Marriott International, Inc. And Marriott Worldwide Corporation v. domain admin / domain registration
Claim Number: FA2004001890672
Complainants are Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is domain admin / domain registration (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwhotelmarriott.com>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2020; the Forum received payment on April 6, 2020.
On April 3, 2020, Key-Systems GmbH confirmed by e-mail to the Forum that the <wwwhotelmarriott.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 April 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@wwwhotelmarriott.com. Also on April 8, 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 May 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
There are two Complainants in this matter: Marriott International, Inc. and Marriott Worldwide Corporation. Marriott International, Inc. is the parent company of Marriott Worldwide Corporation Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) “(It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.” The record indicates that the two complaining parties have a sufficient link to one another such that the Panel concludes they may be considered as a single entity in this proceeding. Therefore, throughout this Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. Complainant is one of the most well-known hotel and resort chains in the world with more than 7,300 properties in over 134 countries and territories worldwide. Complainant has rights in the MARRIOTT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 899,900, registered Sept. 29, 1970).
2. Respondent’s <wwwhotelmarriott.com>[i] domain name is confusingly similar to Complainant’s MARRIOTT mark as Respondent incorporates the mark in its entirety adding the prefix “WWW,” generic world “hotel,” and “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <wwwhotelmarriott.com> domain name as Respondent is not commonly known by the domain name, nor did Complainant authorize Respondent to use the MARRIOTT mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name redirects to Complainant’s <www.marriott.com> webpage.
4. Respondent registered and uses the <wwwhotelmarriott.com> domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainant’s mark and that Respondent is somehow affiliated with Complainant by redirecting towards Complainant’s legitimate webpage.
5. Respondent had actual knowledge of Complainant’s rights in the MARRIOTT mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARRIOTT mark. Respondent’s domain name is confusingly similar to Complainant’s MARRIOTT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwwhotelmarriott.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the MARRIOTT mark through its registration with the USPTO. Registration of a mark is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See 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.”). Complainant has provided the Panel with a copy of its USPTO registration for the MARRIOTT mark (Reg. No. 899,900, registered Sep. 29, 1970). Therefore, Complainant has adequately shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wwwhotelmarriott.com> domain name is confusingly similar to Complainant’s MARRIOTT mark. Registration of a domain name that incorporates a mark in its entirety and adds a generic term and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Respondent incorporates the MARRIOTT mark in its entirety adding the prefix “WWW,” generic world “hotel,” and “.com” gTLD. Therefore, the Panel holds that Respondent’s <wwwhotelmarriott.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <wwwhotelmarriott.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <wwwhotelmarriott.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the MARRIOTT mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <wwwhotelmarriott.com> domain name lists the registrant as “Domain Admin / Domain Registration” and there is no other evidence to suggest that Respondent was authorized to use the MARRIOTT mark or was commonly known by the domain name. Therefore, the Panel holds that Respondent is not commonly known by the <wwwhotelmarriott.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s <wwwhotelmarriott.com> domain name redirects to Complainant’s <www.marriott.com> webpage. Use of a domain name to resolve to a complainant’s legitimate webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (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 has provided screenshots or Respondent’s domain name’s resolving webpage that is in fact Complainant’s webpage. Therefore, Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <wwwhotelmarriott.com> domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainant’s mark and that Respondent is somehow affiliated with Complainant by redirecting Internet users towards Complainant’s legitimate webpage. Use of a domain name incorporating a complainant’s mark to redirect Internet users to a complainant’s webpage is evidence of bad faith per Policy ¶ 4(a)(iii). See 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 has provided screenshots of Respondent’s domain name’s resolving webpage that is in fact Complainant’s webpage. Therefore, the Panel holds that Respondent registered and uses the <wwwhotelmarriott.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MARRIOTT mark prior to registration of the <wwwhotelmarriott.com> domain name. Actual knowledge of a complainant’s rights in a mark prior to registering the domain name incorporating that mark is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a domain name that makes use of a well-known and famous mark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant has provided the Panel with news articles, social media pages, and searches related to the MARRIOTT mark. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the MARRIOTT mark prior to registering the <wwwhotelmarriott.com> domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <wwwhotelmarriott.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 18, 2020
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