Marriott International, Inc. and Marriott Worldwide Corporation v. Eco Pellets / Ecopellets ltd
Claim Number: FA1801001766541
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Eco Pellets / Ecopellets ltd (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marriotthotel.group>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2018; the Forum received payment on January 18, 2018.
On January 12, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <marriotthotel.group> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2018 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@marriotthotel.group. Also on January 18, 2018, 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 February 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the largest and one of the most well-known hotel and resort chains in the world under the label MARRIOTT HOTEL.
Complainant holds a registration for the MARRIOTT HOTEL service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,277,443, registered May 8, 1984, last renewed February 22, 2014.
Respondent registered the domain name <marriotthotel.group> on or about October 19, 2017.
The domain name is identical to Complainant’s MARRIOTT HOTEL mark.
Respondent has not been commonly known by the domain name.
Respondent does not operate a legitimate business or other organization under the banner of the domain name.
Respondent does not use the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Instead, the domain name resolves to a website at which Respondent copies the appearance of Complainant’s legitimate website and purports to offer competing hotel goods and services as well as related traveling agency advertisements.
Respondent has no rights to or legitimate interests in the domain name.
Respondent mimics Complainant’s website at the website resolving from the domain name in an attempt to confuse Internet users seeking Complainant’s services.
Respondent was aware of Complainant’s rights in the MARRIOTT HOTEL mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
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,” and 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.” (emphasis added)
There are two identified Complainants in this proceeding: Marriott International, Inc. and Marriott Worldwide Corporation. They share the same contact details, including mailing address, phone numbers and contact email. They also share the same legal counsel. There is nothing in the record to suggest that they should not be considered a single Complainant for all purposes in this proceeding, and Respondent does not object to such treatment.
Other panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), a panel concluded:
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.
Moreover, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel treated two identified complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Svcs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of a mark.
For these reasons, and because the Complaint suggests, without objection from Respondent, that the two Marriott entities together own, promote and enforce their rights in the MARRIOTT HOTEL mark, we conclude that those Complainant entities should be deemed a single Complainant for all purposes throughout this proceeding. Accordingly, we so find.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the MARRIOTT HOTEL service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its rights under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Thailand). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <marriotthotel.group> domain name is substantively identical, and therefore confusingly similar, to Complainant’s MARRIOTT HOTEL service mark. The domain name contains the mark in its entirety, merely adding the generic Top Level Domain (“gTLD”) “.group.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017):
Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.
This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <marriotthotel.group> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marriotthotel.group> domain name, and there is nothing in the record to suggest that Complainant has licensed or otherwise authorized Respondent to use the mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Eco Pellets / Ecopellets ltd.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified the registrant of that domain name as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <marriotthotel.group> domain name to resolve to a website at which Respondent seeks to pass itself off as Complainant while offering for sale goods and services competing with those of Complainant. This use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the contested domain name as provided in those subsections of the Policy. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (a panel there finding that a respondent’s attempt to pass itself of as a UDRP complainant at a website resolving from a challenged domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii), where that respondent used a domain name to present Internet users with a website that was nearly identical to that complainant’s official website). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the contested <marriotthotel.group> domain name to attempt to pass itself off as Complainant in the Internet marketplace. We may comfortably presume that Respondent seeks to acquire financial gain from this practice. Under Policy ¶ 4(b)(iv), such a use of the domain name stands as proof of Respondent’s bad faith in registering and using the domain name. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017), finding bad faith under Policy ¶ 4(b)(iv), where
Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse [Internet] users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.
We are also convinced by the evidence that Respondent was well aware of Complainant and its rights in the MARRIOTT HOTEL mark when Respondent registered the <marriotthotel.group> domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007), finding, under Policy ¶ 4(a)(iii), that a respondent registered a domain name in bad faith, having first concluded that that respondent evidenced "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <marriotthotel.group> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 13, 2018
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