant”), represented by Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gaylordpacific.com>, registered with Dynadot, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 21, 2019; the Forum received payment on July 21, 2019.
On July 22, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <gaylordpacific.com> domain name (the Domain Name) is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 12, 2019 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@gaylordpacific.com. Also on July 23, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant is one of the world’s largest and most well-known providers of commercial hotel, restaurant, meeting, conference center and hospitality services in the U.S. and internationally. In 2012, Complainant acquired the GAYLORD brand and hotel management business and has since built and advertised additional hotels and resorts under this brand. Complainant has rights in the GAYLORD HOTELS mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,762,447, registered September 9, 2003). Complainant also has rights in the GAYLORD PACIFIC mark through a trademark application with the USPTO (Serial No. 88193967, filed Nov. 14, 2018). It has used that mark in connection with its Gaylord Hotel project in San Diego/Chula Vista, called the GAYLORD PACIFIC, since mid-2017. Respondent’s Domain Name is identical or confusingly similar to Complainant’s GAYLORD HOTELS mark as it incorporates the GAYLORD element of that mark in its entirety, merely adding the geographic term “pacific” and the “.com” generic top-level domain (“gTLD”). The Domain Name is confusingly similar to Complainant’s GAYLORD PACIFIC mark as it incorporates that mark in its entirety, merely adding the “.com” gTLD.
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use the GAYLORD or GAYLORD PACIFIC mark nor has Respondent been commonly known by the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the web site resolving from the Domain Name solicits “business inquiries,” implying a disposition to sell the Domain Name or possibly to benefit commercially from it in other ways.
Respondent registered and uses the Domain Name in bad faith. Respondent opportunistically registered the Domain Name after extensive publicity describing Complainant’s intent to develop a new resort hotel named Gaylord Pacific, Respondent intending to use the Domain Name for some commercial purpose, either to sell it or to benefit commercially from it in some other way. Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Identical and/or Confusingly Similar
The GAYLORD HOTELS mark was registered to the Gaylord Entertainment Company with the USPTO (Registration No. 2,762,447) on September 9, 2003 and was subsequently assigned to Complainant (Complaint Exhibit K). A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As assignee and current owner of the GAYLORD HOTELS mark, Complainant has sufficient rights in the mark to bring and maintain this proceeding.
Complainant also argues that it has rights in the GAYLORD PACIFIC mark based upon its application for that mark with the USPTO (Serial No. 88193967), filed November 14, 2018 (Complaint Exhibit K). Standing alone, applications for registration of a mark with the USPTO are not sufficient to demonstrate rights in a mark for the purposes of Policy ¶ 4(a)(i). Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Complainant does not argue that it has common law rights in that mark. It alleges extensive publicity surrounding its plans to develop a major resort hotel in the San Diego/Chula Vista area beginning most recently in 2017, but the evidence submitted falls short of demonstrating common law rights in the GAYLORD PACIFIC mark. Complaint Annexes H, H-1, and I contain a substantial amount of publicity about the proposed new hotel but it is referred to by other names, e.g. Chula Vista Bayfront Resort, rather than by the name Gaylord Pacific. The Panel finds that Complainant has not demonstrated sufficient rights in GAYLORD PACIFIC to enable it to maintain a UDRP proceeding on the basis of this alleged mark.
Respondent’s <gaylordpacific.com> Domain Name is confusingly similar to the GAYLORD HOTELS mark, as it incorporates the dominant GAYLORD element of the mark verbatim, merely deleting the HOTELS element, and adding the geographic term “pacific” and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.), Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the GAYLORD HOTELS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent has no affiliation with Complainant, nor has Complainant authorized Respondent to use its mark in any way, (ii) Respondent has not been commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use in that the Domain Name resolves to a web site which solicits “business inquiries,” implying a disposition to sell the Domain Name or possibly to benefit commercially from it in other ways. These allegations are addressed as follows:
Complainant states that Respondent is not an affiliate or licensee of Complainant, and that Complainant has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Super Privacy Service LTD c/o Dynadot.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). There is no evidence before the Panel to suggest that Respondent has been commonly known by the Domain Name, and the Panel finds that it has not been so known.
Complainant Annex O contains a screenshot of the web site resolving from the Domain Name. It contains only the message “Contact us for any business inquiries” and allows visitors to input their personal information and a message. There is no other substantive content. Complainant argues that this implies a disposition on Respondent’s part to sell the Domain Name, and the Panel agrees that this would be a reasonable interpretation of the message. It clearly invites general discussion about business, which normally connotes opportunity for commercial gain. The site is obviously commercial in nature. Using a confusingly similar domain name to sell or lease it is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name), Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO D2000-0847 (“[U]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product of service on Respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, as discussed above, it appears that Respondent is offering to sell the Domain Name but apart from that is making no active use of it. Registering and using a confusingly similar domain name in order to sell it for more than out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i). loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786282 (Forum June 18, 2018), Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
Second, although the exact means by which Respondent may benefit commercially from its registration and current use of the Domain Name is not precisely defined, it is clear that Respondent intends some form of commercial benefit to accrue from it. The Domain Name is plainly suggestive of Complainant and its practice of naming its hotel and resort enterprises in the form of “Gaylord [specific identifier],” e.g., Gaylord National, Gaylord Rockies, Gaylord Texan, etc. (Complaint Exhibits F & G). Respondent is thus attempting to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (“Respondent appears to use a copycat page to solicit the sale of Complainant’s television, Internet, and voice communications services. It is unclear if the Respondent is actually providing Complainant’s services or is gathering personal information from website visitors while not providing any services. In either scenario, the Panel agrees that Respondent is attempting to commercially benefit from the use of Complainant’s SPECTRUM Marks in bad faith under Policy ¶ 4(b)(iv),”
Finally, it is evident from Complainant’s long and well-known presence in the hotel and resort industry, and from the fact that Respondent incorporated the dominant element of Complainant’s mark verbatim into the Domain Name, and from the fact that Respondent structured the Domain Name to mimic Complainant’s practice of naming its hotels and resorts in the manner described above that Respondent had actual knowledge of Complainant’s mark in November 2018, when it registered the Domain Name. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gaylordpacific.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
August 19, 2019
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