Marriott International, Inc. v. Stealth
Commerce d/b/a Telmex Management Services
Claim Number: FA0204000109746
PARTIES
Complainant
is Marriott International, Inc.,
Bethesda, MD (“Complainant”) represented by Jason J. Mazur, of Arent,
Fox, Kintner, Plotkin & Kahn, PLLC.
Respondent is Stealth Commerce
d/b/a Telmex Management Services, Tortola, VIRGIN ISLANDS (“Respondent”).
REGISTRARS AND DISPUTED DOMAIN NAMES
The
domain names at issue are: <themarriotthotel.com>
and <theramadahotel.com> registered
with Tucows, Inc. and <ritzplazahotel.com>
registered with Intercosmos Media Group.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 18, 2002; the Forum received a hard copy of the
Complaint on April 22, 2002.
On
April 18, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <ritzplazahotel.com> is registered with
Intercosmos Media Group, and on April 19, 2002 Tucows, Inc. confirmed by e-mail
to the Forum that the domain names <themarriotthotel.com> and <theramadahotel.com> are registered with Tucows, Inc. and
that Respondent is the current registrant of the names. Tucows, Inc. and Intercosmos Media Group
have verified that Respondent is bound by the Tucows, Inc. and Intercosmos Media
Group registration agreements and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
April 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 13,
2002 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@themarriotthotel.com, postmaster@theramadahotel.com
and postmaster@ritzplazahotel.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 23, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s disputed domain names, <themarriotthotel.com>,
<theramadahotel.com> and
<ritzplazahotel.com>, are confusingly similar to
Complainant’s registered MARRIOTT, MARRIOTT HOTEL, RAMADA, RAMADA HOTEL, RITZ
and RITZ-CARLTON marks.
2. Respondent has no rights or legitimate
interests with respect to the disputed domain names.
3. Respondent registered and used the
disputed domain names in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant operates one of the world’s
most well-known and extensive hotel, restaurant and hospitality companies
servicing millions of customers worldwide each year; millions more are exposed
to Complainant’s registered marks through advertising and promotions.
Complainant and its related entities are the owners of numerous trademark
registrations worldwide for marks that include MARRIOTT, RAMADA, RITZ, and
RITZ-CARLTON, including U.S. trademark Reg. Nos. 899,900 (MARRIOTT); 1,277,443
(MARRIOTT HOTEL); 849,951 (RAMADA); 1,276,587 (RAMADA HOTEL); 2,385,656 (RAMADA
PLAZA HOTEL); 1,535,834 (RITZ); and 1,094,823 (RITZ-CARLTON). Complainant also
registered and uses the domain names <marriott.com>,
<marriotthotels.com>, <ramada.com>, <ramadahotels.com> and
<ritzcarlton.com> in connection to websites that promote its hotel
services. Complainant adopted and began using the marks in interstate and
international commerce in connection with its goods and services as early as
1960 for the MARRIOTT mark, as early as 1958 for the RAMADA mark and as early
as 1927 for the RITZ-CARLTON mark. Complainant has invested substantial sums of
money in developing and marketing its products and services.
Respondent registered the contested
domain names on the following dates: <themarriotthotel.com> on
October 25, 2002, <theramadahotel.com> on October 24, 2002 and <ritzplazahotel.com>
on January 19, 2002. Respondent has used the domain names to route Internet
users to an active commercial website at the domain <girlhire.com>, also
owned by the Respondent, that offers adult escort and sexual services.
Respondent previously conducted similar trademark infringement tactics under
the alias “Telmex Management Services” listed at the same British Virgin
Islands address stated in the Complaint.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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 has established its rights in
the MARRIOTT, RAMADA and RITZ-CARLTON marks through registration with the U.S.
Patent and Trademark Office and continuous subsequent use. The disputed domain
names are confusingly similar to Complainant’s marks on two grounds: (1) the
disputed domain names incorporate Complainant’s entire marks, and (2) the
addition of the generic word “the” is inconsequential to the confusingly similar
analysis conducted under Policy ¶ 4(a)(i).
Respondent’s disputed domain names
reflect Complainant’s registered marks in their entirety, assuring confusion
will result. Respondent’s registrations of Complainant’s identical marks create
the illusion of affiliation, and therefore, are confusingly similar. See
Surface Prot. Indus., Inc. v. The
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name
<mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS
mark “so as to likely confuse Internet users who may believe they are doing
business with Complainant or with an entity whose services are endorsed by,
sponsored by, or affiliated with Complainant; hence, satisfying the confusing
similarity requirement”); see also Treeforms,
Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000)
(finding that confusion would result when Internet users, intending to access
Complainant’s website, think that an affiliation of some sort exists between
Complainant and Respondent, when in fact, no such relationship would exist).
