Marriott International, Inc. and Marriott Worldwide Corporation v. Advert Web
Claim Number: FA2003001887531
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, United States. Respondent is Advert Web (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotelmarriott.com>, registered with Rebel Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2020; the Forum received payment on March 9, 2020.
On March 10, 2020, Rebel Ltd confirmed by e-mail to the Forum that the <hotelmarriott.com> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd 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 March 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2020 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@hotelmarriott.com. Also on March 12, 2020, 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 April 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two (2) Complainants in this matter: Marriott International, Inc. and Marriott Worldwide Corporation I. Complainants assert that Complainant Marriott International, Inc. is the parent company of Complainant Marriott Worldwide Corporation. Given the close legal relationship between the two Complainants, consolidation of both entities into this single Complaint is appropriate.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel here accepts the evidence in the Complaint as sufficient to establish a sufficient nexus or link between the Complainants and treats them all as a single entity in this proceeding. Throughout the below memo, the Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Marriott International, Inc. and Marriott Worldwide Corporation, operate the largest and one of the most well-known hotel and resort chains in the world. Complainant has rights in the MARRIOTT mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 899,900, registered Sep. 29, 1970). Respondent’s <hotelmarriott.com> domain name is confusingly similar to Complainant’s MARRIOTT mark as Respondent merely adds the generic term “hotel” and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <hotelmarriott.com> domain name. Respondent is not licensed or authorized to use Complainant’s MARRIOTT mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to Complainant’s own website.
Respondent registered and uses the <hotelmarriott.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use. Respondent attempts to divert Internet users to Complainant’s own website. Respondent also uses a privacy service to conceal its identity. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainant’s mark prior to the registration of the <hotelmarriott.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), of Bethesda, MD, USA. Complainant is the owner of domestic and international registrations for the mark MARRIOTT, and variations thereof, constituting the family of Marriott marks. Complainant has continuously used its mark since at least as early as 1957 in connection with its provision of hotel and restaurant services.
Respondent is Advert Web (“Respondent”), whose address is listed as Grand Cayman, KY. Respondent’s registrar’s address is listed as Providenciales, Turks and Caicos. The Panel notes that the <hotelmarriott.com> domain name was registered on or about April 10, 2004.
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 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant claims rights to the MARRIOTT mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the MARRIOTT mark (e.g., Reg. No. 899,900, registered Sep. 29, 1970). The Panel here finds that Complainant has rights in the MARRIOTT mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <hotelmarriott.com> domain name is confusingly similar to Complainant’s MARRIOTT mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the term “hotel”, and a “.com” gTLD to Complainant’s MARRIOTT mark. The Panel here finds that the <hotelmarriott.com> domain name does not contain changes that sufficiently distinguish it from the MARRIOTT mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <hotelmarriott.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the MARRIOTT mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Advert Web” and there is no other evidence to suggest Respondent was authorized to use the MARRIOTT mark. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims Respondent uses the <hotelmarriott.com> domain name to redirect traffic to Complainant’s own website. Redirecting traffic to a complainant’s websites does not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) & (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Complainant provides a screenshot of the disputed domain name’s resolving website which redirects users to a specific hotel search page at Complainants’ www.Marriott.com website relating to Winnipeg, Canada. The Panel here finds that Respondent’s acts of redirecting users to one of complainant’s own websites does not amount to any rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent uses the disputed domain name to redirect traffic to Complainant’s own website. Redirecting traffic to a complainant’s websites may constitute bad faith per Policy ¶ 4(a)(iii). See D Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website which redirects Internet users to Complainant’s own website. The Panel here finds that Respondent registered and uses the <hotelmarriott.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <hotelmarriott.com> domain name with actual knowledge of Complainant’s rights in the MARRIOTT mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent was on actual notice of Complainants’ rights in their globally famous mark as a result of Complainants’ extensive use of the MARRIOTT mark and their portfolio of trademark registrations throughout the world for the MARRIOTT mark, both of which long predate the date on which Respondent acquired the disputed domain name. The Panel here finds that Respondent registered the <hotelmarriott.com> domain name with actual knowledge of Complainant’s MARRIOTT mark, thus demonstrating bad faith registration and use per Policy ¶4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hotelmarriott.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 20, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page