Claim Number: FA0109000099692
Complainant is Marriott International, Inc., Bethesda, MD (“Complainant”) represented by James R. Davis, II, of Arent Fox. Respondent is Wayne L. Nicewarner, Annapolis, MD (“Respondent”), Pro Se.
The domain names at issue are <marriotthotshop.com>, <marriottcorps.com>, and <marriottcorp.com>, registered with Domain Registration Services.
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.
M. KELLY TILLERY, ESQUIRE, PANELIST.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 10, 2001; the Forum received a hard copy of the Complaint on September 12, 2001.
On September 13, 2001, Domain Registration Services confirmed by e-mail to the Forum that the domain names <marriotthotshop.com>, <marriottcorps.com>, and <marriottcorp.com> are Registered with Domain Registration Services and that the Respondent is the current registrant of the name. Domain Registration Services has verified that Respondent is bound by the Domain Registration Services Registration Agreement 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 September 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 2001 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@marriotthotshop.com,postmaster@marriottcorps.com,and postmaster@marriottcorp.com by e-mail.
A timely Response was received and determined to be complete on October 8, 2001.
An Additional Submission was received from Respondent by The Forum on October 15, 2001 in a timely manner according to The Forum’s Supplemental Rule #7.
On October 18, 2001, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery,
Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant contends that it is the owner of numerous trademarks including the famous marks MARRIOTT and/or HOT SHOPPES including United States Federal Trademark Registration Nos. 520,917 (HOT SHOPPES) registered on 2/7/50, 899,900 (MARRIOTT) registered on 9/29/70, 947,709 (MARRIOTT) registered on 11/21/72 and the domain name/mark <marriott.com.> Complainant contends that it has used the mark MARRIOTT at least as early as 1957 and the mark HOT SHOPPES at least as early as 1927 extensively in interstate and international commerce in connection with its goods and services, and certainly long before Respondent’s registrations of any of the three domain names in question.
Complainant contends that it operates one of the world’s most well-known and extensive hotel, restaurant and hospitality companies doing business throughout the U.S. and indeed the world. As a result, Complainant contends that its marks are very well known and famous among members of the purchasing public.
Complainant further contends that on January 31, 2000, Respondent registered the domain names <marriotthotshop.com>, <marriottcorps.com> and <marriottcorp.com> which are nearly identical to the marks of Complainant and clearly play off Marriott’s use of it HOT SHOPPES and MARRIOTT marks. Complainant contends that all three are confusingly similar to its marks.
Complainant further contends that, through Counsel, it wrote to Respondent on December 18, 2000 objecting to Respondent’s registration of these domain names and offering to compensate Respondent for his actual costs, plus the cost of “holding” the domain names.
Complainant contends that it engaged in a series of negotiations in which Respondent first demanded $200, then $500 and then $700 for the domain names. Complainant contends that due to continued unreasonable escalation in settlement requests made by Respondent for reimbursement for fees and costs, Complainant decided the only reasonable method of resolving this dispute was by filing a Complaint under the U.D.R.P.
Complainant further contends that Respondent registered and is using the three domain names in bad faith and that Respondent has no rights or legitimate interests in respect to the domain names. Complainant contends that Respondent is not authorized or licensed by Complainant to use Complainant's marks in any respect.
Complainant contends that the following constitutes evidence of Respondent’s bad faith:
a. Respondent registered the domain names on January 31, 2000, long after Marriott’s adoption, first use and extensive advertising and use of its marks;
b. Respondent has attempted to “extort” from Complainant amounts that greatly exceed Respondent’s actual out-of-pocket registration fees;
c. Respondent has a pattern of registering domain names that incorporate famous trademarks owned and controlled by Complainant;
d. Respondent has not activated or used the domain names in connection with any legitimate Website despite the fact that the domain names were registered approximately twenty (20) months ago;
e. Respondent cannot in good faith claim that he had no knowledge of Complainant’s rights in its famous marks, Respondent is not commonly known by the name Marriott or Hot Shoppes and Respondent is not making legitimate, non-commercial or fair use of the domain names; and
f. Respondent has registered the domain names solely to trade upon and profit from the good will Complainant has created in its marks.
B. RESPONDENT
Respondent acknowledges and admits Complainant’s factual contentions regarding its registered trademarks, the uses thereof and Respondent’s registrations.
Respondent contends that the he has followed the Marriott companies for 50 years, has been a Marriott employee twice, a Marriott stockholder many times and purchased the names to protect them while in protracted negotiations with Marriott regarding a corporate image/advertising campaign.
Respondent contends that he purchased the three domain names from his son, Eric A. Nicewarner, on February 1, 2000 for $250 and demanded payment of this sum from Complainant.
Respondent contends that he was prepared to transfer the domain names for a total of $250 but he would not agree to a Confidentiality Clause demanded by Complainant.
Complainant has sustained its burden to prove by a preponderance of the credible, relevant, admissible evidence that the three domain names registered by Respondent are identical or confusingly similar to trademarks or service marks in which Complainant has rights. U.D.R.P. 4(a)(i)
Complainant has sustained its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect of the domain names in question. U.D.R.P. (a)(ii)
Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. U.D.R.P. (a)(iii)
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;
(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, Marriott International, Inc., is the owner of several famous marks including MARRIOTT and/or HOT SHOPPES and including Federal Trademark Registration Nos. 520,917 (HOT SHOPPES), 899,900 (MARRIOTT) and 947,709 (MARRIOTT) and the domain name/mark <marriott.com>. Respondent does not dispute that Respondent’s registrations of the three domain names were made long after the earliest uses and registrations by Complainant of its MARRIOTT and/or its HOT SHOPPES marks. There is thus no dispute that Complainant has substantial rights in and to the marks MARRIOTT and HOT SHOPPES.
