Marriott International, Inc., Starwood Hotels & Resorts Worldwide, LLC, The Sheraton LLC and Sheraton International IP, LLC v. Mahesh Saeed / Intour Maldives
Claim Number: FA2105001943926
Complainant is Marriott International, Inc., Starwood Hotels & Resorts Worldwide, LLC, The Sheraton LLC and Sheraton International IP, LLC (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Mahesh Saeed / Intour Maldives (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <st-regisvommulimaldives.com>, registered with Name.com, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 5, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <st-regisvommulimaldives.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 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@st-regisvommulimaldives.com. Also on May 10, 2021, 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 June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Marriott International, Inc., is provider of hospitality services in the U.S. and internationally. Complainant has rights in the ST. REGIS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,893,705 registered Mar. 1, 2001). See Compl. Ex. D. Respondent’s <st-regisvommulimaldives.com> domain name is confusingly similar to Complainant’s mark since it fully incorporates Complainant’s ST. REGIS mark, adding the two geographic names “Maldives” and “Vommuli,” and appending “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <st-regisvommulimaldives.com> domain name as it is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the ST. REGIS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant’s ST. REGIS Maldives Vommuli Resort and direct Internet users to Respondent’s competing hospitality services booking website.
Respondent registered and uses the <st-regisvommulimaldives.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant and offers competing hospitality services for commercial gain. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the ST. REGIS mark based on the deliberateness of Respondent’s efforts to copy Complainant’s mark and construct its website by copying content from Complainant’s actual website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the provision of hospitality services in the U.S. and internationally, including at the ST. REGIS Maldives Vommuli Resort.
2. Complainant has established its trademark rights in the ST. REGIS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,893,705 registered Mar. 1, 2001).
3. Respondent registered the <st-regisvommulimaldives.com> domain name on October 26, 2020.
4. Respondent uses the disputed domain name to pass itself off as Complainant’s ST. REGIS Maldives Vommuli Resort and to direct Internet users to Respondent’s competing hospitality services booking website.
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).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the ST. REGIS mark through its registration with the USPTO (e.g., Reg. No. 2,893,705 registered Mar. 1, 2001). See Compl. Ex. D. Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ST. REGIS mark. Complainant argues that Respondent’s <st-regisvommulimaldives.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name fully incorporates Complainant’s ST. REGIS mark in its entirety, adding the two geographic names “Maldives” and “Vommuli” and appending the gTLD “.com”. In general, adding terms that pertain to a complainant’s business does not remove confusing similarity, but rather increases the likelihood of confusion. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The appending of the gTLD “.com” after Respondent has incorporated the entire mark and some descriptive terms is also insufficient to distinguish from complainant’s mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). See also 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.”). Complainant emphasizes that the use of the geographic names “Maldives” and “Vommuli” is an attempt to suggest that the domain name relates to Complainant’s ST. REGIS Maldives Vommuli resort. See Compl. Exs. S & P. Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s ST. REGIS trademark and to use it in its domain name, adding the two geographic names “Maldives” and “Vommuli” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <st-regisvommulimaldives.com> domain name on October 26, 2020;
(c) Respondent uses the disputed domain name to pass itself off as Complainant’s ST. REGIS Maldives Vommuli Resort and to direct Internet users to Respondent’s competing hospitality services booking website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <st-regisvommulimaldives.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ST. REGIS mark. Under Policy ¶ 4(c)(ii), when no response is submitted, WHOIS information can be used to identify a respondent and even if the WHOIS information reflects the disputed domain name, additional affirmative evidence is necessary to show a respondent is commonly known by that name. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See 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.”). Here, the WHOIS information identifies “Mahesh Saeed / Intour Maldives” as the registrant. See Compl. Ex. Y. However, Complainant submits that it has not licensed or permitted Respondent to use the ST. REGIS mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <st-regisvommulimaldives.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead Respondent uses the disputed domain name to pass off as Complainant and divert users to Respondent’s competing website for hospitality services booking. An attempt to pass off as complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”). Additionally, using a disputed domain name to offer products or services that directly compete with those offered by a complainant also does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides screenshots that show the resolving website for the disputed domain name features Complainant’s ST. REGIS mark, copyright-protected text and photographs from Complainant’s ST. REGIS Maldives Vommuli Resort website and use of the word “our” (such as in “explore our rooms”) to reinforce a connection with Complainant. See Compl. Exs. U & V. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <st-regisvommulimaldives.com> domain name in bad faith because Respondent uses the domain to pass itself off as Complainant and appear to offer competing hospitality services. Use of a disputed domain name to pass off as a complainant and offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see additionally OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s contention that Respondent’s domain name not only fully incorporates Complainant’s entire ST. REGIS mark but also is substantially similar to the name of Respondent’s business, the ST. REGIS Maldives Vommuli Resort. Furthermore, Complainant provides screenshots of Respondent’s website which feature Complainants ST. REGIS mark, copyright text and photographs from Complainant’s own website for the ST. REGIS Maldives Vommuli Resort, and use of the word “our,” which evidence an attempt to pass itself off as Complainant and offer competing hospitality services. See Compl. Exs. U & V. Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii) and (iv).
Secondly, Complaint argues that Respondent registered the <st-regisvommulimaldives.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the ST. REGIS mark, based on the Respondent’s deliberate attempt to pass itself off as an official website of Complainant. While constructive knowledge is insufficient for finding of bad faith per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use a respondent makes of the disputed domain name. 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.”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”); see additionally Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant argues Respondent must have been well aware of Complainant’s rights in the ST. REGIS mark since Respondent has systematically copied Complainant’s ST. REGIS mark as well as images and texts from Complainant’s actual website onto the resolving website for the disputed domain name. See Compl. Exs. U & V. Therefore, as the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the ST. REGIS mark it finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <st-regisvommulimaldives.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 9, 2021
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