Marriott International, Inc. and Westin Hotel Management, L.P. v. MARKANDAY Kumar
Claim Number: FA2303002036531
Complainant is Marriott International, Inc. and Westin Hotel Management, L.P. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is MARKANDAY Kumar (“Respondent”), represented by Shraman Sinha of Delhi, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westininnandsuites.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 20, 2023; Forum received payment on March 20, 2023.
On March 23, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <westininnandsuites.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2023 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@westininnandsuites.com. Also on March 24, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
On May 18, 2023 the Panel issued the following Panel Order:
“Under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties. In line with its obligation under 10(a) of the Rules, the Panel must conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules.
In the present proceeding the Respondent has indicated by email dated May 6, 2023, that it has decided to change the company Domain Name. In circumstances like this, where Respondent does not contest the transfer of the Domain Name, it may be appropriate for the Panel to forgo the traditional UDRP analysis and order transfer of the Domain Name by consent. The Panel seeks confirmation from the Respondent that it is prepared to consent to transfer of the Domain Name <westininnandsuites.com> from Respondent to Complainant.
Therefore the Panel makes the following orders:
1. The Respondent has until May 24, 2023 to confirm to Forum whether it consents to the Panel issuing an order for transfer of the Domain Name or whether the Panel should issue a decision making findings under the Policy.
2. In the event that the Respondent does not respond to order 1 or does not consent to the Panel issuing a transfer order, the Panel shall issue a decision making findings under the Policy.
Please send any response to this Panel Order to Forum and the other party by way of email.”
No Response was received to this Panel Order by the May 24 deadline.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Previous panels have interpreted 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), the panel stated:
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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel has reviewed the Complaint and is satisfied that Westin Hotel Management, L.P. is a wholly owned subsidiary of Marriott International, Inc. and that both Complainants own registrations for the WESTIN mark. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
A. Complainant
Complainant is a well-known provider of a global chain of hotel and hospitality services for business and leisure. Complainant has rights in the WESTIN mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,720,799 registered September 29, 1992) and the India Office of the Controller General of Patents, Designs, and Trademarks (e.g., Reg. No. 2,196,157 registered August 26, 2011). Respondent’s <westininnandsuites.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the WESTIN mark in its entirety and adds the descriptive phrase “inn and suites” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <westininnandsuites.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the WESTIN mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name resolves to a page that displays Complainant’s mark in an attempt to pass off Respondent as affiliated with Complainant and offers competing services. Respondent’s use of a disclaimer does not confer rights and legitimate interests in the Domain Name.
Respondent registered and uses the <westininnandsuites.com> domain name in bad faith. Respondent registered the Domain Name in order to pass off as affiliated with Complainant and divert customers to its competing website for commercial gain. Respondent’s use of a disclaimer does not mitigate a finding of bad faith. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the WESTIN mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Rather on April 14, 2023 Respondent’s legal representative sent an e-mail to Forum formally denying the Complaint and asked for more time to prepare a formal response. Forum granted the request made by Respondent’s legal representative. No formal Response was received by the revised deadline but on May 6, 2023 Respondent sent an e-mail to Forum, the relevant portion being extracted below:
“This
is to certify that the resolution passed at the meeting of the board of
directors of Westin inn and Suites Pvt Ltd held on 02/05/2023.
We did not have any bad intention to hamper the brand value of "WESTIN BY
MARRIOTT “. Resolved that we have decided to change Company Domain name.
Furthermore, we request you to grant us 30 to 45 days to change the complete
process and intimation to the client of the company.
We will be highly obliged for the consideration of the extension.”
It was unclear to the Panel whether this document indicated that Respondent consented to a transfer of the Domain Name or not and hence the Panel issued the Panel Order as set out in the Procedural History. No response to the Panel Order was received by Forum.
In certain cases where the Respondent has clearly consented to the transfer of the Domain Name to the Complainant, Panel is authorized to forgo traditional UDRP analysis. In the present case, while Respondent is clearly seeking a resolution of the proceeding, it is not clear whether they are prepared to consent to the transfer of the Domain Name to the Complainant and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the UDRP are satisfied.
Complainant holds trademark rights for the WESTIN mark. The Domain Name is confusingly similar to Complainant’s WESTIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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:
(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”).
Complainant asserts rights in the WESTIN mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,720,799 registered September 29, 1992) and India, the location of Respondent. Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <westininnandsuites.com> domain name is confusingly similar to Complainant’s WESTIN mark because it wholly incorporates Complainant’s WESTIN mark while adding the descriptive terms “inn and suites” and the “.com” gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the WESTIN mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WESTIN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “MARKANDAY Kumar” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Panel notes that the Respondent’s Website is stated to be operated by an entity known as Westin Inn & Suites Pvt. Ltd. However, Respondent provides no documentary information showing that this company actually exists, as opposed to it being a false name used (as discussed in the paragraph below) to further associate Respondent with Complainant for commercial gain. Given that Respondent has chosen not to provide such evidence, notwithstanding that it filed an informal response to the Complaint) the Panel cannot conclude from the Respondent’s Website alone that Westin Inn & Suites Pvt. Ltd, let alone that it provides a basis for a finding that Respondent is operating a legitimate business (as opposed to creating a website for fraudulent purposes), or is commonly known by the Domain Name.
The Domain Name is used for the Respondent’s Website which purports to offer hotel services and travel agency services under the WESTIN mark in direct competition with the services offered by Complainant under its registered WESTIN mark (registered in India, the location of Respondent). The use of a confusingly similar domain name to resolve to a webpage that offers goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a 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).”).
Finally the Panel notes that the presence of a disclaimer on the Respondent’s Website does not confer rights or legitimate interests in the Domain Name per Policy ¶ 4(a)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, March 22, 2022, Respondent had actual knowledge of Complainant’s WESTIN mark since the Complainant is a well-known entity that has a significant global reputation and a registered trademark owner in India, the location of Respondent, and the Respondent’s Website offers hotel and travel services in competition with Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that consists of the coined WESTIN mark and use it to redirect visitors to a website purporting to offer hotel and travel services other than to take advantage of Complainant’s reputation in the WESTIN Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s WESTIN Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website offering hotel and travel services in a manner that misleads consumers into thinking that Respondent, or the hotel and travel services offered from the Respondent’s Website, is/are in some way connected to the Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
The Panel finds Complainant has 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 <westininnandsuites.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 25, 2023
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