Marriott International, Inc. v. Express Corporation
Claim Number: FA0705000977541
Complainant is Marriott International, Inc. (“Complainant”), represented by Jason
J. Mazur of Arent Fox LLP, 1050 Connecticut Avenue,
NW, Washington, DC 20036.
Respondent is Express Corporation (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jwmarriott.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 4, 2007; the National Arbitration Forum received a hard copy of the Complaint May 7, 2007.
On May 16, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <jwmarriott.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2007, 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@jwmarriott.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The disputed domain name that Respondent registered, <jwmarriott.com>, is confusingly similar to Complainant’s JW MARRIOTT HOTEL mark.
2. Respondent has no rights to or legitimate interests in the <jwmarriott.com> domain name.
3. Respondent registered and used the <jwmarriott.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marriott International, Inc.,
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the JW MARRIOTT HOTEL mark (e.g., Reg. No.
2,393,255 issued October 10, 2000 and Reg. No. 2,399,675 issued October 31,
2000). Complainant also holds trademark
registrations with the USPTO for the MARRIOTT mark (e.g., Reg. No. 899,900
September 29, 1970 and Reg. No. 1,576,776 issued January 9, 1990). Complainant has used the MARRIOTT mark in
connection with its hotel, restaurant, hospitality, and timesharing companies
employing over 140,000 employees and operating 2,800 lodging properties in the
Respondent registered the <jwmarriott.com> domain name April 28, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to multiple third-party websites, including websites offering services in direct competition with Complainant under the JW MARRIOT HOTEL mark.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this proceeding that it has legal rights under Policy ¶ 4(a)(i) in the JW MARRIOTT HOTEL mark through registration of the mark with the USPTO. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The disputed domain name, <jwmarriott.com>, is confusingly similar to Complainant’s JW MARRIOTT HOTEL mark because it nearly uses the mark in its entirety and only omits the word “hotel” and adds the generic top-level domain (gTLD) “.com” to the mark. The Panel finds that Respondent’s omission of the word “hotel” from Complainant’s mark and the addition of a gTLD are minor changes that do not alter the mark sufficiently to negate a finding of confusing similarity under Policy ¶ 4(a)(ii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <jwmarriott.com> domain name. Complainant’s assertion establishes a prima facie case, which shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Additionally, the Panel finds that Respondent’s failure to respond to the Complaint not only constitutes evidence that Respondent lacks rights or legitimate interests in the <jwmarriott.com> domain name, but the Panel assumes from the lack of response that Respondent has no rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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 consider all available evidence before determining whether Respondent has rights or legitimate interests in the <jwmarriott.com> domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is using the <jwmarriott.com> domain name to
redirect Internet users to Respondent’s website, which displays links to
third-party websites offering services in competition with Complainant’s
services under the JW MARRIOTT HOTEL mark.
The Panel finds that Respondent’s use of the domain to redirect Internet
users to links of competing third-party websites is not a use in connection
with a bona fide offering of goods or service under Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services); see also Wells Fargo & Co.
v. Lin Shun Shing, FA 205699 (Nat. Arb.
Forum Dec. 8, 2003) (finding that using a domain name to direct Internet
traffic to a website featuring pop-up advertisements and links to various
third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
Finally, Respondent fails to offer any evidence and
no evidence is present in the record to indicate that Respondent is commonly
known by the <jwmarriott.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Express
Corporation.” Therefore, the Panel finds
that Respondent failed to show rights or legitimate interests in the disputed
domain name under 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds that
Complainant satisfied Policy ¶ 4(a)(ii).
Respondent registered and is using the <jwmarriott.com> domain name, which is confusingly similar to Complainant’s JW MARRIOTT HOTEL mark, to redirect Internet users to Respondent’s website displaying links to third-party websites offering services in competition with Complainant’s services under its mark. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to competing websites constitutes disruption, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent’s use of the <jwmarriott.com> domain name to redirect Internet users to Respondent’s website is for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s mark, Internet users may become confused as to Complainant’s association with the <jwmarriott.com> domain name. Presumably, Respondent is profiting from this confusion in the form of click-through fees. Therefore, the Panel finds that Respondent’s use of the <jwmarriott.com> domain name to redirect Internet users to Respondent’s website for the assumed profit of Respondent constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Complainant 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 <jwmarriott.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 26, 2007.
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