Also, the addition of “hotel,” because it is a generic word that describes the
Complainant’s business, fails to take the disputed domain names out of the
realm of confusing similarity. See Marriott
Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that the Respondent’s domain name <marriott-hotel.com> is confusingly
similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s mark
with a generic term that has an obvious relationship to the Complainant’s
business).
Furthermore, the addition of the generic
word “the” to the beginning of the domain names fails to make them separate and
distinct, as distinguishable from Complainant’s marks. The addition of these
generic terms to Complainant’s famous marks represents an attempt by Respondent
to ensnare Internet users searching for Complainant’s site. Internet users
searching for Complainant’s website will likely include the generic term “the”
in a search for Complainant’s services. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the
Complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with the Complainant).
The Panel finds that ¶ 4(a)(i) has been
satisfied.
Complainant
has established its rights and interests in its marks. Because Respondent has
not submitted a Response in this proceeding, the Panel may presume it has no
such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See
Vertical Solutions Mgmt., Inc. v.
Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the infringing domain
names to route unwary Internet users searching for Complainant’s services to an
active commercial website specializing in adult services. Respondent’s use of
Complainant’s marks represents an activity that tarnishes Complainant’s
reputation, and fails to establish Respondent’s rights or legitimate interests
in the disputed domain names under Policy ¶ 4(c)(i); redirection to adult
websites under another’s guise is not a bona fide offering of goods or
services. See
MatchNet plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated to mislead consumers and tarnish the
Complainant’s mark).
Additionally, no evidence here suggests that Respondent is
commonly known as “themarriotthotel,” “theramadahotel” or “ritzplazahotel.com”
pursuant to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum
Aug. 5, 2000) (finding that Respondent was not commonly known by the domain
name <greatsouthernwood.com> where Respondent linked the domain name to
<bestoftheweb.com>).
By infringing on Complainant’s registered marks in order to
divert Internet users to a connected domain name providing adult services,
Respondent is not making a legitimate noncommercial or fair use of the domain
name under Policy ¶ 4(c)(iii). Given the fame of Complainant’s marks, any
planned use by Respondent of the disputed domain names represents a deliberate
attempt to divert users to an adult website with the intent of commercial gain.
See Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct.
25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute a legitimate interest in the domain
name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain
names, which are confusingly similar to Complainant’s mark, in order to
frustrate the Complainant into offering a purchase bid. Respondent replied to
one of Complainant’s transmissions on February 12, 2002 stating that if
Complainant made “a realistic offer” to buy the domains, Respondent would seek
approval from its “clients” with regard to a sale. General offers to sell, even
if unaccompanied by a sale price, evidence bad faith registration and use under
Policy ¶ 4(b)(i). See Little Six,
Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith); see also Wrenchead.com,
Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering
the domain name for sale at an auction site is evidence of bad faith
registration and use).
Respondent’s present behavior illustrates
a continuation of a pattern of conduct. Respondent has engaged in a pattern of
bad faith registration and use of domain names containing famous brands while
linking similar domain names to adult service websites. Complainant contends
Respondent recently changed its identification from Telmex, an identity
synonymous with bad faith registration and use, to the present Stealth
Commerce. Both entities include (1) the identical address for Stealth Commerce
and Telmex Management Services and (2) the identical adult websites used in
connection with the domains. This pattern of bad faith conduct calculated to
prevent Complainant from reflecting its mark accurately represents bad faith
pursuant to Policy ¶ 4(b)(ii). See Australian
Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶
4(b)(ii) where Respondent registered multiple infringing domain names containing
the trademarks or service marks of other widely known Australian businesses); see
also Caterpillar Inc. v. Miyar,
FA 95623 (Nat. Arb. Forum Dec.
14, 2000) (finding that registering multiple domain names in a short
time frame indicates an intention to prevent the mark holder from using its
mark and provides evidence of a pattern of conduct).
Furthermore, Respondent’s intentional use
of domain names that infringe upon Complainant’s rights in order to attract
Internet users to its own website for commercial gain demonstrates bad faith
under to Policy ¶ 4(b)(iv). Respondent’s registration and use of the disputed
domain names, including the registration of <ritzplazahotel.com>
over a month after Complainant objected to Respondent’s unauthorized use of its
marks, represents a deliberate attempt to solicit visitors based on
Complainant’s marks and the goodwill associated with them. See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Land O'
Lakes Inc. v. Offbeat Media Inc.,
FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶
4(b)(iv) where Respondent utilized a domain name confusingly similar to the
Complainant’s mark and used a confusingly similar pornographic depiction of the
Complainant’s registered trademark on its web site to cause confusion as to the
source or affiliation of the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the relief should be hereby GRANTED.
Accordingly, it is Ordered that the <themarriotthotel.com>,
<theramadahotel.com> and <ritzplazahotel.com> domain names be
TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 28, 2002
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