Respondent’s first domain name, <marriotthotshop.com> is virtually identical to a combination of the two marks of Complainant. The only difference is the absence of an additional “p” in the word “shop” and the absence of “es” denominating the plural of “shop”. Such differences are insignificant and the domain name in question is clearly confusingly similar to a combination of the MARRIOTT and HOT SHOPPES marks which are themselves often used together by Complainant. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests”; see also 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 mark MARRIOTT). See EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) (finding that Policy ¶ 4(a)(i) had been satisfied because “the domain names at issue, are comprised of Complainant’s ENTERGY and SHAW marks”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The second domain name in question <marriottcorp.com> is merely the use of the MARRIOTT trademark with the addition of the abbreviation for the word “corporation.” Marriott International, Inc., the Complainant, is a corporation and, as with all corporations, is often known by its common name with the addition of the word “corporation” or “corp”. The same is true for the third domain name in question, <marriottcorps.com>. It is the same as the second domain name with an “s” added for plural. The addition of these insignificant elements to the MARRIOTT trademark does not prevent the two from being confusingly similar to said mark. “Marriottcorp” and “Marriottcorps” are clearly confusingly similar to the mark MARRIOTT. Thus, all three of Respondent’s domain names are identical or confusingly similar to trademarks in which Complainant has rights.
Respondent, by claiming that he registered and holds the domain names seemingly ‘for the benefit’ of Complainant, because it had not yet “protected” same, implicitly acknowledges that the domain names are and are intended to be identical or confusingly similar to Complainant’s marks. Respondent does not dispute that Respondent has rights in and to its trademarks nor that those trademarks are identical or confusingly similar to the three domain names in question.
Complainant claims that he registered and/or purchased and/or is holding the domain names in question in order “to protect same,” for the benefit of Complainant Marriott International, Inc. Respondent seems to be arguing that as a former employee, stockholder and indeed at least an acquaintance of one or more of the Marriott family members, he intended to protect these domain names which include MARRIOTT marks by registering and maintaining them. There is no evidence of record that he was ever asked or authorized by Complainant to “protect” any of its interests.
Respondent does not specifically contend that he has legitimate rights to and/or legitimate interest in any of the domain names in questions for any of the reasons set forth in U.D.R.P. 4(c). Even if this Panel were to determine that Respondent’s claim to be “protecting” the domain names is credible, such would not, constitute sufficient evidence to establish rights to and/or legitimate interests in any of the domain names in question.
Neither the Lanham Act nor the U.D.R.P. contemplate or intend to promote, protect or reward self-appointed trademark/domain name “Good Samaritans.” This Panel has no doubt that Complainant is fully capable of protecting its intellectual property rights, including domain names, and that if not, it will suffer the appropriate consequences under applicable law and/or the U.D.R.P. Respondent’s claimed gratuitous efforts do not establish that he has any rights or legitimate interest in these domain names.
The record includes a photocopy of one of Respondent’s checks dated 2/1/00 made payable to “Eric A. Nicewarner” purportedly Respondent’s son in the amount of $250 which includes a Memorandum reference for three domain names <marriotthotshop.com>, <marriottcorps.com> and <marriottcorp.com>. The three domain names in questions were registered on January 31, 2000, the day before that check was issued.
Respondent clearly registered these three domain names, many, many years after Complainant began using its marks MARRIOTT and HOT SHOPPES. It is equally clear that Respondent was well aware of Complainant’s use of said marks for he acknowledges that he was an employee and stockholder of Complainant on more than one occasion.
Even if this Panel were to believe that Respondent registered these domain names in order to protect them for the benefit of the Complainant, such a purpose does not constitute good faith registration, at least absent authority from Complainant, of which there is no such evidence of record.
Respondent has produced no evidence whatsoever to in any way support his contention that he was registering these in order to protect them for the benefit of Complainant. Nor has Respondent produced any evidence of any “protracted negotiations with Marriott regarding a corporate image/advertising campaign” as claimed in his response.
Although there is no evidence of record which would clearly establish bad faith as set forth in any of the four (4) sets of circumstances in U.D.R.P. 4(b), the circumstances set forth therein are not exclusive. Registration of domain names which are virtually identical to and certainly confusingly similar to Federally registered trademarks done with the full knowledge of said trademarks and for no apparent valid purpose constitutes bad faith registration.
U.D.R.P.4(a)(iii) requires that Complainant establish that Respondent’s domain name has been registered and is being used in bad faith. There is no evidence that Respondent has been actually “using” the domain names at all. In fact, Respondent acknowledges that he is passively holding or warehousing the names, again allegedly for the purpose of protecting them for the benefit of the Complainant. Respondent has done nothing whatsoever to establish a Website or in any other way “use” the domain names in question. Under these circumstances, such “use” is in bad faith. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name "winegallo.com"). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).
There is also some evidence of record to indicate that Respondent actually “registered and/or acquired the domain names primarily for the purpose of selling the domain name registrations to the Complainant who is the owner of the trademark for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.” U.D.R.P.4(b)(i). The parties negotiated extensively as to what constituted sufficient out-of -pocket expenses and there is some evidence to indicate that Respondent demanded money in excess of such out-of-pocket costs. However, this Panel need not decide any issues in regard to those negotiations for there is ample evidence otherwise of Respondent’s registration and use in bad faith.
The domain names <marriotthotshop.com>, <marriottcorps.com> and <marriottcorp.com> should be immediately transferred to Complainant.
Dated: November 1, 2001
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